Category Archives: Intellectual Property

Naming Tips – Number 42 in a Series

If you’ve given up finding a name for your offering and plan to use the services of a naming consultant, copywriter or ad agency, here are a couple of thoughts.

First share with him/her/them all the pertinent info about the offering, including background, competition, market targets, your brand architecture, your corporate vision/mission/goals, any market research you’ve performed, and lastly, any prejudices you and other top execs might have concerning a name.

What I’m saying, as I’ve said time and again in this set of tips, is develop and share a naming brief.

Quite often the person or organization you’re contracting with will have their own format for a brief. (If not I’d be suspicious from the start- probably wouldn’t hire them.) If they do, be sure to use it, but also provide additional data from your own planning documents that is relevant.

This brings up the second point. Whoever you use should sign a non-disclosure agreement (NDA). This is, of course, a legal document. There are templates available over the Internet, but I’d sure have an intellectual properties attorney review it before using it.

The NDA allows you to share proprietary info that could very well be important in the naming process.

The third item: Be sure you also have a letter of agreement that the name you decide upon will become your property. Unless you have a signed document turning ownership over to you, the writer/contractor will retain the legal right of ownership. Some contactors will want an extra fee for relinquishing title. Be sure to make arrangements within your contract for this turn-over prior to signing that document.

Lastly, be sure to have a contract you both agree to before beginning work. It should describe a scope of work, method of doing business, description of deliverables, a schedule, pricing, an arbitration agreement as well as the ownership clause. I’d also want to spell out the method of performing and pricing second and third name generating iterations if they are required.

Since I’m usually on the vendor’s side of the contract negotiations, I’ve see and written plenty of contracts. They needn’t be over a couple of pages in length, but they should be created, signed and adhered to for both parties protection and understanding.

Martin Jeslema

What trademark types are strongest?

Talcott Franklin in his book, Protecting the Brand, has classified the types of brand names by their strength as legally protected trademarks.

The strongest brands are so-called “fanciful” marks. These are names (and/or identifying marks) that are invented to function as trademarks. This is another way to describe “coined names”. Here we’re talking about names like Kleenex, Swiffer and Oreo. The only problem is that they must be vigilantly protected both internally and by stakeholders in general lest they become the product itself rather than the product’s source. Then you find people using the word as a noun (Google is my search engine instead of I use the Google search engine) or verb (I’ll Google Talcott Franklin), and that weakens the brand legally. In fact, many fanciful names have because generic because of the owner’s lack of customer education and vigilant protection (Thermos, Yo-Yo and Trampoline are examples).

The second strongest marks from a legal standpoint are “arbitrary” names. Franklin’s definition of arbitrary names is the same as mine: words or symbols in common use but not in the context of the product being named. Franklin’s examples include “Apple” and “Camel”.

Franklin says that courts give the next strongest degree of protection to “suggestive” names and marks. These names suggest an attribute or characteristic of products but do not describe them. Often they evoke positive associations. Commonly, these names are metaphors that allude to benefits. “White Rain”, “Husky”, “Titan” and “Mr. Clean” are examples.

“Descriptive” marks will have the lowest degree of protection if challenged in court. And, this type of name/mark will be the type most often challenged as well. That’s because descriptive names tend to the generic. Synonyms for product type will obviously fall into this category. But so will those words that are descriptive of a product characteristic. Some examples: “Progressive” and “Clean-Up”.

In addition the USPTO will not award registration to marks that incorporate geographic names, personal names, common symbols, titles of publications and several more obscure classifications.

As I’ve said every time I blog about trademarks, copyrights and incorporation, I suggest retaining an intellectual properties attorney. The regulations can be pretty convoluted and the case histories too numerous for comfort.

Since a trademark can be the foundation of the brand, it’s best to get it right from the beginning. As I’ve said in several blogs and other web pages, “Brand Smart for the Start”.

Martin Jelsema

Protect your Trademarked Brand from Going Public

The laws and federal codes defining and regulating trademarks provide a bit of flexibility concerning brands. And that flexibility, or ambiguity if you wish, leads to litigation and a body of trial precedents that provide intellectual property attorneys plenty of business.

Once you have registered a trademark with USPTO, you are not completely free to do as you wish with that trademark. For one thing, you want to prevent your trademark from falling into the public domain. Think it can’t? Here is a list of well known words that had been trademarks until the courts decided, because someone wanted to use the trademark in a generic way to identify a type of product, that they had truly become generic terms through neglect.

 Asprin             Cellophane
 Corn Flakes    Cube Steak
 Brassiere         Dry Ice
 Escalator         Lanolin
 Light Beer       Mimeograph 
 Nylon             Super Glue
 Thermos         Trampoline
 Yo-Yo           Zipper

So what did these brand owners do wrong?

Essentially they allowed the trademarks to become nouns and/or verbs. Trademarks are, by regulation, adjectives that identify the source of products, they do not describe the product itself (i.e., they do not substitute the trademark for a generic product description).

It is tempting to want to have people think of your product when they think of a product category, but by encouraging people to  make the substitution you are on the road to making your trademark a generic name for the entire product category.

Now Talcott J. Franklin, an intellectual properties attorney, in his book, Protecting the Brand, cites six rules to keep you save from turning your brand into a generic name. In all your written materials…

1 Always use the mark as an adjective.
2 Never make the mark plural or possessive (either makes the word a noun).
3 Never use the mark as a verb
4 Always distinguish the mark from the remaining copy.
5 Always indicate the trademark status at least once when you include the trademark.
6 Do not give the mark a definition, except as a trademark for the company. 

Those are pretty self explanatory except for number six. I believe Franklin’s meaning here does not preclude a phrase such as “Xerox® brand copy paper”. This isn’t a description of the trademark, rather the trademark is an adjective modifying “copy paper”. Rather, using a tagline like “Xerox®: leader in paper imaging” actually makes the trademark a noun. And that’s the issue.

So if you own or are planning to own trademarks, I’d suggest you get Franklin’s book, and I’d also seek the advice of an intellectual properties attorney.

Martin Jelsema

Can a company “own” green?

If you’re following this blog, you know I initiated a series of blogs about color in branding.

Now, color has made the business section of the Denver Post.

Al Lewis of the Denver Post ( has written about an upcoming case which should interest everyone involved in branding.

It seems that the giant lawn and garden products company, Scotts Miracle-Gro doesn’t want a competitor to use green in their trade dress. They’re suing TerraCycle to cease and desist from using green and yellow in their packaging and “confusing the market” with similar packaging to Miracle-Gro.

The packaging is not at all similar to my eyes.

I’d download pictures of the respective packages and put them side-by-side except the TerraCycle has used a “gimmick” to demonstrate their environmentally-friendly packaging – used, recycled plastic pop bottles – and they show it’s origin by morphing the TerrCycle label into a pop bottle as you “mouse over”. Anyway, here are the corporate urls of each so you can make your own comparisons.

The point is there is no similarity in type, design, shape or name of the competing products. The only similarity is the color combinations. So can Scotts “own” those generic colors. I’m pretty sure the Pantone numbers are not identical, and they aren’t used in the same proportions.

Now to be as forthcoming as I can, there’s another issue in Scott’s suite – they take issue with the TerraCycle claim that their Worm Poop (yes, that’s what they call their product, probably because of its main ingredient) is superior to the “leading synthetic plant food”. That’s another debate.

Al quotes Tom Szaky, CEO of TerraCycle, who thinks “this is more about the fact that we’re taking shelf space at Home Depot and Wal-Mart…than customer confusion”.

I agree. So does a trademark expert and law professor Wendy Seltzer who Al quotes as saying, “No one is allowed to monopolize necessary colors.”  She contributes to an informative intellectual properties blog branders should find valuable at

Although the article didn’t define “necessary colors”, I suspect that means primary, secondary and tertiary colors; the web-safe colors of the internet and the pms colors of the Pantone palettes.

I’ll just bet the packaging issue between TerraCycle and Scotts will never come to trial. At least I hope not.

Martin Jelsema

Branding Basic – Step 11

Now you have your name and logo, and possibly a tagline.
Now the challenge is to use these elements in a consistent and professional manner whenever you have the opportunity to display and promote your brand.
This can become difficult. Particularly when you’re under the gun.
The media salesperson, bless her/his heart, volunteers to “recreate” your logo for their ad so you won’t be late for the meeting. You give this Samaritan your business card as an example and thank him/ her with great sincerity. Until you see how they butchered the logo in the final ad.
Over time it gets worse. You mislay the repro sheets, or your assistant accidentally deletes the logo file for 2-color reproduction. You forget the PMS color for your logo. The recommended proportion for logo to tagline disappears. With more employees needing to imprint the logo and the brand “look” to more and more materials, one or two will take matters into their own hands and “redesign” on the spot with the resources they have handy. Your new graphics designer decides you should be using the type face Americana because it’s now all the rage.
All these “little” course adjustments add up and you find, like so many small businesses do, that they are sailing “off the edge”. Their brand has no consistent personality. Their brand has become unfocused and diluted.

I’ve taken four fairly long paragraphs delineating the problem because it’s so insidious and niggling.

The answer is relatively simple if you’ve taken my advice about hiring an experienced logo designer. A veteran designer will want to develop graphic standards for your brand.

A graphic standards document, usually in the form of a .pdf file, will display and describe accepted use and variations of the logo itself, identify colors for the logo for use in printing (PMS) and electronic applications (RBG), provide specifications for stationery, recommend compatible type faces, possibly recommend a color palette for promotional materials, describe the placement and proportion of the logo with a tagline and/or a descriptor, and finally, set down rules (policy) for all to follow – employees and suppliers alike.
Accompanying this document will be the files of the various accepted logo variations and formats, with recommendations for acquiring the preferred accompanying fonts. Make two copies, one on a CD, and another for day-to-day use. Also make copies of the standards and distribute them to all graphic arts vendors and tell them to use it. Make copies for your employees, too.

This would be a minimum, though probably all that’s required for a start-up company, to assure consistent and professional logo usage.

Martin Jelsema

Branding Basics – Step 8

So now you have one or two names you believe are absolutely perfect for the business. Now comes the frustration. 

You search the USPTO (that’s U.S. Patent and Trademark Office) on-line database ( only to find someone else already owns the precise set of characters you’ve chosen for your name, and they are competing in the same industry category. 

Or you may find by searching the Department of State databases in the states you plan to do business that there’s a competitor using the name.

It may be desirable that your name also be available as a domain name. (There may be a better domain name for your website than you company name depending upon how people will reach your website. You may want a domain name that speaks more directly to how your prospects think about your product category or keywords.) 

Creating a name that is available for trademark, domain name and state(s) incorporation registration can be frustrating and time-consuming.

I get more naming business from entrepreneurs who have fallen in love with a name they can’t own, and can’t move past it. They get stuck and just can’t generate any more adequate candidates. Since I’m not emotionally involved, I can continue generating appropriate candidates ’til one meets the criteria and is available. It sometimes takes multiple iterations.

But even if you’ve performed a successful preliminary search doesn’t mean there’s an end to it. You would do well to then go to a trademark attorney or one of several firms specializing in making comprehensive name searches. They will first search every state and territory. They will search databases with alternatively-spelled configurations for phonic infringement. They will review international trademark databases if necessary. 

You may be able to adopt a name that someone else is using if it’s in a different industry classification, or you may be able to buy a name from a registered owner if necessary.

Once you’ve found a name that you can legally use that meets all the branding criteria, it would be a wise move to trademark it, and to register it with the Departments of State in the states you will have a physical presence.

Developing and protecting a viable name is probably the single most important branding activity you will perform. That name will represent your company for many, many years. It will develop into an asset of great value over time – assuming it lives up to your promise.

So here again, I admonish you to brand smart from the start.

Next time we’ll look at logos.

Martin Jelsema