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When naming products and services on behalf of clients, branding agencies face a particular dilemma: How can we ensure our best ideas will pass the trademark application process?

The unfortunate reality is they can't - at least, not 100% of the time. With that said, brand managers often face more trepidation than legal professionals when it comes to evaluating brand names.

Without an in-depth understanding of trademark law, they run into three common problems:

Clearance opinion letters.

Ask any in-house counselor how they feel about them, and you will likely get a mixed bag of responses.

While hiring outside is something every in-house legal team must eventually do, it isn't always done with enthusiasm. Like many routine expenses, outsourcing is often met with both relief and regret:

• Relief that another is handling a task you don't have time to complete
• Regret over paying someone else for something that could theoretically be done in-house.

If you thought the trademark application process couldn’t get any worse, you’re probably mistaken.

Recently, there’s been an onslaught of trademark activity worldwide. In 2007, the USPTO received 370,000 applications. In 2016, application volume increased to 500,000. With the USPTO balancing dramatic annual increases in trademark applications against the Federal hiring freeze that has left thousands of U.S. government positions unfilled, there’s some definite tension about what the future could hold.

How worried should we be about common law trademark infringement?

It's a question larger corporations ask often. Corporate brand managers and in-house counsel have the difficult job of making sure no stone is unturned during the trademark clearance process. And they should be commended for a couple reasons:

The international trademark landscape across a vast quantity of systems, languages, laws and cultures can be somewhat intimidating to consider navigating.

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!

"I should trademark that!"

It's something that gets jokingly said during conversations between friends. If one person routinely says a specific catchphrase, the other may momentarily marvel over their brilliantly mundane creation.

But what happens when real companies actually try to trademark phrases that invoke a strong sense of community ownership? Generally speaking, a lot of passionate debate!

Companies trademark their goods and services for a simple reason: They want to make as much money as possible from the brands they have worked so hard to build.

Registering a brand name or symbol ensures no one else can profit from the labor of its creators, without risking litigation. Unfortunately, trademarking doesn't ensure another company or individual won't end up confusing customers—knowingly or unknowingly—by introducing a similar mark.

What is a brand?

The answer to the question depends upon whom you ask:

An advertising executive will tell you a brand is a story well told; it's your company mission, values and personality rolled into a recognizable consumer experience.

A trademarking professional is more likely to define brand as the actual trademark name or symbol representing your company, as well as the goods and services you sell.

The biggest mistake we see startups making?

According to a 2011 study at the University of Florida, it is approximately 170,000 years since humans first started wearing clothes. The study of the lifecycle of clothing lice (ewwww!) doesn’t rule out that there may have been advances in clothing prior to this and certainly doesn’t comment on what that clothing might have consisted of. If ancient humans were anything like today’s population, you can be sure that there was a group of them always right on trend wearing this season’s loincloth.

Fast forward a bit and those loincloths have transformed into an industry that is globally worth $1.2 TRILLION and employs 4.2 MILLION people around the world. In the US alone, $250 BILLION is spent on fashion each year. This may be partially due to the ever changing trends in fashion and the need to ‘keep up’ with what everyone else is wearing. Nathalie Gaveau commented,