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What’s in a name? That which we call a rose
By any other name would smell as sweet.

-           William Shakespeare, Romeo and Juliet

Shakespeare’s words make for beautiful poetry, but do they ring true in today’s market-driven business world?  Not really.  A variety of similar products may “smell as sweet” as one another, but the name by which they are known will have much to do with how well they sell in the marketplace.   Whether you are talking about a product or a service, the name by which you are known says a lot about you, on a number of levels.

The Trademark Act of 1946, commonly known as the Lanham Act, defines a trademark as "any word, name, symbol, or device, or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others." Simply put, this means that a trademark is a guarantee that the goods or services represented by a particular word, phrase or design are produced by a specific company.

The real purpose of a trademark is to distinguish one company’s products or services from those of its competition.  This means the best product or service names typically are:

·          unique

·          memorable

·          easy to pronounce

·          easy to spell

Trademarks infringe upon one another due to similarity in sound, appearance, or meaning.  If your name resembles an existing mark in any of these ways, you will either be denied registration outright, or your name will likely be challenged by the infringed-upon party, who may be awarded damages of thousands or millions of dollars by a court of law.

A good name must serve two masters – the Patent & Trademark Office, which registers and provides grounds for protection for the names, and the General Public, who purchase products and services.  On the one hand, most businesses would love to own a name that exactly describes what a product or service does, and how well it does it.  Unfortunately, descriptive names, if registrable at all, are afforded the least amount of protection by trademark law.  On the other hand, made-up, or coined, words are provided the greatest protection by trademark law, but they are often the most difficult to establish, in terms of brand recognition.

Descriptive names are given the least amount of protection, because in the sense of fair play, if certain words accurately and specifically describe a specific product or service, or the desired result of using a specific product or service, it is reasoned that all providers of that product or service should be allowed describe what the product or service does.  Allowing one company the right to own the descriptive terms of their wares presents an unfair advantage over the competition. That’s why something like “BEST DRY CLEANERS” would be difficult to register - every dry cleaner wants to think of themselves as “best.”

Moreover, in a competitive market, you want a brand name that will make your product/service memorable, so that the mere mention or sight of your mark brings the consumer’s thoughts to YOUR business, and separates you from the rest of the teeming masses. Terms that merely describe a product do not perform the essential function of a trademark, which is to identify the source of the products or services in question, and to distinguish them from products or services of other companies.  For example, a courier service called RELIABLE does not distinguish itself from other similar companies which consider their deliveries "reliable" as well.

On the other end of the name spectrum, there are coined names – names that are made-up and have no prior meaning.  Over time, with a strong product or service behind it, a coined name will prove to be among the most effective in the marketplace.  Because it is made-up, there will probably be no other similarly named products or services, regardless of its channel of trade (i.e., related products or services).  And, because it is made-up, it will be obvious that any similar sounding name is simply riding on the coattails of this coined name. 

On the down side, coined names can be difficult for the consuming public to remember, because oftentimes there is very little about the term that is familiar to them.  This is especially true in the all-important launch of a product or service.  Every business wants to see a strong showing right out of the gate, but if a name is too strange or different, the public may have a hard time embracing it.   People’s pronunciations and spellings of a coined name may differ so much that merchants may have difficulty in discerning exactly what they are asking for. 

In terms of best serving the two masters – Legal and Marketing – the best bets are probably arbitrary names and suggestive names. 

Arbitrary names are legitimate words, but ones that tell nothing about the product, how it is used or of what it is made.   They are arbitrarily applied to a product or service, such as Apple for computers, or Camel for cigarettes.  These names are effective because of the juxtaposition of a familiar term against a totally unrelated product or service.  An arbitrary mark may not receive the broad protection across product lines that a coined name may get, but its rights would likely be enforced against the use of a similar mark for a product or service having a logical connection to the goods or services for which the protected mark is used.  Therefore, “Apple” has one owner in the computer industry, and a completely different owner in the music recording industry.  But it is doubtful you will see another party own the name Apple for a software application, or a manufacturer of recording equipment.

Suggestive marks hint at, but stop short of describing, the nature, quality, use or physical composition of a product or service.  Instead, they conjure up an image that the manufacturer wishes the consumer to associate with his product.  This is what marketing is all about.  However, there is a very fine line between suggestive marks and marks which are descriptive, and it is often difficult to determine which side of the line a given trademark will fall.  For instance, the trademark SOFT AND DRY for deodorants was ruled to be suggestive, as it intimates how a person will feel after using this product.  However, HOUR AFTER HOUR, for the same product, was said to be a descriptive mark, as its name merely indicates the long lasting deodorizing effect that the product has on its user.

Bottom line, when choosing a new name, try to keep it different enough from anything already out there in the marketplace to keep the lawyers away, but intriguing or interesting enough to attract customers.   Hey, you don’t have to be Shakespeare to create something like that, do you?

By Charles E. Dennis

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