Naming Babies; Naming Businesses: Key Considerations for Strong Trademarks
As I inch closer to my midlife crisis, I find myself in a sea of friends and acquaintances who are having (and naming) babies. Being privy to the long list, the names that have been struck from the list must, surely, each have a reason for being rejected.
I’ve learned that names of past lovers are off-limits. The name of that eccentric great aunt who always had a new wobbling aspic of clashing flavors at Christmas dinner – her name is gut-turning and, similarly, off limits. Names rhyming with profane language may not be the best bet because, apparently, the “name game” song still haunts people’s dreams - Huck, Huck, bo, buck, fanana nana fo…(sorry, Huck). Similarly, names creating offensive acronyms are to be avoided – Annabelle Summer Sanders, we apologize for your parents’ profound lack of judgement.
Just as naming a baby is a decision that carries significant weight and permanence, care and caution should be exercised when naming your business and creating a trademark because once the name is out there, it is going to be difficult and/or expensive to change. However, unlike baby names, naming a business involves additional legal considerations.
Let’s start with the basics.
Trademarks are indicators of source. It must be noted that a business name is only protectable as a trademark if the name is used in association with products or services to represent the source of those products or services. The main purpose of a trademark is to enable the public to recognize the goods or services as originating from a particular source.
Not all trademarks are created equally. When choosing a new trademark, the more distinctive, the stronger the trademark. The stronger the trademark, the more clearly your business is identified as the source of goods, making it easier to prevent others from using the same or similar name for their products or services.
The strongest trademarks are typically fanciful or “coined” marks (made-up words). Take, for example, the following trademarks: GOOGLE for online services and XEROX for online copiers. Because made-up words have no inherent meaning, these trademarks enjoy the broadest scope of protection against third-party use. Additionally, creating a coined word means that it is unlikely that the trademark will infringe on a pre-existing trademark.
Arbitrary marks come second to fanciful trademarks in terms of strength. Arbitrary trademarks are words that have a common meaning, but the meaning is unrelated to the goods and services for which the trademark is used. For example, MARS for a chocolate bar and APPLE for computers.
Coming in third place are suggestive marks. These trademarks hint at the nature of a product or service without describing it. For example, WHIRLPOOL for washing machines and NETFLIX for streaming services are examples of suggestive trademarks. Marketing agencies often prefer these trademarks, as these more suggestive terms allow consumers to understand the product or service offering, thereby making marketing campaigns easier.
The weakest trademarks are descriptive trademarks which are generally prohibited (some exceptions apply). Any trademark that describes a product in some fashion will be difficult to obtain protection for.
Lastly, certain words cannot be trademarked. For example, descriptive words and deceptively misdescriptive words cannot be registered. Scandalous, obscene or immoral marks cannot be registered as trademarks. Names, surnames, and geographic locations are generally not registerable either.
Like selecting a baby name, selecting a trademark takes time, effort and energy and may lead to fights. Taking a note from Elon Musk’s failed baby name attempt, while Æ A-12 Musk is certainly a unique name, few can pronounce it and, in California, runs contrary to local laws. What was an attempt to be unique has been met with criticism, looming legal issues and, ultimately, a requirement to change the name.
A fanciful mark will be capable of substantially stronger trademark protection, which in turn protects your valuable brand and the marketing dollars invested in the brand over time. And, while the strength of trademarks is a primary consideration, like disputes amongst parents when naming a baby, the opinions between marketing and legal may, at times, feel diametrically opposed. There is a fine balance between choosing a strong trademark and choosing one that is marketable and, in many cases, scalable and appropriate for use in jurisdictions beyond your home jurisdiction. Some food for thought when naming your new “baby”.
