Picking a new trademark

The other day one of our valued employees at our firm happened to ask me how we picked the name of our publishing arm, Penaya Publishing.  In response, I launched into a discussion of the factors that we urge clients to consider when picking a new name for a company or product or service, and the result was that I felt yet another blog article coming on.  Here it is, a discussion of factors that we urge a client to consider when picking a new name for a company or product or service.  I hope readers will post their comments and suggestions below.

  • First, unless there is a strong and compelling reason to pursue some other approach, I urge the client to pick a coined mark (think of Xerox, Kodak, or Exxon).  Many clients seems to be incapable of picking a mark that is anything other than completely descriptive if not generic (think of the travel agent client that is stuck on the name “Global Worldwide Travel”).  The goal is to arrive at some combination of letters that no one has ever used before as a trademark.  Years from now if the client finds the need to run down to the courthouse and start suing someone, the judge is much more likely to enjoin the infringer of a coined mark than if the plaintiff and defendant are each one of the two dozen pizza places in Manhattan with a name that is a slight variant of Ray’s Pizza.
  • Second, the name needs to be one for which the matching Internet domain name is available.  This is not as easy a condition to satisfy as one might think.  All possible five-letter combinations for dot-com domain names were snapped up years ago.  At the time that we registered penaya.com, there were very few six-letter combinations left.  By now all plausible six-letter combinations are taken, and there are pretty slim pickings among the remaining dot-com names containing seven letters.
  • Third, the name needs to not be too long in terms of the number of characters and the number of syllables.  The would-be customer needs to be able to remember it long enough to write it down or type it into a web browser.  I think of one company whose advertisements I hear on the radio, and the advertisement urges the listener to go to something-something-something-something-something-dot-com.  Yes, five somethings.
  • Fourth, the name needs to be one for which it can be said that if someone hears it spoken, the person can make a pretty good guess how to spell it.  There are many examples of names that flunk this test.  In Colorado, one hears radio advertisements for the “Bonfees Stanton” charity, and I wonder how many radio listeners could correctly guess that it is spelled “Bonfils Stanton”?
  • Fifth, the name needs to be one for which it can be said that if someone sees how it is written, the person can guess how to say it.
  • Sixth, the name needs to not mean “donkey poop” (or anything else embarrassing) in any of the dozen or so most commonly spoken languages.  The name that Enron almost adopted before it picked the name Enron was “Enteron”.  The proposed name “Enteron” had been selected by some high-powered branding consultant and had been run past focus groups and trademark counsel and various departments within the company, and was this close to being formally adopted when someone finally had the wit to look it up in a dictionary.  It turned out that the word is the name for an excretory portion of the gastro-intestinal tract.  The third of a million dollars that the company paid to the branding consultant for “Enteron” might just as well have been flushed down the toilet.
  • Seventh, the name needs to not rely upon some gimmicky punctuation or irregular capitalization or ransom-note combination of fonts.  The name needs to accomplish its branding and memorability goals even if presented in standard characters.  A mark that can only be written by using a backwards 3 as a cutesy substitution for the letter “E” is a mark that nobody will even be able to type into their web browser.
  • Eighth, the name needs to actually be free for the client’s use.  Generally this means that a trademark search report needs to be obtained and studied, and the mark should not be adopted if trademark counsel are unable to give a clear favorable opinion as to the availability of the name.  The clearance process needs to be repeated for each geographic area of interest.
  • Ninth, the name needs to survive a search engine study.  Somebody (the client, perhaps) needs to plug the name into some search engines, and many pages of search results need to be studied to see if there are indications that some unpleasant surprise may lie ahead for this name.  I suggest that this is not the same as the eighth factor above and should not be thought of as a substitute for the search report and opinion of the eighth factor above.
  • Tenth, the name needs to be registrable in the trademark offices around the world where a trademark registration will be needed.  This will likely require a bit of research on the part of trademark counsel in each geographic area of interest.

Coining a name is not nearly as easy as one might think.  One colleague of mine, a partner at a Boston-area IP firm, says her most fruitful name-coining efforts begin by picking word fragments from two different branches of human language and splicing them together.  Her first language is Russian, and so she picks a word stem from a Russian word and a word stem from English or Latin, and smashes them together, and then tests the resulting string of letters against the ten conditions mentioned above.

What factors do you urge clients to consider when picking a new name for a company or product or service?  Did I overlook a factor that you think is important?

9 thoughts on “Picking a new trademark

  1. A very helpful post. Broadway shows are generally produced by an entity created specifically for that show. Often that entity is named (by producers who will not need to use the legal name of the entity constantly) something like The Very Long Title of the Show Broadway Company LLC, because the redundant “Company” in the name was just what we needed. Some of these company names are so long that they have too many characters to be printed on standard checks for the new bank account. The practical advantages of a simpler legal name are rarely considered because it is the name of the show, not the name of the entity, that is advertised. The fact that the long legal name will be a nuisance whenever it needs to be used is usually given no thought by the people who choose the name.

  2. The problem I face is clients that have already chosen a mark, developed marketing materials, and put into use their “dear” mark. Registration is an unfortunate afterthought. End result is often a frustrated attorney and an unhappy client.

  3. I understand firsthand why your list is so exhaustive. However, it’s also way too lawyerly and impractical. For example, like most companies and law firms, your firm’s name (Oppedahl Patent Law Firm) violates several of the factors of this list.

  4. I suggest picking a name that uses dictionary words, preferably an arbitrary word and a descriptive word, or just one arbitrary word. Google predictive search makes coined words difficult to enter in universal URL bars.

    Brand names should be less than 10 characters long, easy to spell and have matching domain names available for .ca and .com. Use domain name drop lists at GoDaddy or http://tbr.cira.ca/ for inspiration, then do a trademark search after picking some names. Good domain names are literally gone in seconds once they are released.

  5. I’m a big fan of arbitrary marks, too, because the client may adopt a familiar word or phrase that is not descriptive of the client’s goods/services. I love Apple as a mark for computer software and hardware; Red Hat as a mark for open source solutions; etc.

    Great summary, Carl. Thanks for sharing.

    • Hi Tom, as a trademark attorney, you are understandably a “big fan of arbitrary marks.”

      But do you have any idea how much time and money it takes to successfully grow and “brand” an arbitrary mark? You should find out before advising businesses to adopt arbitrary marks.

      For a national or international company, it’s easily tens of millions of dollars and many, many years. But about 99% of startups are small and self-financed by credit cards, family and/or friends. So “arbitrary marks” are a practical choice for only about 1% of businesses.

      Plus Apple started off as Apple Computer, Inc., and Red Hat started off as Red Hat Software.

      And like most law firms, your firm’s name is surname-based (Hinckley, Allen & Snyder LLP). And as you know, surname trademarks are some of the most difficult to get, protect, market, etc. Plus because law firm partners come and go, your firm like many others has had to change its name several times over the years, and probably does little if any policing of its trademark against other lawyers or law firms that also use the surnames Hinckley, Allen or Snyder for “legal services.”

      Hope this comment from a non-attorney business person is helpful!

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