Lexicon® Blog

Archive for February, 2011|Monthly archive page

Getting the Name You Want: Dealing with Trademark Obstacles

In Branding, Business, Naming, Trademark Research, Trademarks on February 17, 2011 at 3:00 am

I wish there were a marketplace for trademarks.

There’s nothing more disheartening than spending time and money developing a short list of potential brand names for your latest entry into the marketplace, only to find the one that works the best, that hits your communication objectives, that everyone on your team is fired up about and ready to support…is unavailable due to a trademark conflict.

Unfortunately, it is all too familiar and likely to stay that way.

The United States Patent and Trademark Office recently reported the active trademark registrations for fiscal year 2010: a record-breaking 1,614,121.  This is for the US alone.  In an increasingly global marketplace, the trademark clutter is harder and harder to cut through, especially in software or consumer electronics, where your phone is a camera and a computer and by the end of this piece, it may even be a cappuccino machine.

Recently Racebrook, a private equity firm and auction specialist, put over 150 retail brands up for auction, many with long histories and fine pedigrees, offering firms an opportunity to avoid worrying about the trademark clutter and leverage existing brand equities. This also represents an opportunity for the market, as valuable intellectual property goes to those who are willing to utilize it.  This was a one-time affair, but in the increasingly cluttered world of brands and marks, it may become commonplace.  Naturally, it only provides a solution if one of the brands up for auction conveys the brand equities you are looking for.  What to do if you have already identified a name that works for your project, but potential trademark conflicts are furrowing brows in your legal department?

It’s important to remember that a potential trademark conflict is just that – a conflict, not a dead end.  And, as the old saying goes, there are many ways to skin a cat.  Abandoning your team’s favored name is one option.  Using the name anyway and hoping you don’t get caught is another, but I wouldn’t recommend it. (Remember: If a registered trademark owner can show willful infringement, they can get treble damages!)

A better option might be to look deeper into the potential conflict to see whether the owner of the potentially conflicting trademark is open to a sale or licensing agreement.  It’s important to remember, and often forgotten, that Pepsi could use the mark COCA-COLA if Coca-Cola agreed to it, and vice-versa.

At Lexicon, we constantly look beyond the obstacle for the opportunity, whether that obstacle is strategic, legal, or linguistic.  Treating potential trademark conflicts as obstacles rather than as dead ends allows us to find solutions for clients, integrating our knowledge and experience with their needs and concerns.

Some conflicts, like Pepsi trying to use COCA-COLA, or naming your software company MICROSWIFT, are not likely to be resolved except by giving up or getting sued.  But if your project is an email app you want to call BLUEBOTTLE, and there is an existing registration for BOTTLEDBLUE for networking software, isn’t it worth looking into?

A licensing agreement can be a win-win for both parties.  A big firm releasing their latest mobile phone OS could bundle an existing trademark owner’s app in exchange for a right to use an otherwise infringing brand name; the phone maker gets the name they want and the app maker gets increased market share.

There are obstacles to these kinds of deals.  The biggest is uncertainty, hence my proposal of a marketplace for trademarks.  Call it TradeMarket.  It may be a pipe dream, but an open, public trademark clearinghouse could represent an opportunity to increase efficiency in the realm of trademarks.  It would have to be large, and it would have to cost nothing to trademark owners to list their trademarks and whether they are amenable to a licensing agreement (or even to sell their mark, in the extreme).  Then, if a firm is considering a name for their next big brand and they see a potential trademark conflict, a quick perusal of the TradeMarket could provide a path to a win-win scenario.  This could spawn a peripheral niche industry for third-party neutral valuation of a brand name’s worth.

Certainly many brand owners will eschew any such offers in order to protect their brands, but that could be part of the listing as well, providing certainty to others that they should look elsewhere in their brand name development.  Others could list the goods/services for which they would consider a license, and those they would consider off-limits.  More certainty leads to better information, and better information leads to better decisions, creating business solutions to legal problems.

TradeMarket might be that solution.  But I better check the name first…

— Alan Clark, Director of Trademark Research at Lexicon Branding

Brands Just Want To Be Friends

In Branding, Business, Naming, Trademarks on February 7, 2011 at 3:00 am

Creating your new brand for an expansive experience as opposed to a particular product will inevitably serve you well.

There used to be a time that most brands had a first and last name. Pepsi Cola. Kodak Film. Eveready Batteries. It wasn’t that the last name was always a part of the registered trademark — like Coca-Cola — it was just that the descriptor had to be there to distinguish the mark and tell people what they were getting. Then consumers would take the descriptor along for the ride so that they have less of a chance of having to explain the name to someone unfamiliar to it.

As society continues to move swiftly forward and peoples’ attention spans grow ever shorter, so do their consideration of trademarks. Thanks to the Internet, we’re getting used to being on a first name basis with brands like Google, Amazon and Facebook. These types of brands are not products, services, or even companies as much as they are experiences. And most experiences, by their very nature, defy being described by a single word or even phrase.

Amazon started out being billed as “the world’s largest bookstore.” While they still hold comfortably to that claim, they now also offer everything from automotive merchandise to watches. Simply by telling someone “Look for it on Amazon,” it’s an indication that the name itself literally says it all.

To illustrate further how the experience of the brand continues to shift, Lexicon created the BlackBerry name for Research In Motion back when the initial product was a two-way pager. Over time, with a robust line of smartphones and now a tablet coming online, BlackBerry stretches to cover a lot of tech and without having to say more about itself — the products speak for themselves. In the first world, certainly, if you tell someone you’ve got a BlackBerry in your pocket, they’re unlikely to think you’re speaking of the fruit.

The tendency in our society is take something short and shrink it even more. That’s why we like nicknames. It’s why we can’t help turning longer names like Theodore into Ted, Maddie becomes short for Madeline and even the two-syllable Joseph turns into Joe.

In the branding world, a classic case-in-point of this same phenomenon is FedEx, which began as Federal Express back in 1973 but, in 2000, the company decided to go with the flow and change their brand over to the shorter nickname. (Linguistically speaking, FedEx is a syllabic abbreviation of the original name.) It doesn’t seem to have been a capricious choice. By using Google’s Ngram Viewer to chart the occurrences of Federal Express versus FedEx in printed material, one can actually see the use of the longer name start to dip as the FedEx nickname continues to rise — a trend that sharpened once the name change became official.

Contrast of the use of the terms “Federal Express” vs. “FedEx”

This move toward informality will likely continue. In a social media world of tweets, where you have to get your message across in just 140 characters, brevity is becoming the soul of marketing. FedEx was a shorthand that everyone was using, so it came pretty naturally. Conversely, like a kid trying to foist a self-created nickname on people, it comes off as a little sad when a company tries to force the issue and create a shortened version of their brand on their own. Last fall, FedEx competitor United Parcel Service finally abandoned their ad campaign to try to become known as “Brown”. Makes sense — why would people adopt a longer name instead of the already short and familiar UPS?

The strategy can work, if the company is willing to make the commitment. An example is Eveready, which changed its moniker, in 2000, to Energizer, represented by that ridiculous drum-beating pink bunny.

The more that consumers interact with your offering — the friendlier they get with it — the more they come to feel a sense of ownership of it as well. As that happens, they’ll begin find new ways to use it. So, rather than your nascent brand being a product, service, or company, think of it, instead, as an unfolding experience. One of vast scope and limitless potential. With that in mind, it’s good business to consider just how expansive your brand may become, and to do so before you even hit the market.

For any company to be a good steward of their brand requires that they manage this business of shifting perception. Fighting too hard against consumers’ desire to cut your name short might result in a backlash. But pandering to it rarely pays off as well. Just as protecting one’s good brand name requires attention, companies need to also be aware of how their name is being used and recognize when it may be time to get a little friendlier.

Lexicon Branding