It used to be that marketers and lawyers didn’t see eye to eye. (Ok, maybe the use of past tense is a bit optimistic.) But we’ve found a few quality IP attorneys who really understand what we naming consultants are trying to do (i.e., help our clients sell more stuff), and who appreciate a good naming firm’s understanding of what IP attorneys are trying to do (i.e., keep their clients from being sued).

One such firm, Winthrop & Weinstine, has started a rather interesting blog that covers the intersection of marketing and intellectual property. I was asked to submit a guest blog this week. You can read about my views on descriptive names, abstract names, and suggestive names on the DuetsBlog here.

As they say in the movies, “I think this is the begining of a beautiful friendship…”

Tags: intellectual property, naming strategy, Trademark
Posted in Brand Naming, Company Naming, Product Naming, Trademark | No Comments

I almost couldn’t believe my eyes when I saw the news that a guy in Russia is claiming to own the winky-face emoticon. :0 He also says he’ll sue any corporate entity trying to make money off of his intellectual property. If business want to use the emoticon, they can license it for $10,000 plus royalties. That’s highway robbery! >:0

I highly doubt he’ll be able to uphold his claim on the emoticon. The use of emoticons dates back to the early 1990s and is certainly now in the public domain, both here in the U.S. and internationally. I’ll be following story closely, if only for the absurdity of it all.

Tags: emoticons, Trademark
Posted in Trademark | No Comments

Recently, I promised to answer the question most asked by our clients: What does it mean for a trademark to be confusingly similar to another trademark? Well, I lied. The question that’s really most asked by our clients is, “It’s gonna cost me how much to name this thing?!”

But the likelihood-of-confusion question is interesting, too. In making that determination, the Patent & Trademark Office (PTO) employs the Polaroid Test (named after the famous case of Polaroid Corp v. Polarad Electronics Corp.), which looks at such factors as:

* Degree of similarity between the marks (visually, phonetically). Think Starbucks vs. Starbuxx. A difference in spelling is not enough to avoid confusion if the marks are phonetically identical.

* Marketplace proximity. Suave Shampoo and Suave Dating Service could happily co-exist, but Oscar Mayer Bacon and Oscar Fryer Bacon would be a problem.

* Likelihood that the prior owner will “bridge the gap” and enter the market of the subsequent owner (or vice-versa) — though this is not always easy to predict. Consider that Apple Computer is now being sued yet again by the Beatles’ label, Apple Records. I wonder if that has anything to do with the success of iTunes!

* Actual confusion between the marks. Have consumers already been misled? Proven confusion is of course a good indication of likelihood of confusion!

* Strength of the prior mark in question (the more distinctive the mark, the stronger it is). You’re safer using a mark that is similar to an existing weak mark than an existing strong mark. So, if you’re going to start an online bookstore, call it “Books, Books, and More Books,” rather than “L’Amazon.”

* Sophistication of the buyers. A really interesting criterion. Consider car buyers and potato-chip buyers. Because of the time and investment involved in buying a car, buyers are much more likely to make an educated, deliberate purchase, and less likely to be confused by similar brand names, than their chip-buying counterparts. Or so they say. If you’re anything like me, you’re pretty particular about your snacks.

Like most intellectual-property law, likelihood of confusion isn’t black and white. But, if you remember these criteria, you’re in much better shape than most. Good luck, and happy naming!

Tags: naming, Trademark
Posted in Brand Naming, Branding, Trademark | No Comments

In honor of Saint Patrick’s Day, Catchword’s naming leprechauns have been busy compiling statistics on Green names and implications for marketers.

It seems everyone’s jumping on the green brandwagon. Trademark filings incorporating “green” jumped 143% between 2006 and 2007, versus under 5% for “red” and “blue.” Clorox’s recent introduction of Green Works, a line of biodegradable household cleaners, exemplifies the trend.

“Eco” and “earth” names also showed huge gains (almost doubling), while more general terms like “nature,” “natural,” and “pure” grew less than 20%.

What does all this mean for marketers, going forward? Are “green” names still golden? Or are there greener pastures? Here’s our take on green naming:

(more…)

Tags: green naming, green trademarks, Trademark
Posted in Brand Naming, Branding, Trademark | 1 Comment