Is your company planning a new brand name? “Don’t fall in love with a name before researching it,” long-time trademark professional Kirsi Ekström reminds brand owners and corporate marketers.
“As a rule, only a highly distinctive—i.e., non-descriptive—brand name can be endowed with legally strong brand rights. Therefore, trademark registrability and brand rights should always be considered when choosing new brand names,” emphasizes EU trademark attorney Kirsi Ekström.
According to Ekström, a common practical problem from the standpoint of brand rights is that companies want to choose brand names that directly describe the services and products they offer, so that the name itself communicates the offering as clearly as possible.
Falling back on descriptiveness is understandable in that it helps potential customers immediately grasp what products or services are in question. From a marketing perspective, descriptiveness is also a tempting—and dangerously easy—approach, especially at the outset and with small marketing budgets. The situation is not helped by the fact that advertising agencies tend to create descriptive brand names for their clients.
“Typically, advertising agencies do not consider trademark-law aspects as part of the process of creating a new brand. This is left entirely to the client. Unfortunately, only a small proportion of companies conduct a preliminary trademark clearance search for the planned new brand name to assess registrability and infringement risk as part of the creation and selection process,” Ekström says.
She also highlights another stumbling block related to brand rights—namely, the different legal roles of company names and trademarks—which are often confused with each other.
“A company’s name does not, by itself, create a right to a trademark, which is a brand right separate from the company name. The company’s trade name therefore cannot be used as a trademark—that is, as an identifier of goods and services—without trademark registration; it may only be used to identify the company, i.e., as the company’s name.”
Why descriptive brand names fail as trademarks
When planning brand names, it’s important to understand the weakness of descriptive names as trademarks.
“The challenge with descriptive names is that they rarely receive exclusive rights if they describe, in any way, the characteristics of the company’s goods or services. As a result, they usually end up rejected as trademark applications,” Ekström says.
She gives examples of trademarks rejected for being descriptive and thus lacking distinctiveness:
- Seniori-Sanomat (“Senior Newspaper”) – not considered distinctive for advertising services
- VOIMAPUURO (“Power Porridge”) – not considered distinctive for oats, cereal products, processed grains, and grain-based foods
- VITAALI (“Vital”) – not considered distinctive for various pharmaceutical and medical products
- Attorney-at-Law – not considered distinctive for legal and attorney services
- VAPAAN LEHMÄN (“Free Cow’s”) – not considered distinctive for milk, dairy products, and milk-based beverages
Choosing a descriptive name as a company’s main brand is particularly problematic.
“It can lead to the company having to create an entirely new brand name later, or accept that strong rights in the brand name cannot be established. In that case, there are also no means to prevent a competitor from using the same or a similar name for its own product or service. This is hardly what any company wants,” Ekström warns.
A distinctive brand name can be combined with a descriptive element
What if a company wants its brand name to also communicate something about its field? Ekström suggests combining a distinctive core name with a descriptive addition.
“A good example is our client’s brand name Bluet Floating Solutions. This brand nicely conveys what the company does, but the brand name still includes the required distinctive and protected element BLUET, while ‘Floating Solutions’ simply explains what the company does. This way, the brand name is both distinctive and informative. Many telecom operators use a similar strategy—pairing descriptive product or service names with their distinctive, established and protected corporate brand name.”
Don’t lock yourself into one brand name too early
When starting the search for a new product name—whether it’s for the main brand or for an individual product—it’s best to have several alternatives to begin with. To generate name candidates, companies can, for example, organize an internal competition for employees or use an external service provider such as an advertising agency.
“If you focus on just one candidate name at the start, chances are high that the trademark search phase will reveal it can’t be used due to conflicts or registrability issues. Then you’re forced back to square one. Also, be prepared that finding a new name usually takes time,” Ekström notes.
When choosing candidates, one must remember that highly distinctive names and descriptive names are opposites.
“Therefore, it’s recommended to look for invented terms that have no inherent meaning and are not tied to product or service features. Invented or abstract terms are ideal, as they provide the strongest legal protection. Only with such names can you reliably prevent competitors from using the same or similar names,” advises Ekström.
Between purely distinctive and descriptive names lie suggestive names—those that hint at qualities or create associations without directly describing the product. These are often registrable but still risky.
“Trademark offices have become stricter in recent years, and names once considered suggestive are now more likely to be rejected as descriptive,” notes Ekström.
Do your homework before choosing a brand name: trademark search
Before finalizing a brand name, companies should always conduct trademark clearance search. This involves two key aspects:
“First, assessing whether the mark is distinctive enough—in other words, not descriptive of goods or services—so that it qualifies for registration. The second important aspect is checking whether the name conflicts with earlier trademarks, thus preventing use or registration. The brand name must not be confusingly similar to names that others already have rights to for the same or similar products in the same market,” Ekström explains.
To conduct reliable trademark search, proper classification of goods and services is also essential to avoid future problems. For this, expert services are useful, since the internationally used classification system does not perfectly align with commercial categories.
For international brands, additional checks are needed to ensure the name doesn’t carry negative meanings in target market languages. Ekström recalls the famous Mitsubishi Pajero case from the auto industry in the early 1980s:
“Mitsubishi launched its full-size SUV under the name Pajero. When the company introduced the model in Spanish-speaking countries, the brand name had to be changed to Montero. in Spanish, 'Pajero' is a vulgar slang term that denigrates male sexuality. Needless to say, that rebranding was anything but cheap.”
Don’t forget domains and social media usernames alongside the brand name
Domain names and social media usernames should also be part of the brand name selection process.
“For a main brand, it’s critical that the desired domain name is available. If you want the domain to match the brand name, you need to screen candidates with this in mind,” advises Ekström.
“For individual product names, the importance of domain names depends entirely on the company’s strategy and what role they play for that specific product. In addition to domains, social media usernames should also be checked early in the process to secure consistent digital branding.”
Qualities of a good brand name – a trademark professional’s checklist
The most important quality of a legally strong brand name is distinctiveness, so it can be registered with exclusive rights. In addition to distinctiveness, Ekström sums up the key qualities of a strong brand name:
- Distinctiveness. The name stands out and differentiates your brand from competitors and their brand names.
- Memorability. A name that’s easy to remember increases the likelihood that consumers and potential customers will recall your brand.
- Pronunciation. Choosing a name that is clear and easy to pronounce improves usability and recognizability. Here it’s important to consider the languages spoken in your target markets.
- Positive in meaning. Consider possible cultural or linguistic associations in target markets. This helps avoid negative connotations.
- Visual appeal. Pay attention to visual aspects, such as design and logo, so that the trademark is visually attractive and memorable.
Do you need expert help assessing the distinctiveness of a brand name? Contact us!