We've written before about the importance of brand naming, and the different types of brand name, so won't labour the point here. One point we think is important to labour is the criticality of a solid brand naming process, and of ensuring that trademark and IP checks are not forgotten.

Neglecting thorough trademark checks can lead to legal disputes, financial losses, and the daunting task of rebranding. Understanding the importance of comprehensive trademark vetting is essential for any business aiming to establish a strong and legally secure brand identity.

We're delighted to have expert input on this article from Manish Joshi, founder of specialist IP firm Joshi IP, who has advised brands on trademark clearance and protection.

Naming is getting harder.

Globalisation, business proliferation, proactive trademark enforcement, and diminishing availability of domain names have all played into a scenario whereby the number of available, low-risk, names is diminishing.

With increased saturation comes an increased risk of trademark conflicts.

Therefore, the brand naming process must include robust trademark vetting and checking, early in the process.

Founders feel this first-hand. Elin Roberts, co-founder of Better Nature, told us on Bear in Mind that finding the name was a painful process, because names the team liked kept turning out to be trademarked already.

With trademark law becoming more complex and the increasing number of trademark disputes, professional expertise has never been more valuable. For the businesses having to make these decisions, insights from experienced IP professionals can help understand both the risks and opportunities in the naming process.

Manish Joshi, founder of specialist IP firm Joshi IP, highlights how important it is to do early trademark clearance:

“When launching or rebranding, trademark clearance isn’t just a box-ticking exercise; it’s an essential investment in your brand’s future. By partnering with an IP professional early, you can sidestep legal disputes, protect your brand equity, and ensure you’re building on a legally secure foundation. A robust trade mark clearance process should go beyond cursory checks, delving into nuanced risks to safeguard your brand globally and for the long term.

Skipping proper trade mark checks is like building a house on quicksand. Without a solid foundation, the brand you’ve invested in can crumble under legal pressure. Engaging an IP professional early ensures you’re building on secure ground.”

Manish Joshi, Joshi IP

At White Bear, we recognise that a successful brand name straddles the balance between creativity and solid risk management and advocate for a process including the below key steps:

Engage an IP Professional Early: Involve an experienced IP lawyer at the very start of the naming process to ensure names are vetted for risk and trademark availability.

Go Beyond Cursory Checks: Avoid relying solely on superficial online checks performed by non-experts, as they can miss nuanced risks that could cause legal challenges later.

Develop a Vetted Longlist: Work with your IP lawyer to create a longlist of names that are pre-vetted for trademark availability at a high level, reducing the likelihood of presenting high-risk or unavailable names to clients.

Refine Based on Risk and Client Preferences: Use client preferences and risk ratings to narrow down the list. Focus deeper trademark checks on the preferred names to evaluate their full legal viability.

Provide Clients with a Clear Risk Understanding: Equip clients with a comprehensive understanding of the risks associated with each name. This allows them to make informed decisions about pursuing a name with higher risks or opting for a lower-risk alternative.

Facilitate Informed Choices: If a client chooses a name with some risk, ensure they proceed fully aware of potential challenges. If they prefer a safer option, guide them through the process with confidence and peace of mind.

Trademark clearance sits within the "Ownable" part of our MOS™ framework, which we use to assess every name. Great brand names are:

• Memorable: easy to recall, leaving a lasting impression on the target audience.
• Ownable: legally protectable, and distinctive to the brand's values and offering.
• Scalable: flexible enough to grow with the brand, accommodating future expansion or shifts in the market.

For a comprehensive guide on creating a brand name that meets all three, see how to come up with a brand name.

In the intricate process of brand naming, overlooking trademark checks is a pitfall that can have far-reaching consequences. By integrating thorough trademark vetting with creative development, businesses can establish a brand identity that is not only compelling but also legally secure.

Our Named Unforgettable programme does exactly that, working alongside IP specialists to take you from strategy to a shortlist of names that have already been checked for risk. Book a discovery call

Written by Dave Endersen, Managing Director at White Bear and DBA Design Effectiveness Gold winner, with expert input from Manish Joshi, founder of Joshi IP.

How to check if a brand name is trademarked, in short:

1. Decide which classes you need. Trademarks are registered for specific goods and services, grouped into 45 classes.
2. Search the official registers for the markets you plan to trade in: the UK IPO, EUIPO (or TMview) for the EU, the USPTO for the US, and WIPO's Global Brand Database for international marks.
3. Look for similar names, not just exact matches. A name that sounds or looks alike in the same class can still be blocked.
4. Check for unregistered use too, through a web, social and Companies House search.
5. Ask an IP lawyer to run a full clearance search on your shortlist before you commit.

A first check can be done in-house, and it is worth doing before the team becomes attached to any name. It will not replace a professional clearance search, but it will quickly rule out names that are clearly unavailable.

1. Identify your classes. Trademarks are registered for specific goods and services, grouped under an international system of 45 classes. A drinks brand, for example, will usually need class 32 (which covers soft drinks, waters and, perhaps surprisingly, beer) and may need others as the range grows. The same name can co-exist in unrelated classes, so knowing yours focuses the search.

2. Search the official registers. Each is free to use:

• UK: the UK Intellectual Property Office trade mark search, on GOV.UK
• EU: EUIPO's eSearch, or TMview, which also covers many national registers
• US: the USPTO trademark search
• International: WIPO's Global Brand Database

3. Look beyond exact matches. A name does not need to be identical to be refused or challenged. Names that look or sound alike, or share a meaning, in the same or a related class can still conflict.

4. Check for unregistered use. The registers only show registered marks and applications. In the UK, a business that has built up a reputation trading under a name can stop others using a confusingly similar one through a "passing off" claim, even without a registration. A web search, a social media search and a Companies House search will show whether someone is already using the name.

5. Take the shortlist to an IP professional. They will run a full clearance search, assess the level of risk for each name, and advise on where and how to register it.

A common misunderstanding is that registering a company at Companies House, or buying the domain, means you own the name. Neither gives you trademark rights. A limited company can be registered under a name that infringes someone else's trademark, and owning a domain does not stop a trademark owner from challenging it. A registered trademark is what gives a brand the legal right to use its name for its goods and services, and to stop others from doing the same.

Common Trademark Pitfalls

Many businesses, especially startups and small enterprises, view trademark checking as a final step rather than an integral part of the naming process. This mindset often leads to costly mistakes that could have been avoided with proper planning and professional guidance. Here are the most frequent issues we've seen where the process isn't robust:

1. Late IP lawyer involvement, leading to presenting unavailable, high-risk names, resulting in clients getting excited about a name they ultimately can't own.
2. An inadequate or absent vetting process, leading to businesses investing in a lengthy registration process that ultimately fails.
3. Successful trademarking of a name, only to face a challenge later, ultimately resulting in a costly renaming and rebranding exercise, and the loss of any brand equity already built.

High-Profile Trademark Disputes

Even well-funded companies with experienced legal teams can fall into trademark traps. These cautionary tales demonstrate how trademark oversight can affect businesses of any size:

1. Kylie Jenner and Kylie Minogue

Kylie Jenner applied to register "Kylie" as a trademark in the US for her growing beauty business. Kylie Minogue, who already held registrations for the name, opposed the application, and in 2017 the US Patent and Trademark Office refused it. It is a clear example of how an existing mark can block a name, however well known the applicant.

2. Tesla's Model E

Tesla planned to name one of its electric cars the "Model E", as part of a line-up spelling "S-E-X-Y" with its other models. However, Ford already owned a trademark for "Model E". Tesla had to abandon the name and call the car the "Model 3", losing out on its creative strategy.

Naming a new brand or renaming an old one? See our Named Unforgettable programme.