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Product names

I want to rename my product before launch.

The name is more likely to be a standard word from the dictionary than a made up word. For example it could be "Blueprint" or something like that.

But what if someone else has a product of the same name? Are there problems here? Can they really trademark the name rather than just its visualisation (i.e. its style or logo)?

Of course the great parallel is "Windows". It's trademarked but isn't there something to challenge that going on?

Anyone got any wisdom on this?

Gwyn
Friday, April 09, 2004

I think the best way to find out is to contact a lawyer who specializes in Intellectual Property.

Kentasy
Friday, April 09, 2004

The first thing you need to do is to check if it's trademarked.

And remember that trademarks still have to be registered separately in each jurisdiction. So it's no good tradmarking something in America only to find that you have to use a completely different name to sell to Japan.

Stephen Jones
Friday, April 09, 2004

I agree. You can't use the same name if you're in the same line of business. You can make Nike computers, but not Nike shoes.

You need to consult an IP lawyer who can do the proper trademark and servicemark searches for you.

www.MarkTAW.com
Friday, April 09, 2004

Names from dictionaries may be harder to find using search engines. Unless, of course you put several dictionary words together, like Lunchboxtag (and that example is nothing but a shameless plug).

TomA
Friday, April 09, 2004

And whatever you do, do not hire a marketing company to come up with a name.

We did it once, about two years ago, and £50k later, they still had not done anything useful but run focus groups, and come up with stuff we had thought of already.

Tapiwa
Friday, April 09, 2004

I agree that you should come up with something distinct, i.e. easier to find in a search engine.  It's easy to search on phrases like "SQL Server" or "Visual Basic", but it's a pain to look for stuff on "Access".  (I can always search on "Microsoft Access" but that will exclude some sites.)

Kyralessa
Friday, April 09, 2004


Great book on this is :
Positioning: The Battle for your Mind.

Classic marketing book.

Suggestion:

Take two common words that appear in the dictionary and combine them unsually.

Ex: Diamond Bullet web services (a company a friend of mine started).

"We deliver your message clear and fast like a Diamond Bullet"

1. easy to spell and pronounce.
2. memorable ('cause it's wierd')

Mr. Analogy
Friday, April 09, 2004

More suggestions:

1.  Have your kids think up names. Our kids are always renaming things with much better names. Instead of "Children's favorite songs", it's Elmo Dance. Instead of the bottle that we use to rinse thier hair when bathing them, it's the "tickle rinse bottle" (because it tickles them when we spray 'em).

2.  USE the word a LOT before you decide it's a keeper.
I learned this watching "Startup Dot Com" movie.  The ONE thing those guys did that was smart was practicing thier company name as a "test". They'd pretend they were introducing themselves (to VCs, of course :-).

Mr. Analogy
Friday, April 09, 2004


"And whatever you do, do not hire a marketing company to come up with a name."

.....or just don't use the same company that Tapiwa used. Many of my clients have had great success with such companies.  I know that we engineering types think that marketing people are a bunch of putzes (and many are), but they have a entire set of skills that don't have.

Mark Hoffman
Friday, April 09, 2004

"I agree. You can't use the same name if you're in the same line of business. You can make Nike computers, but not Nike shoes."

IIRC, the laws have changed recently so that if you started a business selling Nike computers, it would be considered a dilution of Nike's trademark and you could be subject to legal action from Nike.

I'm trying to find a link and having no luck...

Norrick
Friday, April 09, 2004

I seem to remember this as true too Norrick.  You can't use a well established trademark to help profit your own business, as in Nike computers. 

On the other hand though, there is Diamond the computer company, there is Diamond the sugar company (if they still exist), and a million other Diamond companies out there, but all in different markets.  Since none of them have tm dominance though, I guess that makes it okay. 

These are just random musings though from memory, so they probably aren't worth the time it took me to type them in here.

Elephant
Friday, April 09, 2004

Actually, Mr. Analogy, I think your first suggestion (two words combined in an unusual way) is awful.  Any time I hear a company name like that, I hear "failed dot-com".  Here's a list of vendors that will be at the "Email Technology Conference" in June:  Cloudmark, Proofpoint, MailFrontier, Brightmail, FrontBridge.  Kind of like the "<color> <object>" pattern that went around back in '99-'00 (Blue Martini, Black Rocket, Red Hat, etc.).

joev
Friday, April 09, 2004

> I know that we engineering types think that marketing people are a bunch of putzes (and many are), but they have a entire set of skills that don't have.

Yeah, like suckering dumb engineers into paying 50k to think up names.

Hey
Friday, April 09, 2004

Red Hat has been around since 1994.  Pre dot-bomb explosions.

Andrew Hurst
Friday, April 09, 2004

+1 for contacting an attorney to review your potential names.  An attorney can do a "trademark availability search" and offer an opinion about whether your name is sufficiently unique:

http://www.bitlaw.com/trademark/search.html

The worst-case scenario is if you pick a new name, launch your product with lots of marketing to promote that new brand name... and then learn about potential trademark infringement.  Then you're between a rock and a hard place -- either (a) change the name and lose all of your marketing momentum, (b) keep the name and settle with the other company, or (c) keep the name and risk expensive litigation.

Keep in mind that it's possible to be on the hook for infringement even if the your product's name isn't an exact copy of the other company's name, and even if the companies aren't in the same line of business.  Witness the Apple Computer vs. Apple Records litigation.  (Which started years before Apple Computer got into the music business.)

Robert Jacobson
Saturday, April 10, 2004

For the question of Trademarks, I did look into this at one point.  I'm no lawyer, but roughly, it works like this:

You can register a trademark, but that's often a reasonably expensive thing, especially since you have to register it in different jurisdictions.  And that can be kind of difficult, since it may get rejected just for being too similar to another company. 

But in fact, just by using something as a distinctive mark when you do trade, you effectively are creating a trademark.  So using a name or logo and sticking to it makes a trademark. Especially if you put (tm) after it - that's just asserting a trademark, without registering it.

So it depends how big this product name is going to be - if you've done a reasonable search and found that nobody else is using the name you want, go ahead and start using it.  If anybody challenges you, of course, it will be difficult to defend your asserted, non-registered trademark unless you've build up recognition for the trademark over a fairly long time. 

Another thing you can do is to use your company name along with the product name.  So instead of just calling your program "Smart Tool", you can call it "MegaSmartSys Smart Tool".  Put a (tm) after each word to assert that you're using it as a trademark.  It's not super-solid, but it's probably enough.  If the product starts doing well, you can look into registering the name as a trademark.

There are also rules about reusing names, in different industries.  If you have a software product called the same thing as a laundry soap, you're okay.  There are (in the US at least) a set of industries defined, where companies can sue each other if names collide or trademarks are infringed.  Software is grouped with telephony and computer machinery. 

andrewm
Saturday, April 10, 2004

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