Avoiding Trademark Pitfalls: Q&A with Tara Benson, Esq.

Choosing a new trademark is a thorny task for many companies.

tbenson_hi_res2So we asked Tara Benson, Esq., a seasoned intellectual property attorney, for her thoughts on how to avoid the most common pitfalls.

Benson is Trademark and Licensing Counsel for CommVault Systems, Inc., a publicly traded data and information management software company (www.commvault.com). During her career, she has handled trademark work for such clients as Tazo Teas and Amazon.com; and also served as in-house counsel for Library Video Company/Schlessinger Media, the leading distributor and producer of educational media.

Tara, it often seems that tension between marketing and legal departments is the start of trademark troubles. Do you agree?

Absolutely. In my experience, marketing departments often gravitate towards a mark which describes the product or service. Descriptive marks ensure that the customer can easily identify the product. Unfortunately, descriptive marks will not likely win the right to be registered and probably don’t do much to distinguish your product in the marketplace.

Q: So does that mean you should avoid descriptive marks at every tur
n?

In short, yes, it is best to avoid them whenever possible. The strongest marks (and those that are able to achieve trademark protection) are fanciful, arbitrary or suggestive marks. A fanciful mark is a word, which has no meaning aside from its use as a trademark, such as Kodak or Exxon, while arbitrary marks are existing words with meanings that are generally unrelated to the product with which they are used, such as Apple for computers. Finally, suggestive marks are those which suggest the identity of a product, but do not merely describe the product (e.g. Coppertone for suntan lotion). It is important that a marketing department be aware of these necessary qualities while brainstorming names for new products or services.


Q: Do clients become emotionally attached to names they are considering?

Yes. Sometimes people on an internal team for naming a product or service will become so attached to this development name that they are not willing to part with it once the product or service is ready to be launched. Falling in love with an internal development name prior to completing a full trademark search and legal review is one of the most common problems companies encounter. I always stress the importance of completing a trademark review on a mark before company employees become too attached to a name.

Q: What other pitfalls do you see?

One is the selection of a name that is simply too confusingly similar to that of a competitor. Selecting a name that is too similar to a competitor not only impairs a company’s ability to federally register that name, but also may result in a trademark infringement lawsuit against the company. Companies should always strive to select names that are easily distinguishable from those of their competitors.

Q: Our surveys show that up to 20% of large companies use employee naming contests as one way to generate new names. Good idea, or bad idea?

There are a few famous names that have been the result of an employee naming contest. But this is not the norm. While organizing an employee naming contest for a company’s newest product may be a fantastic morale booster, it rarely generates protectable marks.

Employees may not understand the legal issues that exist such as avoiding trademark infringement, generic or merely descriptive marks and foreign equivalence issues. Foreign equivalence issues include avoiding marks which may be offensive in another language or those marks which may otherwise be culturally insensitive. Instead of hosting a naming contest, companies should consider hiring a naming company, using naming software or relying on the input of its internal marketing professionals.

Q: What about the use of consultants to generate new names?

Third party naming companies can be a tremendously useful tool if utilized properly. If a company opts to engage a third party naming company for its new product, I recommend that the naming company work closely with an employee who has a strong working knowledge of the product, as well as with the company’s legal team.

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