As naming specialists know all too well, creating a brand name that passes creative and strategic muster is only part of the naming process. The ultimate test is whether that name can pass legal muster, and is trademarkable. In Catchword’s latest free video, Catchword principal Mark Skoultchi walks you through the basic principles—and common pitfalls—of preliminary trademark screening. You’ll learn why it’s not enough to make sure the exact name under consideration isn’t trademarked by someone else . . . how to conduct preliminary trademark screening in a way that allows your brand to expand in the future . . . and what sorts of names stand the best chance of being protectable. While it’s no substitute for professional legal counsel, this 6-minute video can give you a leg up and help you to understand and even participate (initially) in your trademark screening process—before turning it over to the professionals.
Posts Tagged ‘Trademark’
This item was originally published on August 5th, 2010 at Fast Company.
I predict that the hottest holiday gift for Californians this year will be the Volcano Vaporizer. Haven’t heard of it? It’s a “revolutionary system that releases the active ingredients from herbs through hot air vaporization.” And by herbs, they don’t mean basil. As you probably know, Californians will vote this fall on Proposition 19, which would legalize, regulate, and tax the purchase and sale of marijuana in the state. Recent poll numbers show that 52% percent of voters–that’s more than half–support Prop 19. If it passes, we could see legal marijuana on the market very soon.
And that means branding. I have heard the (perhaps apocryphal) story that companies like Philip Morris have pre-loaded their marijuana cigarette branding, that they’ve got the packaging, naming, and ads ready to go as soon as it’s legalized. (I have not been able to verify this through either Snopes or Straight Dope, so perhaps someone who knows can enlighten me.) It seems plausible, but a quick scan of U.S. trademarks shows no pending or registered marks for marijuana by cigarette companies.
This isn’t surprising, since to be eligible for a trademark, a product must be legal for interstate trade, not violate international trade agreements, and be in ongoing commercial use. Clearly this is not the case in the U.S. at the moment. But what about medical marijuana? It’s legal now in 14 states, plus Washington DC.
Apple has now licensed their second trademark from Cisco. First they settled with Cisco and licensed “iPhone” (Cisco previously owned the trademark for handset phones). Now Apple has launched their new operating system name, iOS, also a Cisco registered trademark.
Is Apple simply browsing the list of Cisco trademarks that start with “i” and retrofitting their products? I got curious and decided to check the USPTO database for other Cisco marks that Apple might someday license. Below I’ve listed a few actual Cisco “i” trademarks (current and past), and I’ve decided to predict the products that Apple might create so that they can license the last remaining Cisco “i” brands:
iPort – Someday in the not too distant future, Apple will take teleconferencing and videoconferencing to the next level with the iPhone’s new teleportation app. Initially this app will be stumbled upon because Steve Jobs gets tired of relying on slow supersonic jets to transport him from one proselytizing gig to the next. And of course, Steve will never settle for “phoning it in.” Thus the Apple engineers will defy Einsteinian and Newtonian physics and deliver the iPort, the world’s first teleporter.
Here’s how the pitch might go: So you woke up late for work and you’re going to miss that important sales pitch? Forget conference calling into the meeting … Instantly teleport yourself to the meeting with iPort. Never be late for an important date again. Missing important events in your life? Now that’s a thing of the past. With iPort you can be anywhere, anytime. Teleportation. There’s an app for that.
(Legal Note: Apple may or may not need to sequence and store your genetic code for iPort to work properly. Further, Apple may or may not claim ownership of said genetic code.)
There have been a number of Dilbert strips that deal with naming; seems like Scott Adams does about one a year. And you know what? It’s still funny, and it’s still true!
This is the crux of naming: finding names that are both appropriate and available. Lots and lots of names are appropriate but completely unavailable; many “names” are available but utterly inappropriate, as Dilbert points out above. Go with the former strategy, and you’re likely to get sued. Go with the latter, and you end up with a company name like Nemesis Motors (actual example).
After nearly 15 years in the naming biz, I can safely say that I do not want to see these name suggestions in technology ever again. They are not available, will not be available, and they’re taking up valuable 0s and 1s on my hard drive. That’s your free advice for today.
Explorer
Spectrum
Oasis
Visa
Vista
Next
Engage
Edge
Additions to this list are welcome!
This item was originally published on April 1, 2010 at Fast Company.
I was in a meeting with Vinod Khosla once, about a thousand years ago in Internet time (which would make it roughly 2001). We were discussing how, even then, it was tough to find names for Silicon Valley companies that were interesting and available. I was giving the Catchword speech on trademark availability, and how important it was to avoid choosing a name that was already in use, when Vinod jumped in with “Do you think that when we founded Sun we worried about how many other companies were using that name? We just shouted louder and longer than any of them, and we made Sun our name!”
He had a point. Certain companies have never let trademark law stand in the way of a good name. (Of course, sometimes those companies turn right around and use their legal department like a blunt instrument against other people who have the same idea, but that’s not personal, it’s just business.) In 2007, it seemed inevitable that Apple would call their new device the iPhone, despite the fact that Cisco (via Linksys, and earlier, Infogear) owned a trademark for “IPhone”. That mark had been registered in 1999, giving Cisco a clear right to the name.
Most recently, though, we’ve seen behemoths either shy away from potential trademark conflicts, or get beaten by the little guy. Case in point: Sony’s new PlayStation Move motion controller. Rumors and leaks in early 2010 (most notably by THQ’s CEO Brian Farrell) all but confirmed that the new name would be Arc; Sony even registered “playstationarc.com” and filed for a trademark for “PlayStation Arc” in Japan. But just days before the big reveal at Game Developer’s Conference 2010, new rumors flew fast that Sony was backing away from the Arc name because of Microsoft’s Arc trademark for accessories, including computer mice. On March 9 Sony filed for a European trademark for “PlayStation Move” in Europe and announced the name the next day.
Why did Sony give up on Arc? It’s unlikely that they thought consumers would be confused; the MS Arc products aren’t hugely popular and don’t have a lot of brand recognition. (In fact, before the PlayStation Arc name was floated, I would have challenged you to find three ordinary people who knew about MS Arc.) The MS Arc trademark is specifically for “computer mice and computer keyboards”, and the PS Move mark is for “game controllers” and accessories – which from a trademark point of view, are pretty damn different. But trademark examiners are just humans, and the power of the Microsoft brand (and its 5 story building full of lawyers) is not to be trifled with. Sony probably felt that any risk involving MS was just too big to take. One wonders why this wasn’t all settled behind closed doors months ago. Perhaps it was just the case of an irresistible force meeting an immovable object.
Google, meanwhile, has had its own issues with its Android operating system. They tried to trademark the word “android” in October 2007, but it was rejected for being too similar to an existing mark held by the company Android Data, which was registered in 2002. They went ahead with the name anyway, figuring…what? That Erich Specht, who owns Android Data, would be honored that Google stole his name?
So Specht sued them, to the tune of $94 million in damages. The case is still in motion, and it’s not clear how things will shake out. Google appealed to the USPTO, claiming that Android Data was dissolved in 2004, but they were denied. Another appeal, another denial. Once again, one wonders why this wasn’t all settled months ago…
To add insult to injury, just this month (March 2010) Google was denied the trademark for Nexus One, its Android phone. As with Android, their mark was deemed too close to an existing mark for Nexus, held by Integra Telecom. At the risk of repeating myself, one wonders why….
But it looks like Apple learned their lesson. Fujitsu has been selling a device called the iPAD since 2002, which shared many features with Apple’s iPad product (touch screens, wi-fi, etc.). This time there was no lawsuit: Apple bought the trademark from Fujitsu, 
just in time for the launch on April 3. Phew! Good move, Steve Jobs! You had me worried for a moment there.
Of course, there are other iPads out there. Will Apple buy the rights to “iPad” from Coconut Grove, a Canadian company that makes bra inserts designed to enhance cleavage? They just might. And then there’ll be an app for that.
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…”
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.
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!
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:
