ONE OF THE BIGGEST PITFALLS IN BRAND NAMING: OVERLOOKING TRADEMARK CHECKS
We’ve written before about the importance of brand naming, so won’t labour the point here.
One point we think is important to labour is the criticality of ensuring a solid brand naming process and 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.
One point we think is important to labour is the criticality of ensuring a solid brand naming process and 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.
The Growing Challenge of Trademark Conflicts
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.
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. 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 resultant loss of any brand equity they had 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's Kylie Cosmetics in Australia and the USA
When Kylie Jenner launched her globally recognised cosmetics brand, it faced trademark disputes in Australia and the USA with a local artist who already owned the rights to "Kylie" (Kylie Minogue). Jenner was unable to secure the trademark in Australia and the USA for certain goods, resulting in costly legal proceedings and limitations on branding opportunities in that market.
2. Tesla's Dispute Over Model E
Tesla planned to name its electric car the "Model E" as part of a lineup spelling "S-E-X-Y" with its other car models. However, Ford owned a trademark for "Model E," leading to a legal dispute. Tesla had to abandon the name and rebrand the car as "Model 3," losing out on its creative strategy and spending significantly to market the change.
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.
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. 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 resultant loss of any brand equity they had 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's Kylie Cosmetics in Australia and the USA
When Kylie Jenner launched her globally recognised cosmetics brand, it faced trademark disputes in Australia and the USA with a local artist who already owned the rights to "Kylie" (Kylie Minogue). Jenner was unable to secure the trademark in Australia and the USA for certain goods, resulting in costly legal proceedings and limitations on branding opportunities in that market.
2. Tesla's Dispute Over Model E
Tesla planned to name its electric car the "Model E" as part of a lineup spelling "S-E-X-Y" with its other car models. However, Ford owned a trademark for "Model E," leading to a legal dispute. Tesla had to abandon the name and rebrand the car as "Model 3," losing out on its creative strategy and spending significantly to market the change.
Expert Insight
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
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
A better process
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.
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.
Beyond Trademarking: Ensuring a Name is Ownable, Memorable, and Scalable
While trademark clearance is a critical component of the naming process, it’s equally important to ensure that the chosen name is:
• Ownable: The name should be unique and reflective of the brand’s values and offerings.
• Memorable: A strong brand name is easy to recall, leaving a lasting impression on the target audience.
• Scalable: The name should have the flexibility to grow with the brand, accommodating future expansions or shifts in the market.
For a comprehensive guide on creating a brand name that encompasses these elements, refer to our detailed blog post: How to Come Up with a Brand Name.
• Ownable: The name should be unique and reflective of the brand’s values and offerings.
• Memorable: A strong brand name is easy to recall, leaving a lasting impression on the target audience.
• Scalable: The name should have the flexibility to grow with the brand, accommodating future expansions or shifts in the market.
For a comprehensive guide on creating a brand name that encompasses these elements, refer to our detailed blog post: How to Come Up with a Brand Name.
Conclusion
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. At White Bear, we are committed to guiding our clients through this process, ensuring that their brand names are distinctive, memorable, and protected in the marketplace.
Want help?
Email us here or book an exploratory call here.
Want help?
Email us here or book an exploratory call here.
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