New Brand Names: Can Marketing and Legal really work together?

Nadaline Webster,

Can you picture it? - the Marketing and Legal departments embarking on a new naming project in a perfectly symbiotic pas de deux. Marketing send forth their researched and frankly brilliant new product name, Legal (or Outside Counsel) clear it for use and register it as a trademark in plenty of time for Marketing to design their packaging and message around it.

Sadly, it almost never seems to work that way!

All too often, this step in bringing a new product to market becomes a bottleneck causing friction between the two departments. It’s not the fault of either department. The difficulty is that these two disparate processes are not designed to be comfortable bedfellows.

From a Marketing perspective, there are best practices when it comes to naming a product and it is easy to see where the first part of the problem comes in on reading them. This article recommends that brand names should be simple, vivid in imagery, familiar and distinctive. It then immediately goes on to note that these four practices are not necessarily compatible. Looking then at the Legal side, it is the ‘distinctive’ element that is most important.

A trademark, at it’s simplest, is defined as an identifier for goods or services that distinguishes it from similar goods or services supplied by another company.

Distinctive is non-negotiable

In many cases, Marketing will create a shortlist of names that they feel are amazing and that the market will respond well to. They’re probably not wrong about that. However, these names are often not distinctive enough to be trademarked and therefore protected against infringement.

Nonetheless, Legal do their best to make Marketing dreams come true!

They will submit a request for a search report. This is usually ultimately provided by a legacy vendor, even if it comes via their outside counsel. Slow turnaround times can mean weeks before they have an answer for their colleagues. Meanwhile, the hard working folks in Marketing have been busy and have built campaigns around their favourites that they now cannot use. Everyone must go back to start and begin again. The level of inefficiency causes extreme frustration and irritation on both sides. The information from legacy vendors comes days or weeks after it was needed, which doesn't support or meet the needs of businesses today.

This is a process issue and it may be that a simple process change can fix it. The solution lies in using legal technology to give Marketing the tools that they need to filter out the overly descriptive brand names, to which the market will respond wonderfully but aren’t compatible with the trademark registration process.

Help Marketing Make Better Choices

We are not suggesting for a moment that your Marketing team can make informed legal decisions about potential brand names. But they can make better educated choices about the potential brand names that they put through to the legal department for clearance.

At TrademarkNow, many of our clients have successfully integrated the use of ExaMatch as the next level tool to help Marketing wipe out the bottleneck, reduce frustration on both sides and bring their products to market faster and less expensively.

This one process change can dramatically reduce purposeless workload on your legal departments, remove a great deal of frustration from your marketing team - Aligning legal and marketing and certainly shutting down the friction that is non productive and wastes company resources.

To learn more about how companies are empowering marketing and streamling the naming process, take a look at our instant identical mark searching tool. This allows our clients to effortlessly find information on specific marks and owners globally.

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Editor’s Note: This post was originally published in April 2017 and has been updated for accuracy in February 2019.

By Nadaline Webster