Naming and rebranding processes

Name development projects consist of two central elements, one creative and one legal. These two elements should not be separated, and they require joint expertise in order to succeed.

The creative element consists of finding a suitable name for a business or a product which will function well in one or several markets. This is a challenging task which requires knowledge in and about communication, product, market and linguistics.

The legal element consists of finding a name for which it is possible to establish an exclusive right in the relevant markets and for the relevant products. This means that the name must not come into conflict with prior established rights to a name, typically trade marks or company names. Just as important, the name must be able to fulfill the requirements of a trade mark registration and/or company name registration.

All too often we see that these two elements are not coordinated, but that the naming process is initiated as a creative project in which the legal element is only brought in late into the process. This is unfortunate for several reasons. As a purely creative project, the sale of the project and the first meetings with the client will happen without any legal expertise being present.

It is very common that a project plan is prepared with a time and cost frame based on the preparation of a longlist consisting of x number of names. This is followed by a reduced shortlist of x number of names. Thereafter, the client chooses a certain number of favourites.

Often, legal expertise will not be invited to join until it is time to make the necessary preliminary searches and assessments of registrability of the names on the shortlist. The danger in this working method is that it is easy to have chosen a name or names which cannot be registered as trade marks. Furthermore, the scope of protection of the goods and services involved hare often not been properly assessed at this stage, leading to overly broad and unnuanced specifications of goods and services just to be on the safe side. The ensuing result is that the subsequent preliminary search will uncover more conflicting trade marks than what it perhaps should. This in turn may lead to the time frame collapsing and that one has to start all over with new names.

How should a naming process be prepared and handled?

• ·Both creative and legal expertise should be involved in the initial meetings with the client.
• ·The client needs to provide thorough information about the products the name is planned to be used for and in which markets.
• ·A correct and precise specification of goods and services must be drawn up together with the client, and needs to be approved by the latter. The specification needs to be used in the further creative and legal work.
• ·The direction of the choice of names should be discussed in collaboration between the creative agency and experience trade mark lawyers. The availability of domain names should be checked continuously as new names come up. Longlists should be reviewed by the trade mark lawyers in order to weed out any obviously unregistrable names. X number of names from the shortlist should be the subject of preliminary searches in the trade mark and company names registries. At this point, a linguistic check will be made of the names in the relevant language areas. If the client is a Norwegian company
• ·The client chooses a name based on the results of the preliminary searches and the recommendations made by the naming developers and our lawyers.
• ·Trade mark applications are prepared and filed by Bryn Aarflot. Trade mark applications should be filed quickly in order to secure a filing and priority date.
• ·The remaining process in relation to the application procedure nationally and internationally is a purely legal task executed by our lawyers.