Seven things a fashion attorney told us about choosing the perfect brand name.
Naming a brand is a special kind of riddle. Both an art and a grind, it’s exhilarating but difficult, requiring equal measures of creativity and practicality, gut intuition and real-world savvy. Aside from the pressure to come up with something clever, a brand name has far-reaching implications that can snowball into a legal shitshow, a costly one at that.
For tips on how to approach the process, we asked Los Angeles fashion attorney Yira Dirocié, who serves as in-house counsel at luxury sportswear brand Oyster Holdings and routinely advises fashion brands, startups and entrepreneurs on day-to-day business affairs, domestic and international trademarks, copyrights, licensing and brand collaborations. Here’s what she said.
GET AN ATTORNEY
Not to wave her own flag, but Yira says you need someone like her on your side, and right away. She’s worked with clients at all stages of this process, and the longer they wait to consult someone who really understands trademarking, the more money they waste disentangling themselves from a dangerous, dead-end path. Yira says you should involve an attorney “immediately, and definitely before investing money into creating branded product, taking the product to market or investing in domains and social media handles.”
The heartbreak of investing in a name concept and building a brand on it, only to find a cease and desist letter in the mail, is something Yira has witnessed enough times to know it isn’t pretty. She suggests getting someone on board early and leaning on them for support throughout the process. “Your trademark attorney should be like your best friend, someone you immediately call to talk about the strength and availability of the name.”
DON’T JUST USE THE FIRST NAME THAT COMES TO MIND
It feels magical to come up with a name for your brand organically, during an aromatherapy bath or on a hike through the hills. But the metaphysics of creativity are only viable if they are aligned with the law of the land. “The most important thing to consider when choosing a brand name is whether the name is clear for use,” says Yira. “Oftentimes a company will invest in a name without doing research to see if someone else is already using the name in a similar way that might expose them to infringement litigation.” You also need to be thinking about how difficult it may be to trademark and defend the name once you decide it’s the one. “Are you able to protect the name via a trademark so you can exclusively own it in your particular space?” Yira asks.
SOME NAMES ARE BETTER THAN OTHERS
Yira breaks down the five types of brand names, from weakest to strongest.
Generic... You cannot protect generic names with a trademarks because other businesses need to use them to describe their products and services. (Example: Black Dresses)
Descriptive... A name that describes the brand by its product or service is very difficult to protect without immense global marketing success, such that consumers immediately recognize the brand by the name and don't confuse it with what the words actually mean. (Example: American Airlines)
Suggestive... A brand name that suggests a characteristic or effect of the product is considered strong under trademark law. (Example: Coppertone)
Arbitrary... A brand name that is an existing word or phrase with no connection to the brand's products can pass trademark distinction. (Example: Apple)
Fanciful... The strongest brand names are made up words with no dictionary meaning, wholly ownable by the brand. Yira says fanciful names are the easiest to register and defend. “It is easy for a brand to shut down another party for using a name that didn't exist until they made it up.” (Example: Kodak)
EVERYTHING IS ALREADY TAKEN
Original ideas are hard to come by, especially if you want them to evoke something familiar. Pretty much every existing word is already owned as a .com url and an Instagram handle, which Yira notes is a red flag. “If the handles are taken and Google retrieves results with others using the name, this is usually an indication that there may be issues,” she says.
One quick way to find out if your favorite name is trademarked is to do a TESS search (Trademark Electronic Search System) to see if the mark is registered with the USPTO (United States Patent and Trademark Office). But even this isn’t foolproof. “Not finding an identical match does not mean that the name is available,” Yira warns. “Brands should have an attorney also do a search for confusingly similar names based on appearance, sound, meaning and connotation.”
Some names are off limits by Common Law even if they aren’t registered. If a company can prove they used the name in commerce first, you may not be able to register and protect it. But this doesn’t mean you should rely on Common Law to protect your own brand name. Register, register, register, says Yira. “It is always best to register your trademark,” she insists. “Common Law rights might only exist in, say, one state as opposed to nationwide. Registering your mark will keep a record on file and prevent others trying to file a similar or identical name.”
YOUR BRAND NAME IS EVERYTHING, SO TAKE YOUR TIME
“I often see brands investing heavily in a name, only to find out later that the name is not cleared for use,” says Yira. “It is a costly mistake that can be easily avoided by consulting an attorney.” It’s easy to get caught up in the idea of a new brand and accelerate the process of getting product to market, but this is a rookie move. “The best advice I can give is to take your time because the name is everything,” says Yira. “You should only invest in a name you’re sure you can own and protect.”
YOU MIGHT NEED CREATIVE HELP
Coming up with a name that is legally usable is only the first step. The real challenge lies in discovering something that is both viable and inspired. “The name should have a story that resonates with the brand,” says Yira. “Why are you picking that name? What does it mean to the brand? Can you expand the name globally? Will it be offensive in other cultures or languages? Is the name something you can live with 5 years from now?” These are all questions you should ask yourself before you greenlight a name and build a brand around it.
A copywriter or creative agency can come up with name options that represent your brand elegantly and attract the customers you want. And they will work in concert with your attorney to arrive at a name that is completely free of trademark issues and also aligned with your creative and business goals. “Creatives can help in the naming process by interviewing the client about the DNA, face and vision for the brand. Having a vision board, a brand deck, and talking out loud about the brand with a creative team can get inspiration flowing.”
ONCE YOU HAVE A NAME, GUARD IT WITH YOUR LIFE
“If protected and maintained properly, a trademark is the mostimportant asset a brand can have,” says Yira. But that is a big if. Brands should always police their trademarks and enforce exclusive use anytime they spot an infringement. Also, brands need to maintain their registered trademarks by renewing them and actually using them. If they don’t, they can lose their exclusive rights. “Trademarks are the only form of Intellectual Property that have ongoing protection so long as you maintain and continue to use them,” says Yira. “Even huge, famous brands have to continue to fight to protect their trademarks. Registering a brand name is just the beginning."