Know Your Rights: How to Choose a Brand Name and What Legalities You Should Consider

Between 2011 and 2015 the number of brewery permits filed in the United States jumped by 140% to 5,780. That’s a lot of breweries. If the average brewery markets, say, five types of beer, there are a lot of beers to find brand names for. Not surprisingly, by 2016 breweries were finding it harder and harder to come up with unique names for their products, and the only people who were doing well out of the problem were the lawyers.

You may not be in the brewing business, but the example is salutary. Whatever you are producing, you need to have a good brand name, and if you get it wrong you could be in all sorts of difficulty.

Choose Your Brand Name Early

The product comes first, of course. There’s no point in coming up with a brilliant name then trying to invent a product it would work on. But don’t wait until your product is ready to roll before thinking about the name. It will take a lot of experimenting and researching time.

Descriptive or Distinctive?

A common mistake when naming a new product is to make the name describe the product. It seems to make sense for customers to know what they are buying, but it can land you with problems.

• You will not be allowed to register a name which describes a property common to other similar products.

• If you could get away with a descriptive name, then it is highly likely that it has already been used by someone else.

• A descriptive name really does have to be an accurate description of what is in the packet.

It is possible to sail close to the wind, but you might end up having to get lawyers to argue your case. For instance, in 2015 the FDA took exception to the brand name Just Mayo from Hampton Creek, as the product was not technically mayonnaise. Eventually the company won the case for keeping the name but it took some hard arguing.

A better alternative to a descriptive name is one that is distinctive but only loosely (if at all) connected to the product. Apple computers are an obvious example of an arbitrary word that has nothing to do with the nature of the product.

You could go a step further and make up a word of your own—this would be a ‘coined’ mark and it would stand a good chance of being registered. You could even, like Google, take an existing but unusual word (googol) and re-spell it.

Are You Sure?

Having come up with your name, you need to stress check it. If you are planning to market internationally, make sure that your chosen name does not have an unacceptable meaning in another country. Pee Cola is popular in Ghana, where it means ‘very good Cola’.

Is the name something you are really proud of? If the product is a success (and surely it will be), is there any chance you might look back in years ahead and wish you had called it something else? Would you fight to defend it, because you may have to?

You have to be absolutely sure that no one else has already got a right to use your chosen brand name. The business of searching through all the records is a tedious but unavoidable one. You need to check, not only with the Patent and Trademark Office, but also with all 50 state trademark offices. In addition you need to search databases of ‘common law marks’, since a trademark right is obtained under common law just by being the first to use it, registered or not.

Register

Once you are confident that you have the right trademark and that it is available for use, register it as soon as possible with the Patent and Trademark Office. This can be done online and costs between $225 and $325.

Don’t forget that you may also want to register a suitable domain name for your internet presence, especially if you want a domain name for your product separate from that of your business.

Forethought or Afterthought?

Like so many things in running a successful business, choosing a product name benefits from careful thought and objective judgment. Once you have a clear idea for a marketable product, it is time to start working on that name, so that the finished mark will emerge at the same time as the finished product.

Lewis Miles is a designer for a product/packaging company and has worked with some big-name brands in the last several years. He enjoys writing on business topics, mostly regarding copyright subjects, something that independents often overlook when just starting out.