In the ever-evolving landscape of brand naming, encountering trademark challenges is an inevitable part of the journey. Our recent podcast episode delved into these challenges, shedding light on key insights and strategies crucial for overcoming these hurdles and establishing a strong brand identity.
Understanding Attorney Caution & Trademark Nuances
Trademark attorneys often adopt a conservative approach, emphasizing risk reduction and legal prudence. Their cautious stance is understandable, considering the complexities and legal intricacies involved in trademark law. However, a deeper understanding of trademark nuances is fundamental for navigating these challenges effectively.
One pivotal revelation discussed is the allowance of similar names for goods or services that are distinctly different. This facet of trademark law significantly reduces confusion among consumers and enables businesses to use names that might appear similar but are entirely unrelated in their offerings.
Distinguishing Trademarks from Trade Names
A critical distinction highlighted in the conversation was between trademarks and trade names. While trademarks serve to protect a brand’s identity in the market and differentiate its products or services, trade names are identifiers for businesses or entities. Leveraging diluted names as trade names while adopting different brand names for products can be a smart strategy to prevent potential legal conflicts.
Impact of Famous Marks & Overused Elements
Famous marks wield substantial influence in safeguarding their distinct identities. They hold the power to prevent similar names or usages, emphasizing the importance of crafting unique brand identities. Additionally, the impact of overused elements, such as common words or roots, can dilute a brand’s distinctiveness, making it challenging to stand out in the market.
Strategies for Approval
The discussion emphasized various strategies for overcoming trademark challenges. Utilizing AI tools for name generation has emerged as a powerful resource, offering a vast array of naming options. Understanding the geographic reach of trademark registrations is equally crucial. Furthermore, tweaking names slightly for uniqueness without infringing on existing trademarks can be a strategic approach.
Marketing Impact & Forward-Thinking Advice
Crafting memorable and standout names is pivotal for brand recognition and recall. The conversation underscored the significance of exploring diverse strategies rather than hastily discarding names due to initial trademark rejections. It’s crucial to adopt a forward-thinking approach to branding, aligning marketing efforts with legal strategies to overcome trademark obstacles and establish a robust brand identity.
Trademark challenges need not stifle the creativity and aspirations behind brand naming endeavors. By delving into the legal landscape, leveraging innovative strategies, and crafting unique yet legally compliant names, businesses can triumph over these obstacles and create a distinctive presence in the market.
For a comprehensive understanding of these strategies and in-depth insights, we invite you to listen to the full podcast episode.
Megan Dzialo (00:05):
Welcome back to naming in an AI age where we discuss new innovations in AI and especially how it impacts brand naming. We’re continuing our discussion today about getting that big no in naming, which means your name was legally rejected or not viable due to trademark issues. Mike is going to dive in more and provide some helpful options and solutions to help you get that big yes to a name. And so Mike, what if you’ve been rejected or somebody else maybe has a name that is the name that you love or is close to it, but you are determined to get that name that you love. Is there anything that can be done to salvage that name or to try to use it in some way?
Mike Carr (00:49):
Absolutely. It doesn’t always work, but I don’t want anyone that’s listening to give up too early in the process. Often attorneys, trademark attorneys are very conservative, right? And they want to do anything to reduce the chances of litigation, which I think is imminently sensible, right? Nobody wants to get sued, but we have clients, especially really big clients that have a legion of attorneys on staff or on retainer, and they have a policy of sending a cease and desist letter to anybody that even gets remotely close to a name that they’ve registered as a trademark. Knowing full well that in most of those cases, if the party they send that letter to was to fight them, they would have no legal grounds, prevent them from using that name. So we know there are folks out there that because they’re big and scary and they threaten you with legal action, they scare you off from using a name as a trademark in a lot of cases that if you just ignored that cease and desist letter, or if you had your attorney respond and say, Hey, I don’t think it’s really grounds, you could keep using the name.
And we’ve had small companies come to us and they’ve even said, our attorney said we could keep using the name, but we’re so scared of getting sucked into a lawsuit, we’re going to change our name anyway. I mean, we make more money that way, but I don’t think that’s the best strategy to follow. So let me go back to the way Trademark Law works. I think this is a big deal for folks that don’t really understand it. If you have a name and there’s another name out there that’s already registered as a trademark, that may be just fine because the way Trademark Law works is you can use exactly the same name as somebody else as long as your goods and services is different. So let’s go back to the example last week when we were talking about the Odyssey Coffee Shop and the Odyssey Branded Coffee.
There are a of other Odyssey trademarks out there, right? Honda has an Odyssey minivan. I think there’s a video game called Odyssey, et cetera, et cetera. Those are all registered trademarks. Well, how can that be? Because one’s a minivan, one’s a video game, one’s a coffee shop, and one’s something else, right? No one’s really going to be confused that the minivan is also a coffee shop. They’re very different. The price points are different. So the likelihood of confusion is minimal. So the first thing you need to understand is you can use a name that other people are often using as long as it’s for something totally different. Now, I have to put a disclaimer in here. I know everyone hates disclaimers, but I’m not an attorney. I can’t give you legal advice. It’s quite possible that my guidance right now is not exactly correct. I’m trying to give you some general guidelines.
They’re always exceptions. So please be sure and check anything that I’ve said or anything you get off this podcast with an IP attorney, with an intellectual property attorney that deals with trademark law before you lock and load. But what I just said about trademarks and how to interpret trademarks, I think is accurate, and it’s just something that you should think about before you get scared if you’re thinking you’ve got that big no, because you might be infringing upon someone else’s trademark, and lo and behold, it’s in a totally different class of goods and services. Does that make sense? Megan, do you have any other questions about that before we keep on talking?
Megan Dzialo (04:28):
No, it does make sense. But the other thought that I’m having is there’s also a marketing strategy behind this too. If I decided I wanted to come up with a new bike and I wanted to name it Twitter, well, it’s a totally different goods and services class than the Elon Musk’s Twitter now X. However, there is some controversy and there’s also some familiarity with Twitter, and do you want your new name or your new bike or whatever product it is to be associated with something that famous, or even if it isn’t a different goods and services class. So that was just something different that I wanted to mention, but I wanted to go back. We talked about this last week, but what if I’m not clear on the difference between a trademark and a trade name, and can you provide any clarity?
Mike Carr (05:12):
I can, but lemme go back to your Twitter example. I think it brings up another issue that’s not just a marketing issue. It actually is a legal issue. If a name is a famous mark, and I would argue that had Twitter continued, it certainly would’ve fallen into this category. You can’t use it regardless of the goods and services because Twitter is so well-known just like Coca-Cola, right? You couldn’t call it your new coffee shop, Coca-Cola or your new line of blue jeans. Coca is just such a well-known brand. They could prevent you from doing that. So there’s this unique class of famous marks. And so whether or not it’s a marketing decision, I think you’re right. It’s also a legal decision in that case. So another strategy, and it goes back to your trade name versus your trademark strategy is let’s say your coffee shop name was Bozo Brain Coffee and you just loved Bozo Brain Coffee.
You thought that was the most brilliant name, Brozo Brain Fresh Brewed Coffee or whatever. And you go out and you do a trademark search and you find out, oh my gosh, there’s Bozo Brainin Brewery, there’s Bozo Brain Crafted Coffee, there’s Bozo Brainin Fresh Coffee. I mean, there’s a bunch of other bozo brains out there. So there are two things you can do at this point. One is you can just use Bozo Brain as your trade name, as your business name, but not as your brand name. So it’s the Bozo Brain Coffee Shop down at the corner. And then you don’t sell bags of coffee to your patrons, you just serve coffee. Or if you do sell branded bags, use a different name. So you’re then just using that name as a trade name, as a business name, and as long as you’re able to register it in your locale, whether that’s the county or the state, the fact that there are a lot of other bozo brains out there shows that that’s a pretty diluted name.
No one probably can own that name as long as your incarnation of it, what you stick at the end of it’s different. You probably in many cases would be safe. And again, this is where you need to consult a trademark attorney, but the fact that a lot of other people are using a similar name from a legal standpoint, this seems a bit weird, I know, but from a legal standpoint, that’s actually good news because it often means it’s diluted. Therefore, no one can really say, I own Bozo Brain because there are lots of examples of other bozo brains out there. And as long as you like that name and it’s unique in your market area, your geographic area, and you’re not planning on expanding, in many cases you have a shot at just using it as a trade name, just as your business name. And then you might sell your coffee if you’re branding your coffee under a different name.
Another strategy, and this is a little bit nuanced, but I think it’s worth you guys thinking about this. Let’s say that you’re best known for your bagels, right? That even though you sell coffee, you’ve got an amazing bagel. And so everybody is coming to your store and most of your revenues aren’t coming from coffee, they’re coming from bagels. So when you file your trademark application, if you do want to start selling bagels with the Bozo Brain name on it, you would brand it, let’s say Bozo Brain Bagels. That might be the name of your store too. And when you file the trademark application, you simply take coffee out of it. So now it’s Bozo Brain Bagels in your trademark application would simply talk about you sell bagels. You wouldn’t claim, nor would you ask for trademark rights in coffee. You would just use that brand name on your bagels, not on your coffee since that’s what’s driving your business. So you can tweak the way you word your trademark application if you want to file for a trademark often to avoid problems by changing the scope of that trademark application to just cover the thing you’re most interested in and maybe eliminate some other things that, yeah, I do a little bit of that, but I’m not really using it as a trademark. Or I may get into that business in the future, but I’m not there yet. And that’s maybe where you’re bumping into legal or potential legal problems, so you just don’t do it.
Megan Dzialo (09:36):
So then talking about that dilution, would TJ Maxx and CarMax, you had talked about that legal issue, that story in our last episode. Does that max word follow that kind of dilution that ends up being this benefit to anybody who’s wanting to put Max in their name?
Mike Carr (09:51):
It does. There are a whole list of roots, and it’s probably the most common words you guys can think of that are overused ad nauseum, and so was CarMax crummy name for us to give them many years ago. And one could say, well, why’d you give a max? It was so overused. Well, the fact that it was overused also meant that it was well understood that Max really meant maximum a lot of, and so for Circuit City at the time, they were having the biggest challenge of just convincing folks that a used automobile dealership was a viable choice. There were so much bad reputation and angst around getting ripped off when you go down to the local used car lot and try to buy a used car, and you never know if you’re getting a lemon or not. So they liked Max because it conveyed we’re different than that used car lot, right?
We’ve got lots more cars. Plus Max referred to a level of service, maximum service, maximum attention to what the customer wants. It was part of their value proposition. And so even though that route was overused in combination with CAR as the prefix, it was a unique name. It was easy to understand. It didn’t require a lot of explanation. People sort of got it. So it doesn’t mean that you should always go with a root like that because it may not be as distinctive and differentiating. I mean, the whole point of branding is to come up with something that sounds different than anybody else’s and that you really can own and protect and use and grow. But for a lot of companies, the biggest problem is they need to understand what I do. They need to understand the business I’m in, or the name needs to communicate something about what I’m selling, in which case some of those routes that are used a lot may still be a really good choice moving forward.
Megan Dzialo (11:47):
So Mike, do you have any other lasting comments or any advice on how to help people get a yes on their name?
Mike Carr (11:55):
Yeah, there are a lot of other things that I think you can think about. And let’s go back to AI for a minute. We’ve used Chat g, PT Plus and Bard and some of the other tools that are out there for different naming exercises just to sort of test them out. And what we found is, if you want that Me too kind of name, right? That’s using Roots like the CarMax, the Max route, quite frankly. They’re very good. And there’s no reason to hire a naming consulting firm like us to generate a bunch of names that sound like everybody else’s out there because AI’s really good at that. Now, it’s going to be almost overwhelming. It’s going to just generate a ton of names, but they’re, a lot of ’em are going to be very diluted. And that may be a strategy for avoiding the no, from a legal standpoint, it’s not necessarily a great strategy from a branding standpoint.
It doesn’t differentiate you. It sort of puts you in that familiarity pool. I’ve heard of you before, but then they quickly forget your name. It sounds like everybody else’s name out there. So there are some other strategies. So another strategy is, let’s go back to the Bozo Brain example. Let’s say Bozo Brain is taken, it’s a registered trademark and it’s a registered trademark in the area in which you do business. And this is something else that folks have to understand. If you’ve registered your name as a federal trademark, a US federal trademark, then you can use it in the us. But you can’t put that little circle next to it when you’re using it in Canada. You don’t have registration rights in Canada, right? Or if you’ve registered it with your state as a trademark, you can’t claim that you have legal rights in that name in an adjacent state, right?
So when you register your name, that registration gives you rights in a particular geography. Federal registration gives you rights in the us the state registration gives you rights in that state, but you can’t go beyond that. So one way to avoid that no, is to register it. And as broad a geographic area as you think you might cover, especially with the web these days, that everyone seems to have a side hustle, the online business, the e-commerce site. So even though you might have a single location, you might be selling some things across state borders, and that’s what you need to do as soon as you engage in interstate commerce, right? As soon as you sell stuff across the state border, you then are allowed to file for a federal trademark, and that gives you of course rights to use the name throughout the country. It also means you’re going to be bumping into a lot of other potential problems.
So it is a strategic decision. If you can get the federal trademark, it’s always better to have that than just the state trademark, but you may not be able to get it because your name may be similar to somebody else’s name in a different state, but that name may only be registered in that state. So look at what the geographic scope is associated with the name that you’re finding on the web before you decide, oh, I can’t use that name. Well, you might be able to use that name, even though they’ve already got the URL, the.com. If they’re in a different state and they haven’t bothered to register the name as a federal trademark from a legal standpoint. Now from a marketing standpoint, if they’ve got a big web presence and they’ve already got SEO search engine optimization locked up around that name, then clearly that’s more of a marketing decision.
If you really like the o bozo brain and you’re running into problems, you can come up with a synonym for part of it. So maybe instead of bozo brain, bozo head, right? So it’s bozo head coffee instead of Bozo Brain Coffee. It may not be quite as catchy. You may like it better, but often you can tweak part of the name and come up with something that’s different enough so you can go ahead and use it. So that’s another strategy that I would think consider in developing names and trying to avoid that. No, and just totally abandoning the name and then walking away and trying to come up with something totally different.
Megan Dzialo (15:59):
I think there’s going to be a lot of people walking away that are going to start either Bozo Brain Beng Bagels or Bozo Brain Coffee. I mean, that name is starting to really stick with Mike. No, I promise you all, we come up with better names than Bozo Brain Coffee, though. That’s definitely an evocative one and one I will never forget. So thank you, Mike. I think that’s all for today. Thanks for listening in, and we’ll see you guys next week.
Mike Carr (16:21):
See y’all. Bye-Bye.