Rob Meyerson
Let’s say you want to come up with a great brand name for a new beverage brand you’re launching. You know what consumers are looking for, and you’re the creative type.
What’s the biggest naming mistake you could make? How about a name like “Sweat” or “Pschitt,” with unfortunate connotations in other languages? Or something difficult to spell and pronounce in some markets, like “Hoegaarden?” Those missteps would certainly be embarrassing, and maybe even costly. But the biggest mistake you could make — the worst possible name for your brand — is one that’s already in use for similar goods or services.
For your hypothetical beverage brand, it’s probably “Coca-Cola.” Use it, and some lawyers from The Coca-Cola Company will send you a letter politely suggesting you stop using their trademarked brand name.
Unwittingly stumbling upon a globally recognizable name like “Coca-Cola” is unrealistic (and who’d want to name a soft drink after cocaine, anyway?), but the example illustrates a very real risk in naming. In fact, last month alone, three high-profile events touched on the challenge of legal availability in brand naming.
Each case is unique, and some may not even amount to much in terms of legal concerns for the companies involved. But the prevalence and high visibility suggested by these stories demonstrates the fact that brand naming is not only a creative exercise, but one also circumscribed by strategic and legal objectives.
Google Becomes Alphabet; “Alphabet” Is A Trademark Of BMW
On August 10, 2015, the brand-naming story of the year broke, with news that Google was restructuring under a new holding company dubbed “Alphabet.” The New York Times was quick to point out many companies already use this name, including BMW, who apparently owns alphabet.com and “does not want to sell.” But as to whether Google will “get some letters” as the headline suggests — a reference to the cease-and-desist letter a lawyer might send to allege trademark infringement — the article clarifies:
“Just because one company uses a name does not mean another company cannot use it. Trademark infringement occurs if another company’s use could create confusion with consumers, according to the United States Patent and Trademark Office.”
So while Alphabet née Google “is involved in the auto industry” (through Android, and self-driving vehicles), whether they’ve infringed on BMW’s trademark is not just a simple question of who used the name first. And as for the domain name, Google’s Alphabet can be found online at abc.xyz. I’m sure it’ll get decent search results.
JDate Sues JSwipe
JSwipe, often referred to as “the Jewish Tinder,” is asking supporters to help them cover their legal fees as they mount a defense against JDate, an online dating service aimed at Jewish singles. The latter, owned by Spark Networks, is “claiming intellectual property over the letter ‘J’ within the Jewish dating scene.”
JSwipe is framing it as a case of David and Goliath, and many commentators seem to agree, claiming it may be “a bullying tactic to incentivize JSwipe to sell the company” and pointing to numerous other “J-name” apps for Jewish users. But Michael Egan, Spark CEO, is quoted in Observer saying “we believe ‘swipe’ is really synomous [sic] with ‘dating’ in the dating community.” The article goes on to recount JDate’s side of the story:
JDate approached JSwipe very shortly after it came to market. The company had been working for about six months, at that point, on its own mobile app. “Before they even built a brand,” Mr. Egan argues, “it would have been very easy for them to take a different name; it’s not like they had built or spent a lot of money to build that name.”
Regardless of the merits of JDate’s case (or lack thereof), if this version of the story is true, JSwipe made a conscious decision to take on this Goliath, and is now dealing with the consequences, fair or not.
Poachable Becomes Anthology
“Unfortunately, we hit some roadblocks about whether the name could be registered as a trademark,” wrote Tom Leung, co-founder and CEO, in his blog post explaining the renaming of his anonymous career matchmaking platform. In an article penned for Inc., “How Not to Name Your Startup, and What You Can Learn from My Mistake,” Leung went into more detail:
“We were on our way to becoming a household name; that is, until we heard from the United States Patent & Trademark Office…To make a long story short, the USPTO refused our application for ‘Poachable,’ citing alleged similarity to two other trademark holders, ‘Poached’ and ‘Poachee.’ While we wholeheartedly disagreed with the decision, appealed, and finally made attempts at a coexistence agreement with the other parties, we found ourselves facing the daunting prospect of having to start from scratch. Thus began a long, intensive journey to rename the company.”
Anthology’s story is essentially a worst-case scenario in brand naming. After more than a year successfully building the Poachable brand, including stories in Inc., FastCompany and Fortune, the company now has to attempt to switch horses mid-race, explain the sudden change and launch ads to build awareness for a new name. Their experience highlights several of the costs — tangible and intangible — of resorting to an “involuntary rebrand,” from lawyers’ fees, lost brand equity and launching a new brand name to embarrassment, distraction and frustration.
Three Takeaways For Creating New Brand Names
What specific lessons can Alphabet, JSwipe and Anthology teach us about how to create new brand names?
Cast A Very Wide Net. Hundreds of thousands of trademark applications are filed with the USPTO every year, not to mention equivalent registries around the world. While stories of startups finding great names by picking from a handful of ideas in a hat may inspire us to try our luck, the probability of successfully “winging it” seems to be getting lower every year. Brands doing business in multiple languages or cultures are also likely to find some of their name ideas, even if legally available, won’t work due to concerns over pronunciation, unintended meanings or negative connotations (see Sweat and Pschitt, above).
To clear these hurdles while still meeting strategic and creative criteria, professional namers and naming firms typically generate hundreds or even thousands of name ideas for any given brand. Quantity is never a substitute for quality, but striving for both will yield the best results. Bear in mind that at this stage you’re not looking for one, perfect name — you’re looking for a strong set of options so that if one name inevitably fails to live up to legal, linguistic or other forms of scrutiny, all is not lost.
Keep An Open Mind. In introducing Alphabet, Larry Page wrote, “Don’t worry, we’re still getting used to the name too!” Tom Leung of Anthology advises, “Don’t overreact if people don’t swoon” over your new name. As consumers and businesspeople, we no longer think twice when using names like Virgin, Caterpillar, Gap and Yahoo, so try to subdue that reflex telling you a name will never fly (especially if it’s because the domain name is unavailable).
It’s far too easy to poke holes in something new, but, with the support of a visual identity and messaging, as well as focus, consistency and time, names, to a degree, take on the meaning they’re given. If the world has gotten used to “Google” as both a verb describing an everyday action and a noun describing a diversified, $66-billion company, names like “Alphabet” and “Anthology” will start to feel right in no time at all.
Listen To The Experts (i.e., Your Attorney). Perhaps the greatest lesson these three stories can teach us is to solicit the expert advice of a trademark attorney before investing time and money into a new brand name. Don’t assume you’re free to use a name without risk just because the domain is available, you’ve used a unique spelling or another company using the name seems “different enough” to you.
Put yourself in the shoes of that other company (Poachee or JDate, for example) — would you be upset if a new competitor adopted the name you’re considering? Or imagine you’re a potential customer trying to distinguish between the established name and yours — might you be confused?
These are useful considerations, but ultimately you’ll want to rely on an expert opinion. Risk is an inherent part of business, but without a lawyer, no one can tell you the nature, significance or potential consequences of the risk associated with using a given name. If you’re going to gamble, at least understand the game you’re playing.
In short, hope for the best — divine that one, perfect name and discover it’s eminently available — but plan for the more likely scenario — follow a tried-and-true process that balances inspiration and rigor. Do so, and your new brand will be able to put its best foot forward from day one — a little more safely.
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