A company or product name is arguably its most valuable brand asset. And yet it’s often unprotected, or worse, a potential liability, ready to pull down the whole house of cards.
What do The Porterhouse Group, Kylie Jenner, Diageo and Beyoncé have in common? All four have been involved in costly trademark disputes involving brand names. We’ll come to some of these and other interesting examples shortly. But first, a small bit of context.
On this week's Inside Marketing podcast we're joined by Niall Corcoran, MD of CI Studio, and trademark attorney Adam Flynn of IP specialist lawyers FR Kelly, to discuss the importance and pitfalls of naming for brands. Listen now:
For consumer businesses – and even in the corporate world – a brand is the most valuable entity a business has as it seeks to capture everything the company represents and stands for. The Ehrenberg-Bass Institute for Marketing Science created what it calls a “distinctive asset grid” which helps organisations pick out the assets that best represent their brand, as measured by fame and uniqueness.
Typically, there are no more than three or four key brand codes or assets (eg logo, colour or typeface) that are core to the brand’s distinctiveness. As most marketers know too well, it’s all about being recognised (think McDonald’s golden arches or Coke’s unique bottle shape), especially when it comes to the moment of consumer purchase or decision-making.
I spoke recently with Jenni Romaniuk, research professor at the Ehrenberg-Bass Institute, who explained how, “The name is the brand, it’s how you know other things are distinctive assets, because they evoke that name. I refer to it as direct branding – using the name or indirect branding – using another device to evoke the name, which are your distinctive assets”.
Why then do some business owners, marketers and even brand managers give it so little consideration? By consideration, I don’t mean interest. Most of us love naming things; our kids, pets, houses and so on. Perhaps because it’s relatively easy, and such a personal thing to do, we therefore bring this thinking into business. A name can have an emotional resonance or meaning for people and so the criteria for selecting one can often be very subjective. Therein lies the trap that many fall into.
As most marketers know too well, it's all about being recognised
While working on the brand creation of a new public body, a senior executive once remarked to me that the name didn’t really matter. In time, they felt the brand would be defined by the service it delivered. In some respects he was right, as pretty much any thought, feeling or emotion someone has when they hear your brand’s name is your brand. Therefore service (good or bad) will have far more impact on how the brand is perceived.
But was he right that the name didn’t matter? Recently, the Porterhouse Group lost a trademark row over the name of its tapas chain, The Port House. When attempting to trademark, it received objections from the body established to protect the reputation of port wines. The EU Intellectual Property Office (EUIPO) ruled that the use of the name The Port House could cause confusion among consumers who might think the tapas bars were associated with the famous, sweet fortified wine. In essence, they were infringing on an existing trademark, taking undue advantage of and exploiting the reputation of the world famous wine.
Following the ruling, it was reported by The Irish Times that Elliot Hughes of the Porterhouse Group said that further legal advice was being sought to see if it would be appealed. It has always intrigued, but not surprised me, how quickly and easily business people can get into protracted and very expensive legal disputes over name and trademark issues. Employing a naming professional to create and protect your most valuable brand asset can help you to avoid having to engage in a costly trademark battle.
Adam Flynn of trademark specialists FR Kelly says that it’s very important to ensure that once a shortlist of potential names has been drawn up, each name is checked to see if anyone else has registered an identical or similar trademark to it.
You have to be creative when coming up with a new name
“People come to us all the time when they’re about to launch their company or product or shortly after, and ask us to run a trademark clearance search. By that stage, it’s often too late,” Flynn says.
“I dealt with a company recently that was ready to launch a new alcohol brand in Ireland and they had all of their branded labels, packaging and marketing materials printed and ready to go. I ran a clearance search of the trademark databases for them and found out that there was a very similar trademark already registered for identical products. As a result, that brand was abandoned and all labels, packaging and marketing materials went straight into the proverbial bin. They had to completely start afresh with a new budget and a wiser perspective.”
It can be even more damaging if a new brand has been trading for a while and something or somebody comes out of the woodwork that deems their trademark has been infringed and is entitled to halt its use. A lot of financial expenditure may already have been deployed on advertising, getting products to market and now all of a sudden, not only do you have to stop using your brand and come up with a new one, you might actually find yourself on the wrong end of a trademark infringement lawsuit and have to pay upwards of €100,000 to defend yourself. On top of this, if you lose, you may also have to pay the other side’s legal fees.
Be creative
“You have to be creative when coming up with a new name. You need to pick something that is unique and distinctive. Something that stands out and makes it easy for consumers to associate your products or services with your company which is where an agency like CI Studio comes in,” says Flynn.
If you pick a name that isn’t very distinctive or is too descriptive of your products or services, there can be two major consequences. First, customers are less likely to remember your brand or associate it with you, and second, if you try to register it as a trademark, it’s very likely that the Trademarks Registry will refuse your application. If you can’t register your brand as a trademark then it’s incredibly difficult to stop others from copying it.
At CI Studio, we’re lucky in that we have a namer (yes, there is such a person), who has over 20 years of experience creating brand names; from global gaming brands such as Havok, to more local brands such as Saba or public bodies such as Tusla or Intreo.
It’s a collaborative process with the whole creative team and with the client team, which is a bit like a funnel.
At the top are the lenses (agreed naming directions for consideration) that we look through. As we develop names that work under these lenses or headings, we begin to select and discard them using the criteria we have agreed with the client. Typically, these criteria can be phonetic (easy to say and remember), semantic (does it convey the right idea or tone), strategic (does it align to the business objectives) and available (are domains free, potential to trademark).
There are very few (if any) one word .com domains that are available to buy anymore. The proliferation of brands, driven by the internet and social media in the last 20 years, means that they are all pretty much gone. If they are available to buy, they are extremely expensive.
Close to home, an Irish tech company called Teamwork reportedly spent $675,000 to buy the teamwork.com domain. So “word-ging” tweaking, splicing and dicing words to craft a name that fits, that works with the brand, that has the right tone, which is clean and clear, which the brand can occupy, own and in time build meaning into, is the challenge for any great name.
The great Roddy Doyle once said, “I like naming characters.” Reversing this, a good approach to developing a brand would be to see the name as a central character in the story that the brand wants to tell, and to give it the unique gravitas it deserves.
Niall Corcoran is managing director of CI Studio
[ irishtimes.com/insidemarketingOpens in new window ]
