The Name Game

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 register-able 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 madeup
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?

— Charles E. Dennis
© Knowledgence Associates, 2003 / All Rights Reserved

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