January 4, 2014 at 11:14How to choose a name for IT product and IT company
It was a little strange for me to see that in such a wonderful resource there is little discussion and the topic of trademarks itself, that is, the names of IT products and companies (“trademark”, “trade name”, “TM”, “trademark”). Obviously, any programmer and participant in the IT market (and especially those who write their products) will sooner or later come across this issue. Therefore, the sooner IT employees will think about it, the less problems there will be in their business in the future.
So, we will try to fill the gap and open the topic of trademarks. Obviously, from a programming point of view, it is easy to repeat tetris, and facebook, and any "farms". But try to promote your product (clone or not) with names similar to these products - right there the owners (or rather, their lawyers) will shut you down from all resources. On the other hand, if your product becomes popular, then the need arises to protect it from clones and make sure that others do not use or hammer your brand in their keywords. In short, this is the reason why the brand is one of the main parameters for evaluating and costing any IT project when it is financed, sold and concluded solid contracts.
We decided to give here our practical recommendations on the name of products in the IT field, and especially for marketing purposes in the USA. We do not want to catch up with technical issues, and therefore our recommendations are primarily practical. These recommendations can influence both the strategy of protecting your TM at the dawn of its development, and at later stages of your business. As the saying goes, as you call a ship, it will sail ...
So, “ownership” (and, accordingly, registration of a trademark) is, first of all, the right to exclude _other_ persons from using this brand in your market for goods and services. Thus, the brand is both a shield (a good and correct name will prevent “hitting” from other companies) and “sword” - that is, it will allow legal methods to exclude the use of your brand in the name of other products, including competitors, in search words (be then in google search or AppStore) and in other advertising.
Undoubtedly, the process of selecting a name should include checking the availability of a free domain with .com (although this is already becoming less relevant for apps) and, in any case, for US purposes, checking for conflicts with registered marks in the USPTO (this will probably be future post).
Well, it is necessary, at least in the most general terms, to analyze the selected brand in terms of its future legal life.
So, there are 5 types of brands, but the boundaries between them are not always obvious, and the types of brands gradually, like the colors of the rainbow, flow from one category to another: generic, descriptive, suggestive, arbitrary, fanciful.
1. generic trademarks - that is, trademarks that directly call the product or service itself.
For example, electric car - for electric cars, Good Beer for selling beer, Apple - for selling apples, X-Ray for selling X-ray devices. Examples of generic marks in the IT field:
Best Software
GoodApp
Quest
Funny Puzzle
CD Ejector
DVD Converter
Internet Search Optimizer
Password Breaker
Generic marks are practically not protected, that is, they are very “weak”. Any general descriptive words that are added to the product regarding its quality and origin - Good, Perfect, Quick, Easy, Funny, Russian - all this, as a rule, does not add strength to the brand, that is, they do not become more protected.
The weakness of the generic brand lies in the fact that one cannot “claim for oneself” such words that will prevent other people from using these words in the description of their product. Of course, the convenience of a generic brand is that it is the name of the product and, in fact, practically the product itself.
The buyer of rhinestones understands what you are selling, it’s easy for you to work with SEO, and you are easy to find in the AppStore by name. The main problem is that your competitors can also use these words in their brands. And if the brand is generic, then you _never_ will receive a monopoly on its use, both in the description of the product and in its name. That is, as soon as your product becomes successful, everyone will copy your product and your brand with impunity.
2. Descriptive, or descriptive marks - a brand is considered “merely descriptive” if it describes an ingredient, quality, characteristic, function, property, purpose or use of the product (an ingredient, quality, characteristic, function, feature, purpose , or use of the goods. TMEP §1209.01 (b)). The consumer does not have any doubts about what is sold under this brand or the origin of the goods. Obtaining registration for “merely descriptive” on the main register of the USPTO (principal register), giving exclusivity, is very problematic. That is, the descriptive brand is slightly better than generic, but not by much.
There is no doubt that the assessment of whether a brand is merely descriptive is subjective, and we often have to dispute with the examiner whether this or that brand tends to be closer to generic or closer to “suggestive” brands. If the first one, you will have to register the brand on the USPTO supplementary register (supplemental register), created for descriptive brands and not giving you the right to exclusive use of the brand, but assuming some advantages in upholding this monopoly in the future. If you manage to convince the second, that is, that the brand is not merely descriptive, then registration (and hence the brand’s protection) receives a green light.
Despite the fact that all the postulates of SEO will tell you otherwise, it is advisable to avoid descriptive names. It is enough to use your “descriptiveness” in the product description (“CD Explosion, the best CD ejector in the world”), but not in the product itself. Otherwise, what will initially be support for your recognition in SEO searches, in the future may simply kill your project, leaving it without protection and without an exclusive recognizable name.
A significant exception to the rule is the presence of a large marketing budget and the ability to “promote” the brand to “full recognition”, that is, so that the consumer associates this descriptive brand with you, and not with other products in the same category (this is called secondary meaning - that is, when we say facebook, we mean a specific company and product, not a book of school graduates in the USA). For example, Kaspersky, Dell, McDonalds are also initially “wrong” descriptive marks (“just names” also belong to descriptive ones), but this drawback was overcome by business development and “promotion”.
Real examples of descriptive brands in the IT field (which in fact do not receive legal protection and exclusivity by registering only on the supplemental register):
• Advanced Security Technologies is also more descriptive, if not generic.
• REMOTE CHECKOUT - software for accommodating multiple types of payment
• QWIKVID - products for video processing (incorrect spelling of the word Quick and the abbreviation VID from video did not save this brand, and the examiner recognized the brand only merely descriptive)
• DRAFT TRACKER - software for tracking athletes in sports drafts
• STORAGEREVIEW.COM - website for electronic data storage
• BOOKSTREAM - software for managing electronic books
• NEWSCLOUD - software as a service (SAAS) services for on-line content
• STANLEY SECURITY GROUP - security systems (Stanley - “just a surname”)
• CHANNEL MONITOR - web-based software application for tracking real-time product information
• SMART MEETING PRO - manages conferences
• OBJECTIVE-BASED PORTFOLIO PLANNER - it is amazing who thought of this. This is a great example of how you should NOT call a product.
• INSTANT RESTORE - for data restoration
• SMART NOTEBOOK - who has doubts what kind of product this is?
• CONTINUOUS CYBER SECURITY SCANNING - I could not have put anything except an emoticon here ..., therefore, without comment.
• DATADAEMON - software for exchange of data
3. Suggestive marks - brands that use real words, and in order to understand the function or purpose of the product, you need to make a certain logical connection between the name and the product (a mark that, when applied to the goods or services at issue, requires imagination, thought or perception to reach a conclusion as to the nature of those goods or services - see TMEP 1209.01 (a)). The best translation that I could come to is a “hinting” brand, but it’s very dissonant, so I will continue to use suggestive. I believe that these are the "best" brands - that is, they receive full protection, but at the same time indirectly point to customers on goods and services. The buyer can either by building a logical chain to guess what kind of product it is, or, in any case, seeing the product,
Just writing a misspelled word or skipping a letter may not save or make the suggestive / arbitrary mark (see below) instead of descriptive (Russian vodka, xtension cutter, etc.) or save from an attack from a similar mark (abibas). Therefore, this is precisely the situation where circumstances, your imagination, and the ability of your lawyer can turn the tide of the game in one direction or another. But more often than not, common mistakes _not_ save, especially if the phonetic sound of the brand remains the same.
Suggestive brands are subject to full protection and very rarely there are attempts to refuse to register (mainly problems occur if someone registered a similar brand first).
For example:
• Nero-CDRom - Nero (Nero) burned Rome (Rome) - a play on words Rome-Rom
• Tamograph (an ingenious combination of Tamosoft’s name and tomograph for “tomography” of wireless networks
• 36.6 - an ingenious name for pharmacies
• Penguin - for refrigerators (penguin - cold - refrigerator)
• Apple (for computers): Apple - Newton - knowledge
• Gender -copeys (this is generally a brilliant name for the flooring store - and an indication of cheapness and the product itself through homonyms)
• Hawk Eye - a camera and software for tracking balls in tennis
• DocShield - information protection (although it’s pretty close to descriptiveness here, it’s even strange what brand "Slipped" to the registration)
• Durandal ( "Durandal sword") - software for burglary protection
• mail navigator - information search in email programs
• Amazon (the largest river -> the largest store)
• Rogue - a car that is distinguished by "rebellious" characteristics from others
• Pathfinder - a car with increased cross-country ability
• Reebok (a type of antelope) - sports shoes and clothes
• Google - a derivative of a number from 100 zeros (indicates something big)
• PERFORMINSIGHT (perform plus insight for work force management solutions
• NERVEGUARD - neuromonitoring software
• YOUME - dating and social network software
• UFanTicks - (U is the US abbreviation for universities + fan + ticks (tickets )
• InvisibleCRM (since there really is no “invisible" CRM, this gives the brand an suggestive tint, in cm If it works invisibly and does not interfere)
• Softkey - initially: registration of keys for software
• PINXTER - app in the fashion industry, a hint of femininity and all sorts of ** str in electronic commerce (pinxter - flower)
• CollageBerry - soft for photo mosaics
• Dealigence - deal and diligence (software and services at M&A)
• Pirate Revenge - cruises on pirate themes
• War Thunder - games / software on the theme of war
• Dance Magic - games / software on the theme of dance
• Star Walk, Solar Walk - app on the theme of astronomy
• ByteScout - software programming libraries, development and utilities directory components
• StaffCop - software to track activities of employees
4. Arbitrary - existing words, but not related to the product:
• the Bluetooth
• Blackberry
• HootSuite
• Gibraltar Software
• Banjo Publishing
• Oxygen Forensics
• Gaijin Entertainment
5. Fanciful - nonexistent words
• XEROX
• Kodak
• adidas
• Fozium
• Alentum
• Agnitum
• Bitrix
• Nravo
• well habrahabr actually - I can’t find the name history. It looks like a coined word - can someone tell me where the name came from?
4 and 5 are most defended, but the problem is that for the associative perception and recognition of the brand by consumers, a brand of the 4th and 5th kind must be “untwisted” and an association between the product and the brand (which is initially absent) be created. That is, the nike brand itself does not say in any way that it is a sports brand, or that Gaijin or Nravo are games. But on the other hand, such names immediately get full protection, and if they ensure “promotion” and recognition, then these brands can be no worse than suggestive brands, it just requires additional funds and efforts.
Acronyms can also fall into category 4 and 5, but you need to be careful with them. On the one hand, abbreviations can fall into arbitrary, but real protection will be only with a large number of letters. Remember that in the world there are only a few dozen recognizable two-three-letter brands - GE, IBM, CNN, ABC, BMW, well, maybe a couple more. Therefore, a two-three-letter brand does not in itself have any value until huge funds are spent on its promotion, and it is usually problematic to register such a brand. Therefore, you should avoid two and three-letter abbreviations and do not name your products such as full name softwareware - all these are weak brands, although it still amazes me, either the resourcefulness or the luckiness of those who came up with ASprotect (AS is an abbreviation for the name, but a very successful phonetic reminder what needs to be covered in business).
Four letters - the minimum is still for the brand, if you do not want to have problems in the future. However, for example, recently it turned out that the four-letter mark in the USA was quietly registered, but it turned out that in other countries and in other languages the name means something “descriptive” or there is already a registration. Therefore, simply according to probability theory and based on the fact that the number of letters in the alphabet is limited, 4-letter marks are also quite risky in themselves.
So, based on the rules above, you need to choose something unique that is not confusingly similar to other brands (because ADIDASoftare is also an interesting name, but it’s obvious that it will cause problems in the legal field of a completely different level) that will not cause problems in the future, but still do not cause unnecessary problems for your marketing. I think that we will highlight the conflict with other brands a little later.
And for a good brand, you need to connect the imagination ... My advice is to try to find suggestive so that a certain reminder of the product is preserved, while having virtually complete legal protection. Imagine that you come up with a name for a lie detector and remember the old joke - “I have a lie detector at home.” “What is it called?” “Mother-in-law!” No joke - but the best brands of products are born, and the name "Mother-in-law" would be a great name for a software lie detector.
So, for a good name - we turn on creativity and avoid repetitions with other brands, especially with brands of those companies that have a large budget for lawyers. Surprisingly, for a long time I had to explain to the client why the old Barbie runs into him, and not to other “clones”. You’ll be surprised, but the answer is very simple - the “elusive Joe” doesn’t interest anyone, and they “run into” (or scientifically send cease and desist letters, remove them from the AppStore, sue, etc.) when you become successful and earn money . So why start a business with the presumption that you will NOT be successful or build a business on the basis of “failure of success”?
So, we will try to fill the gap and open the topic of trademarks. Obviously, from a programming point of view, it is easy to repeat tetris, and facebook, and any "farms". But try to promote your product (clone or not) with names similar to these products - right there the owners (or rather, their lawyers) will shut you down from all resources. On the other hand, if your product becomes popular, then the need arises to protect it from clones and make sure that others do not use or hammer your brand in their keywords. In short, this is the reason why the brand is one of the main parameters for evaluating and costing any IT project when it is financed, sold and concluded solid contracts.
We decided to give here our practical recommendations on the name of products in the IT field, and especially for marketing purposes in the USA. We do not want to catch up with technical issues, and therefore our recommendations are primarily practical. These recommendations can influence both the strategy of protecting your TM at the dawn of its development, and at later stages of your business. As the saying goes, as you call a ship, it will sail ...
So, “ownership” (and, accordingly, registration of a trademark) is, first of all, the right to exclude _other_ persons from using this brand in your market for goods and services. Thus, the brand is both a shield (a good and correct name will prevent “hitting” from other companies) and “sword” - that is, it will allow legal methods to exclude the use of your brand in the name of other products, including competitors, in search words (be then in google search or AppStore) and in other advertising.
Undoubtedly, the process of selecting a name should include checking the availability of a free domain with .com (although this is already becoming less relevant for apps) and, in any case, for US purposes, checking for conflicts with registered marks in the USPTO (this will probably be future post).
Well, it is necessary, at least in the most general terms, to analyze the selected brand in terms of its future legal life.
So, there are 5 types of brands, but the boundaries between them are not always obvious, and the types of brands gradually, like the colors of the rainbow, flow from one category to another: generic, descriptive, suggestive, arbitrary, fanciful.
1. generic trademarks - that is, trademarks that directly call the product or service itself.
For example, electric car - for electric cars, Good Beer for selling beer, Apple - for selling apples, X-Ray for selling X-ray devices. Examples of generic marks in the IT field:
Best Software
GoodApp
Quest
Funny Puzzle
CD Ejector
DVD Converter
Internet Search Optimizer
Password Breaker
Generic marks are practically not protected, that is, they are very “weak”. Any general descriptive words that are added to the product regarding its quality and origin - Good, Perfect, Quick, Easy, Funny, Russian - all this, as a rule, does not add strength to the brand, that is, they do not become more protected.
The weakness of the generic brand lies in the fact that one cannot “claim for oneself” such words that will prevent other people from using these words in the description of their product. Of course, the convenience of a generic brand is that it is the name of the product and, in fact, practically the product itself.
The buyer of rhinestones understands what you are selling, it’s easy for you to work with SEO, and you are easy to find in the AppStore by name. The main problem is that your competitors can also use these words in their brands. And if the brand is generic, then you _never_ will receive a monopoly on its use, both in the description of the product and in its name. That is, as soon as your product becomes successful, everyone will copy your product and your brand with impunity.
2. Descriptive, or descriptive marks - a brand is considered “merely descriptive” if it describes an ingredient, quality, characteristic, function, property, purpose or use of the product (an ingredient, quality, characteristic, function, feature, purpose , or use of the goods. TMEP §1209.01 (b)). The consumer does not have any doubts about what is sold under this brand or the origin of the goods. Obtaining registration for “merely descriptive” on the main register of the USPTO (principal register), giving exclusivity, is very problematic. That is, the descriptive brand is slightly better than generic, but not by much.
There is no doubt that the assessment of whether a brand is merely descriptive is subjective, and we often have to dispute with the examiner whether this or that brand tends to be closer to generic or closer to “suggestive” brands. If the first one, you will have to register the brand on the USPTO supplementary register (supplemental register), created for descriptive brands and not giving you the right to exclusive use of the brand, but assuming some advantages in upholding this monopoly in the future. If you manage to convince the second, that is, that the brand is not merely descriptive, then registration (and hence the brand’s protection) receives a green light.
Despite the fact that all the postulates of SEO will tell you otherwise, it is advisable to avoid descriptive names. It is enough to use your “descriptiveness” in the product description (“CD Explosion, the best CD ejector in the world”), but not in the product itself. Otherwise, what will initially be support for your recognition in SEO searches, in the future may simply kill your project, leaving it without protection and without an exclusive recognizable name.
A significant exception to the rule is the presence of a large marketing budget and the ability to “promote” the brand to “full recognition”, that is, so that the consumer associates this descriptive brand with you, and not with other products in the same category (this is called secondary meaning - that is, when we say facebook, we mean a specific company and product, not a book of school graduates in the USA). For example, Kaspersky, Dell, McDonalds are also initially “wrong” descriptive marks (“just names” also belong to descriptive ones), but this drawback was overcome by business development and “promotion”.
Real examples of descriptive brands in the IT field (which in fact do not receive legal protection and exclusivity by registering only on the supplemental register):
• Advanced Security Technologies is also more descriptive, if not generic.
• REMOTE CHECKOUT - software for accommodating multiple types of payment
• QWIKVID - products for video processing (incorrect spelling of the word Quick and the abbreviation VID from video did not save this brand, and the examiner recognized the brand only merely descriptive)
• DRAFT TRACKER - software for tracking athletes in sports drafts
• STORAGEREVIEW.COM - website for electronic data storage
• BOOKSTREAM - software for managing electronic books
• NEWSCLOUD - software as a service (SAAS) services for on-line content
• STANLEY SECURITY GROUP - security systems (Stanley - “just a surname”)
• CHANNEL MONITOR - web-based software application for tracking real-time product information
• SMART MEETING PRO - manages conferences
• OBJECTIVE-BASED PORTFOLIO PLANNER - it is amazing who thought of this. This is a great example of how you should NOT call a product.
• INSTANT RESTORE - for data restoration
• SMART NOTEBOOK - who has doubts what kind of product this is?
• CONTINUOUS CYBER SECURITY SCANNING - I could not have put anything except an emoticon here ..., therefore, without comment.
• DATADAEMON - software for exchange of data
3. Suggestive marks - brands that use real words, and in order to understand the function or purpose of the product, you need to make a certain logical connection between the name and the product (a mark that, when applied to the goods or services at issue, requires imagination, thought or perception to reach a conclusion as to the nature of those goods or services - see TMEP 1209.01 (a)). The best translation that I could come to is a “hinting” brand, but it’s very dissonant, so I will continue to use suggestive. I believe that these are the "best" brands - that is, they receive full protection, but at the same time indirectly point to customers on goods and services. The buyer can either by building a logical chain to guess what kind of product it is, or, in any case, seeing the product,
Just writing a misspelled word or skipping a letter may not save or make the suggestive / arbitrary mark (see below) instead of descriptive (Russian vodka, xtension cutter, etc.) or save from an attack from a similar mark (abibas). Therefore, this is precisely the situation where circumstances, your imagination, and the ability of your lawyer can turn the tide of the game in one direction or another. But more often than not, common mistakes _not_ save, especially if the phonetic sound of the brand remains the same.
Suggestive brands are subject to full protection and very rarely there are attempts to refuse to register (mainly problems occur if someone registered a similar brand first).
For example:
• Nero-CDRom - Nero (Nero) burned Rome (Rome) - a play on words Rome-Rom
• Tamograph (an ingenious combination of Tamosoft’s name and tomograph for “tomography” of wireless networks
• 36.6 - an ingenious name for pharmacies
• Penguin - for refrigerators (penguin - cold - refrigerator)
• Apple (for computers): Apple - Newton - knowledge
• Gender -copeys (this is generally a brilliant name for the flooring store - and an indication of cheapness and the product itself through homonyms)
• Hawk Eye - a camera and software for tracking balls in tennis
• DocShield - information protection (although it’s pretty close to descriptiveness here, it’s even strange what brand "Slipped" to the registration)
• Durandal ( "Durandal sword") - software for burglary protection
• mail navigator - information search in email programs
• Amazon (the largest river -> the largest store)
• Rogue - a car that is distinguished by "rebellious" characteristics from others
• Pathfinder - a car with increased cross-country ability
• Reebok (a type of antelope) - sports shoes and clothes
• Google - a derivative of a number from 100 zeros (indicates something big)
• PERFORMINSIGHT (perform plus insight for work force management solutions
• NERVEGUARD - neuromonitoring software
• YOUME - dating and social network software
• UFanTicks - (U is the US abbreviation for universities + fan + ticks (tickets )
• InvisibleCRM (since there really is no “invisible" CRM, this gives the brand an suggestive tint, in cm If it works invisibly and does not interfere)
• Softkey - initially: registration of keys for software
• PINXTER - app in the fashion industry, a hint of femininity and all sorts of ** str in electronic commerce (pinxter - flower)
• CollageBerry - soft for photo mosaics
• Dealigence - deal and diligence (software and services at M&A)
• Pirate Revenge - cruises on pirate themes
• War Thunder - games / software on the theme of war
• Dance Magic - games / software on the theme of dance
• Star Walk, Solar Walk - app on the theme of astronomy
• ByteScout - software programming libraries, development and utilities directory components
• StaffCop - software to track activities of employees
4. Arbitrary - existing words, but not related to the product:
• the Bluetooth
• Blackberry
• HootSuite
• Gibraltar Software
• Banjo Publishing
• Oxygen Forensics
• Gaijin Entertainment
5. Fanciful - nonexistent words
• XEROX
• Kodak
• adidas
• Fozium
• Alentum
• Agnitum
• Bitrix
• Nravo
• well habrahabr actually - I can’t find the name history. It looks like a coined word - can someone tell me where the name came from?
4 and 5 are most defended, but the problem is that for the associative perception and recognition of the brand by consumers, a brand of the 4th and 5th kind must be “untwisted” and an association between the product and the brand (which is initially absent) be created. That is, the nike brand itself does not say in any way that it is a sports brand, or that Gaijin or Nravo are games. But on the other hand, such names immediately get full protection, and if they ensure “promotion” and recognition, then these brands can be no worse than suggestive brands, it just requires additional funds and efforts.
Acronyms can also fall into category 4 and 5, but you need to be careful with them. On the one hand, abbreviations can fall into arbitrary, but real protection will be only with a large number of letters. Remember that in the world there are only a few dozen recognizable two-three-letter brands - GE, IBM, CNN, ABC, BMW, well, maybe a couple more. Therefore, a two-three-letter brand does not in itself have any value until huge funds are spent on its promotion, and it is usually problematic to register such a brand. Therefore, you should avoid two and three-letter abbreviations and do not name your products such as full name softwareware - all these are weak brands, although it still amazes me, either the resourcefulness or the luckiness of those who came up with ASprotect (AS is an abbreviation for the name, but a very successful phonetic reminder what needs to be covered in business).
Four letters - the minimum is still for the brand, if you do not want to have problems in the future. However, for example, recently it turned out that the four-letter mark in the USA was quietly registered, but it turned out that in other countries and in other languages the name means something “descriptive” or there is already a registration. Therefore, simply according to probability theory and based on the fact that the number of letters in the alphabet is limited, 4-letter marks are also quite risky in themselves.
So, based on the rules above, you need to choose something unique that is not confusingly similar to other brands (because ADIDASoftare is also an interesting name, but it’s obvious that it will cause problems in the legal field of a completely different level) that will not cause problems in the future, but still do not cause unnecessary problems for your marketing. I think that we will highlight the conflict with other brands a little later.
And for a good brand, you need to connect the imagination ... My advice is to try to find suggestive so that a certain reminder of the product is preserved, while having virtually complete legal protection. Imagine that you come up with a name for a lie detector and remember the old joke - “I have a lie detector at home.” “What is it called?” “Mother-in-law!” No joke - but the best brands of products are born, and the name "Mother-in-law" would be a great name for a software lie detector.
So, for a good name - we turn on creativity and avoid repetitions with other brands, especially with brands of those companies that have a large budget for lawyers. Surprisingly, for a long time I had to explain to the client why the old Barbie runs into him, and not to other “clones”. You’ll be surprised, but the answer is very simple - the “elusive Joe” doesn’t interest anyone, and they “run into” (or scientifically send cease and desist letters, remove them from the AppStore, sue, etc.) when you become successful and earn money . So why start a business with the presumption that you will NOT be successful or build a business on the basis of “failure of success”?