While it is easy to consider a name as just another brand element—one of the many factors that shape consumer perception and buying behaviors—a name represents more than that. It is the first word of your story: a tangible asset. When it comes to developing names for businesses and products, people tend to underestimate the importance of trademarking. The brand naming and trademarking process is nuanced, extending far beyond the mere development of names. For the process to result in an actual name change, a myriad of factors must perfectly align, including political implications, portfolio considerations, internal and external socialization, applications to real-life use cases and perhaps most importantly, trademarking. Trademarking is about protecting consumers to prevent confusion and about companies protecting their legal rights. By neglecting to prioritize trademarking, a brand runs the risk of facing lawsuits and needing to change the launched name once the product or business has already gone to market.
The indispensable value of a brand name can be exemplified by the legal battle between the World Wildlife Fund and the former World Wrestling Federation over the acronym “WWF.” Given the vastly different natures of these organizations, it is understandable that they would not want to be confused with one another. In 2002, the UK Court of Appeals found the Federation violated a 1994 agreement with the Fund that prevented the Federation from using the acronym. When it comes to the names of organizations, acronyms often become inevitable, and they live in places with less context than full names, further increasing consumer confusion. After the 2002 court ruling, the Federation changed its name to World Wrestling Entertainment or WWE for short. Interestingly, WWE began promoting its new name with the slogan: “World Wrestling Entertainment. Get the F out.” Names, even in the form of acronyms, are real assets that strengthen the brand and create recognition.
Likewise, lengthy, multi-word names can pose a real risk of confusion. This risk is only amplified when these organizations coexist within the same industry. Earlier this year, months after their introduction of an initiative called The Global Girls Alliance, The Obama Foundation changed their initiative’s name to The Girls Opportunity Alliance. The original name bore too close of a resemblance to that of a different Chicago-based nonprofit organization: Global Girls Inc. Even within the mission-driven nonprofit space, where brand building can take a backseat, confusion due to poor naming remains a significant risk, and trademark should remain a priority. Although their missions are not identical, they are similar enough that Global Girls Inc. worried that the Obama program’s original name would cause confusion. Regarding the initiative’s name change, Michael Strautmanis, VP of Civic Engagement at The Obama Foundation, released a statement saying: “We decided to take a proactive step which would allow these organizations to continue their missions without undue complications…In Chicago, we want people to know we wish that organization well as it continues its work in the city.” The founder of Global Girls Inc., Marvinetta Woodley Penn, said, “I’m glad they realized they were infringing on our trademark. If they had done a Google search they would have seen who we are, the wonderful work we have been doing for 19 years in this community.”
People wonder how a business, nonprofit or for-profit, could own commonly used words like “girls,” “global,” or “alliance.” Simple words flourish within the realm of brand names, giving consumers the impression that trademarking is easier than it actually is. In 2013, a legal feud transpired between British Sky Broadcasting Group, commonly known as BSkyB, and Microsoft over its product, SkyDrive. A UK Court ruled that SkyDrive infringed upon BSkyB’s trademark, and Microsoft ultimately agreed to change the product’s name to OneDrive. Once again, the case came down to consumer confusion over the word “sky.” BSkyB argued that the SkyDrive name posed a risk of confusion since BSkyB also provides cloud-based mobile apps and online streaming services. Despite Microsoft’s counter-argument that it is hard to mistake SkyDrive with these services, the court ruled in BSkyB’s favor. While it may seem like a word as simple and generic as “sky” could not be infringed upon, this case demonstrates the power that comes with owning a name.
There are several “David & Goliath” situations wherein a company has attained ownership of a specific word that they’ve been able to protect. For example, Under Armour has sued competitors for using “armor” or “armour” in their respective names. The famed athletics apparel company targeted a Maryland-based Christian sports apparel brand called Armor & Glory, whose name was derived from a Bible verse. Armor & Glory’s CEO, Terrance Jackson, described this situation as “trademark bullying at its finest.” The company has since changed its name to AG365 and is still selling faith-based apparel. Under Armour also filed a lawsuit against Salt Armour Inc., a saltwater fishing apparel brand. Today, Salt Armour Inc. is called SA Co.
Similarly, in 2012, Facebook went after Teachbook, a social networking site for teachers. They dropped their suit against Teachbook once the site agreed to change its name, to TeachQuest. Teachbook argued that “book” is a generic word, but Facebook still came out on top.
Ultimately, whether it’s an acronym, a multi-word name, or a single word, neglecting to consider trademarking in the naming process poses substantial risk. Names matter for branding purposes and consumer clarity, and, like any other asset, they need to be legally protected.
