Trade Mark Portfolio Management – Part 1: Creating Protectable Brand Names

If you are reading this article, we are most likely responsible for managing your trade mark portfolio. The legal protection of brand names and logos, particularly in a global trade mark portfolio, requires the high degree of IP specialisation that FRKelly offers. In addition to understanding Irish and EU trade mark law and practice, managing a trade mark portfolio requires a commercial understanding of the owners’ business and relevant markets, as well as knowledge of legal issues in jurisdictions around the world. At FRKelly, we are proud to be entrusted with the care of global trade mark portfolios for many of Ireland’s leading brands and businesses. In this first of a six part series on trade mark portfolio management, we examine the legal guidelines that you should follow when creating new brand names to strengthen your trade mark portfolio.

(1) Create Legally Protectable Brand Names

Before dealing with trade mark law issues, strategic decisions will determine whether brand names are created in-house or with the assistance of an outside name creation agency. The business will know its own products/services, and marketing strategies, but design agencies will have more experience in brand name creation. Either way, the first challenge will be the devising of brand names that can be legally protected by means of trade mark registration, thereby creating exclusivity for the registered owner for its products or services. When creating new brand names, the creators need to be made aware of what is required of brand names to make them capable of trade mark registration. Creating legally protectable brand names is an important part of effectively managing a trade mark portfolio. It is very difficult to manage unregistered brands in any meaningful way legally, whether by way of enforcement, licensing, sale or otherwise.

(2) Avoid Directly Descriptive Brand Names

When creating new brand names, there is an understandable temptation to adopt names that directly describe the branded products or services. Such descriptive names have the immediate advantage of conveying a marketing message about the characteristics, advantages, or benefits of the named products or services. For example, names like “Budget” (car rental), “Payless” (shoes). “Kwik Fit” (car repair services)  and “Extra” (chewing gum) are names that immediately inform consumers and therefore have short term advantages. However, such advantage comes at a considerable legal cost. A descriptive or generic brand name will not initially be capable of being registered on the Irish, EU or other trade mark registers such that the brand name can become the exclusive intellectual property of the business to the exclusion of competitors. It may eventually be possible to register a descriptive mark on the basis of many years intensive promotion and use, but this can be a slow and painful process and many marks that are 100% descriptive can never be registered or owned in a legal sense regardless of the extent of use. In legal terms, the strongest brand names are those that are the least descriptive but the most distinctive, that is the most capable of identifying one business’s products or services from competitors. Therefore avoid directly descriptive brand names if at all possible. These descriptors should only really be used for short term or seasonal sub brands where legal protection is not needed, and where the sub brand can leverage off a more distinctive house brand.

(3) Invent a Brand New Brand Name!

The most distinctive brand names are “made up” names such as, Xerox, Google, Velcro, Weetabix or Kodak: these are unique, and have no meaning other than as brand names. While made up or invented names are ideal in legal terms, because they are likely to be unique and exclusive, such names may not be so attractive from a marketing perspective because consumers will not know what the business does when they see the name. Such names are probably only going to be ideal if a business is going to imitate the success of companies like Google or Weetabix. Nevertheless it is worth remembering that these are probably the strongest trade marks form a legal perspective even though they may require a large marketing budget initially to establish and make known.

(4) Pick a Fanciful or Arbitrary Brand Name

The next strongest type of brand names legally are “arbitrary” names which are words with ordinary meanings that are completely unrelated to the goods or services for which the names are used. Classic examples are “Innocent” for smoothies, “Apple” for computers, “Mars” for chocolate”, “Amazon” for online retailing and “Oracle” for databases. Ordinary words, when chosen as brand names, should have no reference to or association with the branded product or services at all and hence are usually referred to as fanciful or arbitrary brand names. These names are legally strong and can be registered as trade marks at home and internationally without undue expense or delay. When creating these brand names however, care should be taken that the words have no negative or undesirable connotations in overseas markets.

(5) Consider a Suggestive Brand Name

For many businesses, the best type of brand name may be a descriptive name that is somewhat suggestive of a product or service but doesn’t actually describe the product or service directly such as, “Microsoft”, “Netflix”, “PayPal” and so on.  These types of suggestive names are good for clients who wish their names to have immediate marketing appeal. In addition it should be possible to register these brand names as trade marks because they are not directly descriptive but have a degree of ambiguity and are allusive or evocative rather than generic. Although these names are not entirely straightforward to register, they can usually be registered eventually with the assistance of a skilled trade mark attorney.

(6) Be Imaginative and Distinctive

Made up, arbitrary and suggestive/allusive brand names have the required degree of distinctiveness to function well as trade marks, and can be legally protected in most jurisdictions around the world. Such distinctive trade marks come with their own costs and benefit. In the short term, businesses must spend more on marketing to establish recognition of distinctive brand names, and to convey marketing information. However, the businesses who do incur these costs also receive the broadest scope of legal protection under trade mark law, and enjoy the greatest scope to grow, and to become well known and distinctive amongst the purchasing public.

It is worth noting in the Interbrand’s best global brands rankings 2018, the top 5 brands, these being Apple, Google, Amazon, Microsoft and Coca Cola, are all distinctive trade marks from a legal perspective, being either made up, arbitrary or suggestive. For long term brand names, clients should try to avoid directly descriptive or generic trade marks which immediately inform customers of the nature of the product or service on offer, because for the most part such names will be very difficult and/or extremely expensive to register in any jurisdiction. Even if registered, they will be very difficult to police or enforce against competitors using similar marks. In summary, their “owners” will never really “own” these brand names in the proper legal sense.

 

 

 

 

 

Mary Bleahene

Partner | Trade Mark Attorney