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?