How to choose a name for an IT product and IT company
I was a little strange to see that in such a wonderful resource there is little discussion about the very topic of trademarks, that is, the name of IT products and companies (“trademark”, “trade name”, “TM”, “trademark”). Obviously, any programmer and IT market participant (and especially those who write their products) will sooner or later face this issue. Therefore, the sooner IT-shniki think about it, the less there will be problems in their business in the future.
So, we will try to fill the gap and open the topic of trademarks. Obviously, in terms of programming, it is easy to repeat both tetris, and facebook, and any “farm”. But try to promote your product (clone or not) with names similar to these products - right there the owners (or rather their lawyers) will close you from all resources. On the other hand, if your product becomes popular, then there is a need to protect it from clones and make sure that others do not use or clog your brand in their keywords. In short, this is the reason why a trademark is one of the main parameters for assessing and costing any IT project with its financing, sale and conclusion of solid contracts.
We decided to give here our practical recommendations on the name of products in the IT sphere, and especially for marketing purposes in the USA. We do not want to bore the technical issues, and therefore our recommendations are, above all, practical. These recommendations can affect both your TM's protection strategy at the dawn of its development and the later stages of your business. As they say, how you call a ship, so it will sail ...
')
So, “possession” (and, accordingly, registration of a trademark) is primarily the right to exclude _drug_ of persons from the use of this mark in your market for goods and services. Thus, a brand is both a shield (a good and correct name will prevent “raids” from other companies) and a “sword” - that is, it will allow using legal methods to exclude the use of your brand in the name of other products, including competitors, in search words (be then google search or AppStore) and in other advertising.
There is no doubt that the name selection process should include checking for a free domain with .com (although this is 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 chosen brand from the point of view of its future legal life.
So, there are 5 types of trademarks, 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 refer to the product or service itself.
For example, electric car - for electric vehicles, Good Beer for the sale of beer, Apple - for the sale of apples, X-Ray for the sale of X-ray machines. 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 a product regarding its quality and origin — Good, Perfect, Quick, Easy, Funny, Russian — as a rule, this 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 it is impossible to “stake out for oneself” such words that will prevent other people from using these words in the description of their goods. Of course, the convenience of a generic brand is that it is both the name of the product and, in fact, practically the product itself.
Buyer understands that you are selling, it's easy for you to work with SEO, and it's easy to find you 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 will never get 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 mark is considered “merely descriptive” (“descriptive only”) if it describes an ingredient, quality, characteristic, function, property, purpose or use of a 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. Registering for “merely descriptive” on the principal register of the USPTO (principal register), giving exclusivity, is very problematic. That is, a descriptive brand is slightly better than generic, but not by much.
There is no doubt that assessing whether a brand is merely descriptive is subjective, and we often have to dispute with the examiner a conclusion whether this or that brand is closer to generic or closer to “stronger” brands (suggestive). If the first - then you have to register the brand on the additional registry USPTO (supplemental register), created for descriptive brands and not giving you the right to exclusive use of the brand, but with some advantages in upholding this monopoly in the future. If you manage to convince in the second, that is, that the brand is not merely descriptive - then registration (and therefore the protection of the brand) gets the green light.
Although all the SEO postulates will tell you otherwise, it is advisable to avoid descriptive names. Just 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 support you for recognition in SEO search in the future may simply kill your project, leaving it unprotected and without an exclusive recognizable name.
A significant exception to the rule is the presence of a large marketing budget and the ability to “unleash” 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, and not a book of high school graduates in the United States). For example, Kaspersky, Dell, McDonalds are also initially “wrong” descriptive stamps (“simple surnames” are also descriptive), but this deficiency was overcome by business development and “promotion”.
Real examples of descriptive brands in the IT field (which actually do not receive legal protection and exclusivity, obtained registration only on the supplemental registry):
• Advanced Security Technologies are also more descriptive, if not generic.
• REMOTE CHECKOUT - software for accommodating multiple types of payment
• QWIKVID - video processing products (incorrect spelling of the word Quick and abbreviations 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 last name”)
• CHANNEL MONITOR - web-based software application for tracking real-time product information
• SMART MEETING PRO - manages conferences
• OBJECTIVE-BASED PORTFOLIO PLANNER - it's amazing who thought of that. This is a great example of how NOT to call a product.
• INSTANT RESTORE - for data restoration
• SMART NOTEBOOK - who has any doubts about this product?
• CONTINUOUS CYBER SECURITY SCANNING - I couldn’t have put anything but a smiley here ..., so without comments.
• DATADAEMON - software for exchange of data
3. Suggestive marks - marks that use real words, and at the same time, to understand the function or purpose of a product, you need to make a certain logical connection between the name and the product. TMEP 1209.01 (a)). The best translation I could come up with is a “hinting” mark, but very much as if unfounded, so I will continue to use suggestive. I suppose that these are the _ best_ marks - that is, they receive full protection, but at the same time indirectly indicate to the buyers goods and services. The buyer can either build a logical chain to guess what kind of product, or, in any case, seeing the product, will undoubtedly confirm this association (and remember the most important).
Just writing a misspelled word or skipping a letter may not save and make a suggestive / arbitrary mark (see below) instead of descriptive (vodka, xtension cutter, etc.) or save from an attack from a similar mark (abibas). Therefore, this is precisely the situation when circumstances, your imagination, and the ability of your lawyer can change the course of the game in one direction or the other. But more often, the usual mistakes _not_ save, especially if the phonetic sound of the brand remains the same.
Suggestive stamps are subject to full protection and very rarely there are attempts to refuse to register (basically, there are problems if someone registered a similar brand first).
For example:
• Nero-CDRom - Nero (Nero) Burned Rome (Rome) - Rome-Rom Word Game
• Tamograph (a brilliant combination of the name of the company Tamosoft and the tomograph to denote the “tomography” of wireless networks
• 36.6 - a brilliant name for pharmacies
• Penguin - for refrigerators (penguin - cold - fridge)
• Apple (for computers): Apple - Newton - knowledge
• Half a penny (this is generally a brilliant name for the store floor - and an indication of cheapness and the product itself by means of homonyms)
• Hawk Eye - a camera and software to track the hitting of balls in tennis
• DocShield - information protection (although it is pretty close to descriptive, it is even strange that the brand “skipped” with registration)
• Durandal (“sword of Durandal”) - program for hacking protection
• mail navigator - search for information in email programs
• Amazon (the largest river -> the largest store)
• Rogue - a machine that is characterized by "rebellious" characteristics from other
• Pathfinder - the car with the increased passability
• Reebok (antelope species) - sports shoes and clothing
• Google - derived from a number with 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 - an abbreviation accepted in the USA for universities + fan + ticks (tickets)
• InvisibleCRM (since there is no really “invisible” CRM, this gives the brand a suggestive touch, in the sense that it works invisibly and does not interfere)
• Softkey - initially: registration of keys for software
• PINXTER - an app in the field of fashion, a hint of femininity and all sorts of ** str in e-commerce (pinxter - flower)
• CollageBerry - soft for mosaic photo
• Dealigence - deal and diligence (software and services in M ​​& A)
• Pirate Revenge - Pirates Themed Cruises
• War Thunder - war games / software
• Dance Magic - dance games / software
• Star Walk, Solar Walk - an astronomy app
• ByteScout - software programming libraries, development components and utilities
• StaffCop - software for tracking employees
4. Arbitrary - existing words, but not related to the product itself:
• Bluetooth
• Blackberry
• HootSuite
• Gibraltar Software
• Banjo Publishing
• Oxygen Forensics
• Gaijin Entertainment
5. Fanciful - non-existent words
• XEROX
• Kodak
• adidas
• Fozium
• Alentum
• Agnitum
• Bitrix
• Nravo
• Well, actually habrahabr - I can not find the history of the name. It looks like a fictional word - can someone tell me where the name originated from?
4 and 5 are protected most of all, but the problem is that for associative perception and brand recognition by consumers, the brand of the 4th and 5th species must be “unwound” and an association between the product and the brand (which is initially absent) should be created. That is, the nike brand itself does not say that it is a sports brand, or that Gaijin or Nravo are games. But on the other hand, such names immediately receive full protection, and if we ensure “promotion” and recognition, then these brands can be no worse than suggestive brands, just for this you need additional funds and efforts.
In the 4th and 5th categories, acronyms may also fall, but you have 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 there are only a few dozen of recognizable two-three-letter trademarks in the world - GE, IBM, CNN, ABC, BMW well, maybe a couple more. Therefore, a two-three-letter mark is not in itself of any value until huge funds are spent on its promotion, and it is usually problematic to register such a mark. Therefore, one should avoid two and three-letter abbreviations and not call their FIOsoftware-type products — these are all weak brands, although it still amazes me whether resourcefulness is the luck of those who came up with ASprotect (AS is an abbreviation of the name, but a very good phonetic reminder of that should be covered in business).
Four letters are minimal for a brand if you don’t want to have problems in the future. However, for example, we recently happened that the four-letter mark in the United States was quietly registered, but it turned out that in other countries and in other languages ​​the name means “descriptive” or there is already a registration. Therefore, simply according to the theory of probability and based on the fact that the number of letters in the alphabet is limited, 4-letter marks are also quite risky in themselves.
Thus, relying on the rules above, you need to choose something unique that is not confusingly similar with other brands (because ADIDASoftare is possible and an interesting name, but it is obvious that it will cause problems in the legal field of a completely different level) that will not cause problems in the future, but it still does not cause unnecessary problems for your marketing. I think that we will highlight the conflict with other brands later.
And for a good brand you need to connect a fantasy ... My advice is to try to find a suggestive, so that a certain reminder of the product is preserved, and at the same time to have virtually complete legal protection. Imagine that you are inventing a name for a lie detector (lie detector) and remember the old joke - “I have a lie detector at home.” “What is the name?” “Mother-in-law!” Joke is a 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 include creativity and avoid repetitions with other brands, especially with those of companies that have a large budget for lawyers. Surprisingly, for quite a long time I had to explain to the client why old Barbie runs into him and not at the other "clones." You will be surprised, but the answer is very simple - “elusive Joe” doesn’t interest anyone, and they “run over” (or scientifically send cease and desist letters, remove them from the AppStore, sue them, 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 principle of “failure of success”?
So, we will try to fill the gap and open the topic of trademarks. Obviously, in terms of programming, it is easy to repeat both tetris, and facebook, and any “farm”. But try to promote your product (clone or not) with names similar to these products - right there the owners (or rather their lawyers) will close you from all resources. On the other hand, if your product becomes popular, then there is a need to protect it from clones and make sure that others do not use or clog your brand in their keywords. In short, this is the reason why a trademark is one of the main parameters for assessing and costing any IT project with its financing, sale and conclusion of solid contracts.
We decided to give here our practical recommendations on the name of products in the IT sphere, and especially for marketing purposes in the USA. We do not want to bore the technical issues, and therefore our recommendations are, above all, practical. These recommendations can affect both your TM's protection strategy at the dawn of its development and the later stages of your business. As they say, how you call a ship, so it will sail ...
')
So, “possession” (and, accordingly, registration of a trademark) is primarily the right to exclude _drug_ of persons from the use of this mark in your market for goods and services. Thus, a brand is both a shield (a good and correct name will prevent “raids” from other companies) and a “sword” - that is, it will allow using legal methods to exclude the use of your brand in the name of other products, including competitors, in search words (be then google search or AppStore) and in other advertising.
There is no doubt that the name selection process should include checking for a free domain with .com (although this is 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 chosen brand from the point of view of its future legal life.
So, there are 5 types of trademarks, 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 refer to the product or service itself.
For example, electric car - for electric vehicles, Good Beer for the sale of beer, Apple - for the sale of apples, X-Ray for the sale of X-ray machines. 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 a product regarding its quality and origin — Good, Perfect, Quick, Easy, Funny, Russian — as a rule, this 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 it is impossible to “stake out for oneself” such words that will prevent other people from using these words in the description of their goods. Of course, the convenience of a generic brand is that it is both the name of the product and, in fact, practically the product itself.
Buyer understands that you are selling, it's easy for you to work with SEO, and it's easy to find you 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 will never get 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 mark is considered “merely descriptive” (“descriptive only”) if it describes an ingredient, quality, characteristic, function, property, purpose or use of a 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. Registering for “merely descriptive” on the principal register of the USPTO (principal register), giving exclusivity, is very problematic. That is, a descriptive brand is slightly better than generic, but not by much.
There is no doubt that assessing whether a brand is merely descriptive is subjective, and we often have to dispute with the examiner a conclusion whether this or that brand is closer to generic or closer to “stronger” brands (suggestive). If the first - then you have to register the brand on the additional registry USPTO (supplemental register), created for descriptive brands and not giving you the right to exclusive use of the brand, but with some advantages in upholding this monopoly in the future. If you manage to convince in the second, that is, that the brand is not merely descriptive - then registration (and therefore the protection of the brand) gets the green light.
Although all the SEO postulates will tell you otherwise, it is advisable to avoid descriptive names. Just 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 support you for recognition in SEO search in the future may simply kill your project, leaving it unprotected and without an exclusive recognizable name.
A significant exception to the rule is the presence of a large marketing budget and the ability to “unleash” 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, and not a book of high school graduates in the United States). For example, Kaspersky, Dell, McDonalds are also initially “wrong” descriptive stamps (“simple surnames” are also descriptive), but this deficiency was overcome by business development and “promotion”.
Real examples of descriptive brands in the IT field (which actually do not receive legal protection and exclusivity, obtained registration only on the supplemental registry):
• Advanced Security Technologies are also more descriptive, if not generic.
• REMOTE CHECKOUT - software for accommodating multiple types of payment
• QWIKVID - video processing products (incorrect spelling of the word Quick and abbreviations 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 last name”)
• CHANNEL MONITOR - web-based software application for tracking real-time product information
• SMART MEETING PRO - manages conferences
• OBJECTIVE-BASED PORTFOLIO PLANNER - it's amazing who thought of that. This is a great example of how NOT to call a product.
• INSTANT RESTORE - for data restoration
• SMART NOTEBOOK - who has any doubts about this product?
• CONTINUOUS CYBER SECURITY SCANNING - I couldn’t have put anything but a smiley here ..., so without comments.
• DATADAEMON - software for exchange of data
3. Suggestive marks - marks that use real words, and at the same time, to understand the function or purpose of a product, you need to make a certain logical connection between the name and the product. TMEP 1209.01 (a)). The best translation I could come up with is a “hinting” mark, but very much as if unfounded, so I will continue to use suggestive. I suppose that these are the _ best_ marks - that is, they receive full protection, but at the same time indirectly indicate to the buyers goods and services. The buyer can either build a logical chain to guess what kind of product, or, in any case, seeing the product, will undoubtedly confirm this association (and remember the most important).
Just writing a misspelled word or skipping a letter may not save and make a suggestive / arbitrary mark (see below) instead of descriptive (vodka, xtension cutter, etc.) or save from an attack from a similar mark (abibas). Therefore, this is precisely the situation when circumstances, your imagination, and the ability of your lawyer can change the course of the game in one direction or the other. But more often, the usual mistakes _not_ save, especially if the phonetic sound of the brand remains the same.
Suggestive stamps are subject to full protection and very rarely there are attempts to refuse to register (basically, there are problems if someone registered a similar brand first).
For example:
• Nero-CDRom - Nero (Nero) Burned Rome (Rome) - Rome-Rom Word Game
• Tamograph (a brilliant combination of the name of the company Tamosoft and the tomograph to denote the “tomography” of wireless networks
• 36.6 - a brilliant name for pharmacies
• Penguin - for refrigerators (penguin - cold - fridge)
• Apple (for computers): Apple - Newton - knowledge
• Half a penny (this is generally a brilliant name for the store floor - and an indication of cheapness and the product itself by means of homonyms)
• Hawk Eye - a camera and software to track the hitting of balls in tennis
• DocShield - information protection (although it is pretty close to descriptive, it is even strange that the brand “skipped” with registration)
• Durandal (“sword of Durandal”) - program for hacking protection
• mail navigator - search for information in email programs
• Amazon (the largest river -> the largest store)
• Rogue - a machine that is characterized by "rebellious" characteristics from other
• Pathfinder - the car with the increased passability
• Reebok (antelope species) - sports shoes and clothing
• Google - derived from a number with 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 - an abbreviation accepted in the USA for universities + fan + ticks (tickets)
• InvisibleCRM (since there is no really “invisible” CRM, this gives the brand a suggestive touch, in the sense that it works invisibly and does not interfere)
• Softkey - initially: registration of keys for software
• PINXTER - an app in the field of fashion, a hint of femininity and all sorts of ** str in e-commerce (pinxter - flower)
• CollageBerry - soft for mosaic photo
• Dealigence - deal and diligence (software and services in M ​​& A)
• Pirate Revenge - Pirates Themed Cruises
• War Thunder - war games / software
• Dance Magic - dance games / software
• Star Walk, Solar Walk - an astronomy app
• ByteScout - software programming libraries, development components and utilities
• StaffCop - software for tracking employees
4. Arbitrary - existing words, but not related to the product itself:
• Bluetooth
• Blackberry
• HootSuite
• Gibraltar Software
• Banjo Publishing
• Oxygen Forensics
• Gaijin Entertainment
5. Fanciful - non-existent words
• XEROX
• Kodak
• adidas
• Fozium
• Alentum
• Agnitum
• Bitrix
• Nravo
• Well, actually habrahabr - I can not find the history of the name. It looks like a fictional word - can someone tell me where the name originated from?
4 and 5 are protected most of all, but the problem is that for associative perception and brand recognition by consumers, the brand of the 4th and 5th species must be “unwound” and an association between the product and the brand (which is initially absent) should be created. That is, the nike brand itself does not say that it is a sports brand, or that Gaijin or Nravo are games. But on the other hand, such names immediately receive full protection, and if we ensure “promotion” and recognition, then these brands can be no worse than suggestive brands, just for this you need additional funds and efforts.
In the 4th and 5th categories, acronyms may also fall, but you have 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 there are only a few dozen of recognizable two-three-letter trademarks in the world - GE, IBM, CNN, ABC, BMW well, maybe a couple more. Therefore, a two-three-letter mark is not in itself of any value until huge funds are spent on its promotion, and it is usually problematic to register such a mark. Therefore, one should avoid two and three-letter abbreviations and not call their FIOsoftware-type products — these are all weak brands, although it still amazes me whether resourcefulness is the luck of those who came up with ASprotect (AS is an abbreviation of the name, but a very good phonetic reminder of that should be covered in business).
Four letters are minimal for a brand if you don’t want to have problems in the future. However, for example, we recently happened that the four-letter mark in the United States was quietly registered, but it turned out that in other countries and in other languages ​​the name means “descriptive” or there is already a registration. Therefore, simply according to the theory of probability and based on the fact that the number of letters in the alphabet is limited, 4-letter marks are also quite risky in themselves.
Thus, relying on the rules above, you need to choose something unique that is not confusingly similar with other brands (because ADIDASoftare is possible and an interesting name, but it is obvious that it will cause problems in the legal field of a completely different level) that will not cause problems in the future, but it still does not cause unnecessary problems for your marketing. I think that we will highlight the conflict with other brands later.
And for a good brand you need to connect a fantasy ... My advice is to try to find a suggestive, so that a certain reminder of the product is preserved, and at the same time to have virtually complete legal protection. Imagine that you are inventing a name for a lie detector (lie detector) and remember the old joke - “I have a lie detector at home.” “What is the name?” “Mother-in-law!” Joke is a 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 include creativity and avoid repetitions with other brands, especially with those of companies that have a large budget for lawyers. Surprisingly, for quite a long time I had to explain to the client why old Barbie runs into him and not at the other "clones." You will be surprised, but the answer is very simple - “elusive Joe” doesn’t interest anyone, and they “run over” (or scientifically send cease and desist letters, remove them from the AppStore, sue them, 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 principle of “failure of success”?
Source: https://habr.com/ru/post/208100/
All Articles