CREATING BRAND NAMES IS EASY

The process of name development needs to be carefully managed, with names checked for legal availability and cultural and linguistic suitability. That is much harder than it sounds.

This myth is stubbornly persistent. Creating and registering a brand name is not that easy and rarely completely straightforward. There are lots of reasons for this myth but possibly chief among them is that many people seem to believe that they were born with an innate naming ability. In our experience this is rarely the case. Naming seems to be regarded even by many practitioners as essentially an easy undertaking; it just needs a few creatively minded people to get together, drink some coffee and kick around some ideas.

Perhaps if you are a very small business with little ambition and no real understanding of the value of trademarks this is sufficient. In nearly all other cases it is not. If you are a larger business with designs on expansion and you intend to trade internationally then naming is a process that you would be well advised to take more seriously.

Decide if a new name really is required

Before embarking on the creation of a new name, we would always advise that you take the time to determine if a new brand name really is required. It is easy to assume that you need to develop a new brand name when actually all that may be required is a simple descriptor. The job of the practitioner is to keep the proliferation of unnecessary brands to an absolute minimum. Additionally, even before you start creating new names it is always a good idea to look at what you have that could sensibly be repurposed or repositioned. Always look back at your full suite of trademarks; established brand owners often have a large catalogue of largely forgotten names that may possibly be reused.

Brand names can become valuable trademarks

Let’s start with the legal and financial implications. Brand names can be registered as trademarks and as such are capable of being legally owned and protected. This is important. Brands can be enormously valuable and while a brand may occupy a space in the mind of the customer the things that help to identify a brand (the marque, the design, the pack shape and even a sound) can most definitely be registered and protected. It is the ability to legally own and protect these tangible assets that crystalliszes the value of a brand.

From a legal and financial perspective, therefore, the most significant aspects of a brand are its trademarks, namely the name and the identity. Any practitioner who wishes to lay claim to more than just a registered domain name needs to be able to register and protect their brand; in effect they need to ensure that their proposed brand name and identity are effectively unencumbered – in other words that something identical or highly similar has not already been developed and is either registered or has a registration pending. This is further complicated by the need to register your name in all of the territories in which you intend to trade and in all of the trademark classes in which you plan to trade. When an informed practitioner wants to get it right from the outset, there are a lot of factors that need to be considered.

The good news is that with a dollop of pragmatism and the support of a decent trademark lawyer many of these complexities can be successfully navigated. Many practitioners will actually be seeking registration in just a few territories and trademark classes and this helps to simplify the process enormously. The EU actually runs a centralized trademark register, making initial checks relatively speedy and inexpensive. A lot of pure-play digital brands will be less inclined to worry about extensive registration across multiple trademark classes.

It is also true that the sheer volume of applications and registrations will mean that you are virtually certain to meet an objection to your registration. In order to be granted a successful registration it is likely that you will be required to compromise and accept a restriction to a specific or more narrow band of trademark classes. You may even find yourself having to negotiate with a third party so that rights in an existing name can be transferred legally to you.

It should be noted that actions are sometimes also pursued for what is known as ‘passing off’. This is usually in instances where one brand name is emulating another to such an extent that a customer stands to be genuinely confused and the originating brand financially disadvantaged. Instances like these are typically found in consumer goods markets. While the name and identity are not exactly the same, taken as a whole they are deemed sufficiently confusing for the originating brand to be negatively impacted.

To some extent, the level of complexity associated with the registration process will be dictated by the potential size and scope of the brand. If you are a multinational corporation seeking to launch or rename a billion-dollar brand you are likely to take all of the above factors into account. Nonetheless, big or small, the practitioner is well advised to consider the legal aspects of the naming process before embarking on the journey and incurring time and expense.

What’s in a name?

The second part of the process that makes brand naming more complicated is the role of the name in helping to establish or build the brand itself. It is not always apparent to the casual observer, but different types of name can help brand owners achieve different things. Naming is not quite a science but it can be approached more strategically than most people realize.

Just before we explore this area, let’s also remember that a brand name – in and of itself – is not the same thing as a brand. A brand is a composite, a mix of functional and emotional attributes that reside in the mind of the customer. To illustrate this point, there are lots of businesses with names that, once seen out of context (and in isolation), seem odd or even possibly unsuitable. Starting from scratch would you have chosen Boots for the name of a chemist? Would you have chosen Dunhill (one letter different from ‘dung hill’) for a name to adorn a range of upmarket gentlemen’s products? When you go to a computer store and ask for an Apple, do you expect to be given a small, green fruit? We suspect not. The point is that applied in a brand context these words have largely lost their original associations and now stand for completely different sets of meanings and associations. A brand name is an important identifier but recognizing its inherent role and flexibility is key to making the most of the naming opportunity.

The descriptive name

There are essentially three categories of brand name, each with pros and cons, and these names are probably best thought of as occupying a particular position across a broader spectrum. At one end of this spectrum we have descriptive names. These are names that are either wholly or broadly descriptive of what it is that the brand actually does. Compare The Market is a fine example of a descriptive name; customers are not going to be left in any doubt about what it is that this brand does. Similarly British Airways is a straightforward description of what the brand does, as is Pizza Hut or digital behemoth Facebook. As well as telling you what a brand is or does, a descriptive name can also describe a combined action or feeling, for example PayPal. Descriptive names are helpful because they need very little explanation or qualification. They can be efficient at launch and are much in evidence across the digital space. Nonetheless by virtue of their descriptive nature they can be much more difficult to successfully register and protect. As a general rule of thumb, the more descriptive a word is the more difficult it is to legally register it.