Trademark and Brand Naming Q & A

Choosing a new trademark is a thorny task for many companies. So we asked Tara Benson, Esq., a seasoned intellectual property attorney, for her thoughts on how to avoid the most common pitfalls. Benson is a senior member of the trademark practice group at Giordano, Halleran & Ciesla, P.C. During her career, she has handled trademark work for such clients as Tazo Teas and Amazon.com; and also served as in-house counsel for Library Video Company/Schlessinger Media, the leading distributor and producer of educational media.


Q: Tara, it often seems that tension between marketing and legal departments is the start of trademark troubles. Do you agree?
Absolutely. In my experience, marketing departments often gravitate towards a mark which describes the product or service. Descriptive marks ensure that the customer can easily identify the product.
Unfortunately, descriptive marks will not likely win the right to be registered and probably don’t do much to distinguish your product in the marketplace.

Q: So does that mean you should avoid descriptive marks at every turn?
In short, yes, it is best to avoid them whenever possible. The strongest marks (and those that are able to achieve trademark protection) are fanciful, arbitrary or suggestive marks. A fanciful mark is a word, which has no meaning aside from its use as a trademark, such as Kodak or Exxon, while arbitrary marks are existing words with meanings that are generally unrelated to the product with which they are used, such as Apple for computers. Finally, suggestive marks are those which suggest the identity of a product, but do not merely describe the product (e.g. Coppertone for suntan lotion). It is important that a marketing department be aware of these necessary qualities while brainstorming names for new products or services.


Q: Do clients become emotionally attached to names they are considering?
Yes, often companies will create an internal development name for a product or service. Sometimes people will become so attached to this development name that they are not willing to part with it once the product or service is ready to be launched. Falling in love with an internal development name prior to completing a full trademark search and legal review is one of the most common problems which companies encounter. I always stress the importance of completing a trademark review on a mark before company employees become too attached to a name.


Q: What other pitfalls do you see?
One is the selection of a name that is simply too confusingly similar to that of a competitor. Selecting a name that is too similar to a competitor not only impairs a company’s ability to federally register that name, but also may result in a trademark infringement lawsuit against the company. Companies should always strive to select names that are easily distinguishable from those of their competitors.


Q: Our surveys show that 20% of large companies use employee naming contests as one way to generate new names. Good idea, or bad idea?
There are a few famous names that have been the result of an employee naming contest. But this is not the norm. While organizing an employee naming contest for a company’s newest product may be a fantastic morale booster, it rarely generates protectable marks. Employees may not understand the legal issues that exist such as avoiding trademark infringement, generic or merely descriptive marks and foreign equivalence issues. Foreign equivalence issues include avoiding marks which may be offensive in another language or those marks which may otherwise be culturally insensitive. Instead of hosting a naming contest, companies should consider hiring a naming company, using naming software or relying on the input of its internal marketing professionals.

Q: What about the use of consultants to generate new names?
Third party naming companies can be a tremendously useful tool if utilized properly. If a company opts to engage a third party naming company for its new product, I recommend that the naming company work closely with an employee who has a strong working knowledge of the product, as well as with the company’s legal team. This will help ensure that the proposed mark not only enhances the marketing strategy, but also is legally protectable.

Sponsored By: Brand Aid & The Blake Project

Brand Strategy and SEO: The Naming Dilemma

Brand has been an important business tool and concept for more than a century. Search engine optimization (SEO), on the other hand, has been a serious concern for scarcely a dozen years. So what's the relationship between the two? This is a surprisingly deep question, so we'll devote a number of blog posts to exploring it.

At one level, SEO and brand are closely related. Brand marketing can be seen as a way of attracting attention to your company that defines it in ways that are authentic and compelling. SEO can be defined as a way of attracting traffic to your web site based on compelling, relevant content. So those are complementary things, right? Good branding supports good SEO, and vice versa, it's tempting to conclude.

Except that when you dig a little deeper, you find that the two are often in conflict. Consider naming, the topic of today's post: the question of naming a new product or business concept. The classic branding approach to naming is to find a trademarkable name that is unique, ownable, memorable, and reflects the personality of the company. One thing you cannot do is pick a descriptive name: that is, something in plain English. Descriptive names cannot be protected with a trademark, and establishing a defensible trademark is one of the prime objectives of branding.

But for SEO purposes, a descriptive name in plain English is far superior. Why? Let's explore an example.

Imagine your company has developed a completely new technology for measuring and improving software usability. Now imagine that you've engaged a branding agency, and that agency has delivered a unique trademarkable name for you: 'Usabilification'

[Full disclosure: This word was actually coined by English professor Randy Harris, with whom I had the privilege of studying. Go ahead and Google it - I got one hit, and it's from a 15 year old talk he did with that title. Now I've probably gone and ruined it and added a second result. And yes, the name is entirely ironic - Randy is not only brilliant, but witty as hell too.]

So great - you can go and buy the domain usabilification.com, register the trademark, design a great swoopy logo and print the business cards. Here's the problem, though: nobody has ever heard of 'usabilification' (other than my former classmates), so nobody will ever Google it. If they did, you'd rank #1, count on it, but #1 on a search term with approximately zero searches per month, give or take a few.

So to get some SEO juice, you will need to fill your site with a lot of terms that do get searched on, things like 'usability' and 'tool'. But by hitching your wagon to 'usabilification', you've missed out on some great SEO opportunities.

The domain name itself. As this post on keywords in domain names from SEOmoz points out, having one or two important keywords right in your domain name gives you instant Google juice - before you even start adding content, you'll be scoring well with Google's search algorithms.

Internal keyword frequency. Your website will probably mention your product name more than once, it's fair to say. If every time you mention it, you've got a made up word like 'usabilification', you're simply improving your rank with a search term nobody uses. On the other hand, if your product name includes one or two keywords, every mention and every internal link will boost your SEO strength.

Incoming links. Probably the single most powerful way to boost your Google ranking is to get a lot of links from high quality websites - popular blogs, online newspapers and the like. But not all links are created equal: a link that includes the relevant keyword will deliver more SEO mojo than a link that says click here. Most likely those referring websites will have your product name as the anchor text. So if your product name has the keywords built right into it, then the incoming links will contribute even more to boosting your search engine ranking.

So, that means forget about unique, memorable, and trademarkable? No, all that is still important - you want to build a global brand for the ages still, right?

There are different ways to handle the naming challenge that make for a good brand with good SEO characteristics, but that's for another post.

Posted by Pete Kloppenburg
Director of Marketing

Brand Naming Contest Helps Boeing Soar

We’ve reported before on the use of contests in naming. The maker of Crayola products, for instance, urged crayon enthusiasts to help rename an old color, and name suggestions poured in.

For the first time in its history, Boeing encouraged people around the world to name its newest airplane. In the process, the firm reaped a public relations windfall.

After tallying 500,000 votes in more than 160 countries, Boeing announced the winner at the Paris Air Show in June 2003: “Dreamliner” will be the name of the Boeing 7E7 aircraft.

The three other choices were eLiner, Global Cruiser and Stratoclimber. Consultants came up with a hundred potential names, and Boeing settled on those four. Through a marketing alliance with AOL Time Warner, people placed votes at a website devoted to the new jetliner.

The unusual contest was designed to generate some much-needed buzz for the new 250-seat plane – something that had been lacking since Boeing shelved plans for a fast, sleek and sexy sonic-cruiser in favor of the more conventional but super-fuel-efficient 7E7.

The hype happened. Boeing’s hometown newspapers in Seattle were all over the story, but so were Business Week, the wire services, radio stations – and media all over the globe. Breathless updates provided the play-by-play: “As of yesterday, more than 90,000 visitors to the site had voted, and Global Cruiser now has a slim lead…”

The use of special public relations events to promote companies is picking up steam. Boeing was smart to be among the first large firms out of the box to sponsor a global naming contest, thus generating global publicity. Watch how many others now follow their lead.

The grass-roots tactics actually are a new direction for Boeing, which traditionally focuses its sales and marketing efforts on airline executives. With this contest, the aerospace giant is taking its message straight to consumers in hopes they eventually will make their travel choices based on the brand of a jet in an airline’s fleet.

Aviation buffs will remember Boeing’s early passenger planes with names such as the Boeing Clipper, the Stratoliner, and the Stratocruiser. Its jet-age planes, starting with the 707, and most recently the 777, have only had 7-series designations.

Sponsored By: Brand Aid & The Blake Project

Brand Naming: Context Counts

“Naming a company Google or Squidoo or Blueturnip in the dot-com world isn’t weird. It’s the equivalent of naming your kid Michael.”

That funny (and perceptive) quote comes from Small Is the New Big, a (2006) book from author and entrepreneur Seth Godin.

The larger issue here is: Context counts.

For instance, in the “As Seen on TV” category of products, most of the names are descriptive and straightforward, and rightly so. Here is a neighborhood where the best names are quick into the mind, and easy to understand. Examples: Pasta Express, Swivel Sweeper, Stick-Up Bulb, Auto Cool, Just-a-Trim, LumaTweeze. In a twinkling, these names tell the consumer who you are, and what you do.

Is Celsia the correct name for a high-tech company that does cooling solutions? Absolutely, since the technologists making the purchase decisions know the name honors a Swedish astronomer named Anders Celsius, whose adopted name identifies the metric system used by most countries.

Is Zany Brainy the right name for an educational toy store in the mall? You betcha. Just ask the parents if they’d like their kids to have fun while they learn.

Is Premio (the Italian word for “prize” or “reward”) a good name for the Italian sausage with real Italian taste? Just ask any supermarket shopper who’s looking for the “real thing” – the most authentic Italian brand. Premio stands out amid a cluster of general-purpose, heartland American brand names for sausage, like "Johnsonville" or "Jimmy Dean.".

When it comes to coining a new name, context matters.

Sponsored By: The Brand Positioning Workshop

The Cadillac of Brand Naming

It’s the Cadillac of crossovers,” said the ads from Cadillac as it introduced its SRX vehicle for 2010.

No longer is Cadillac merely a century-old brand name. Over time, it’s also become a rhetorical device. Consider these other “Cadillacs”:

“The Cadillac of cologne” (“with aromas of ebony, cloves and incense, introducing a feeling of unlimited freedom,” produced under license from General Motors, by Beauty Contact, a company based in Dubai).

“The Cadillac of all trim saws”
(Hillquist).

“The Cadillac of the sand-pile set” (Huffy children’s bicycle).

“The Cadillac of phonographs”
(Rock-Ola).

“The Cadillac of dog foods”
(Cadillac brand dog food).

“The Cadillac of minivans” (how a rental-car attendant described the Oldsmobile Silhouette to John Travolta’s character in the movie Get Shorty).

“Cadillac health care plans”
(heard numerous times on Capitol Hill to describe high-end insurance policies).

Blame it all on the copywriter for a 1959 advertisement for the luxury auto brand. He described Cadillac as “the world’s best synonym for quality.”

(A language purist named Ben Zimmer, a consultant to the Oxford English Dictionary, points out that line should say Cadillac is really a metonym for quality – “but that wouldn’t fly in ad copy.”)

What in the name of language and luxury is going on here? Don’t think of it as trademark dilution. It’s more like semantic evolution. We’ve come a million miles from the creation of the Cadillac automobile brand -- named after the 17th-century French explorer Antoine Laumet de la Mothe, Sieur de Cadillac.

Fraser Sutherland is the Canadian linguist and dictionary editor who is my co-author on The Making of a Name (Oxford University Press). He points out that such a rhetorical device appears fairly often to signify the cream of the crop, la crème de la crème. For example:

The old Canada Dry slogan,
“The champagne of ginger ales.”

Miller had something almost identical: “The champagne of bottled beers.”

And across the pond from America, of course, a similar figure of speech emerged with Rolls-Royce. As early as 1969, a book titled Aircraft in War and Peace depicted “the best pleasure
aeroplane, the Rolls-Royce of the air.”

Sponsored By: The Brand Positioning Workshop

Brand Naming Humans Proves Promotional

The Globe and Mail newspaper in Toronto called it “a marketing stunt that takes branding to a new extreme.” What’s the news? Humans have now been branded.

Four Canadian citizens legally changed their surname from “Dunlop” to “Dunlop-Tire.” Each wacky Mr. or Ms. Dunlop-Tire pocketed $6,250 – their share of the $25,000 in prize money offered by Goodyear Canada Inc., which markets the Dunlop tire brand in Canada.

For the company, this brash stunt generated more publicity than half a dozen ad campaigns, and cost a relative pittance. When the company announced the contest, the story was picked up by international media and became part of a bit on Conan O’Brien’s late night TV show.

Sure, marketers have slapped their names on everything from coffee mugs to sports stadiums. But human beings?

Jason Dunlop-Tire of Winnipeg doesn’t seem to mind being a walking advertisement. Do people laugh at his name? “I don’t care,” replies the 24-year-old. “I have the money and they don’t.”

Traci Dunlop-Tire, who lives in Calgary, said changing her name wasn’t a big deal. As a Dunlop, she was already, shall we say, tired of tire jokes. “I did it for the money,” she said, “but for the amount of laughter I’ve gotten, it’s been well worth it.”

Goodyear has plans to get maximum mileage from its four new members of the family. The company has the right to feature them in advertising and other promotions. Even so, the new big wheels are free to change their name back to plain old Dunlop at any time, with no penalty.

We sense a dangerous trend here. Is the world ready for Suzie Starbucks-Coffee? Kenneth Kraft-Macaroni? Michael Dell-Computer?

Sponsored By: The Brand Positioning Workshop