Choosing a brand name for your future unicorn may be difficult.
Something catchy, something pragmatic, something unique. Something that conveys a message and makes up a good story, because people love stories, right?
And when you are happy with it, do not forget the legal side either, since many commercially good brand names may have been taken already. According to one study, over 75 % of the most common 20.000 English words correspond to a registered EU trademark and the remaining words are connected to negative meanings.
So, the trademark pro tip number one is: choose a brand name that also works as a trademark.
This means first of all that your brand name should be suggestive of your product at most, since words describing your product will be refused by the trademark authorities. Inventive or made-up words are often much better, but such words should not be used as a synonym for your product. Otherwise, third parties may be tempted to do the same for their own similar products, leading to what once happened to HOOVER, NYLON and THERMOS, all great brands back in the day, but now free for everyone. You could also try picking a random Finnish word for your international brand – something that many American companies have been doing much recently.
So, when you are confident that your brand name is good from a trademark perspective, the next step is to check you can actually use it by conducting a clearance search for your brand.
Here, it is recommendable to consult an expert, since in addition to identical prior trademarks, also similar trademarks may cause legal risks (and assessing the similarity of trademarks is hard). However, if your resources are limited, do some internet and trademark database searches at the very least, since when your business is flying and you are pitching to the investors, you surely do not wish to explain that you will by the way also be changing your brand name soon (because your IP lawyer is telling you that your brand name is infringing trademark rights of others).
The last item on your brand checklist is something that may be there already, namely, to apply for a trademark registration for your brand.
Having trademark registration(s) is nowadays seen almost as a necessity. Founders and investors alike know it, and often agree to apply for it in case trademark protection has been omitted during the early stages of the company. However, what most founders and investors do not pay so close attention on is to follow the above steps if there is no brand protection at all. This can easily lead to lost IP filing costs due to the applications becoming rejected by the trademark authorities.
Another blind spot is the quality of protection: that the brand itself (name, logo, icons, etc.), the goods and services offered under the brand, and the key countries of operation (current and future) are in fact covered by registrations. If the protection is lacking, correcting it afterwards may not be possible, e.g. due to prior third party trademarks. This in turn might reduce the value of your brand, make it vulnerable to copycats, take away licensing opportunities, make new market entries difficult, etc. For the above reasons, applying for good trademark protection early enough is important.
To summarize, you as a founder will do well if you remember to consider, research and protect your brand (in this order) before you go live with it, and repeat the said steps when your business grows to new market areas.
For further information, please contact:
Henri Kaikkonen, Partner, Bird & Bird
henri.kaikkonen@twobirds.com
