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The legal implications of naming: how to “better” choose a trademark

Published in: Intellectual Property
by Arlo Canella
Home > The legal implications of naming: how to “better” choose a trademark

In this article, we explore the scenarios where an experienced brand naming professional should be brought in and we provide a checklist for identifying the scope of a specialized attorney.

What are the legal implications of choosing a name?

When choosing a name for a brand, product or service, it is critical to consider the legal implications related to intellectual property protection. A lawyer specializing in this area can provide essential support to protect your rights and prevent possible future litigation.

Before choosing a name, it is important to check that it has not already been registered by another company. A specialized lawyer can help you at this stage, ensuring that the name you choose is unique and does not infringe on the rights of third parties. In addition, he or she can guide you through the trademark registration process, ensuring the legal protection of your chosen name.

Finally, a lawyer or experienced professional can advise you on any cultural and linguistic issues related to your chosen name, assessing possible meanings, nuances, or associations in different languages and cultural contexts. This support can help avoid misunderstandings and potential litigation in the future, ensuring a solid positioning of your brand, product or service in the target market.

When is it essential to consult an experienced brand naming attorney?

The assistance of a professional with experience in trademark registration can be critical to ensuring the success of the naming process and improving the positioning and identity of your brand, product or service in the target market. In most cases, however, the professional becomes indispensable when you have not moved in time, an infringement has already been committed, and so-called rebranding becomes essential.

First, an expert can help you conduct thorough research to verify that the chosen name is unique and has not already been registered by another business entity, thus avoiding further intellectual property infringement and saving time and energy in the process. In addition, the professional accustomed to litigation can guide you through the process of choosing a trademark, helping you empathize with the consumer, ensuring the most truthful perception of the name in the marketplace.

Finally, an expert in trademark registration can offer valuable advice on how the chosen name can reflect and reinforce the identity, positioning and characteristics of the brand/product. This includes evaluating aspects of sonority, ease of pronunciation and memorization, compatibility with a possible logo, and possible cultural, linguistic and regulatory implications. In this way, the assistance of a professional can help create an effective and distinctive brand name that is capable of recalling positive concepts, values and specific ideas in the minds of consumers, avoiding problems, thus promoting the success of your brand, product or service in the target market.

What is the checklist that defines the scope of the expert's intervention?

The assistance of a legal expert in the naming process can solve any problems and improve the positioning and identity of a brand, product or service in the target market in several ways. The checklist defining the scope of an expert’s intervention is as follows:

  1. In-depth analysis of the market and competitors.
  2. Identification of the target audience and consideration of any cultural and language issues.
  3. Evaluation of associations, values and benefits related to the brand or product name.
  4. Consideration of the sonority, ease of pronunciation and memorization of the name.
  5. Checking the compatibility of the name with any logos or graphic elements.
  6. Analysis of meanings, nuances and associations of the name in different languages and cultural contexts.
  7. Evaluation of the name’s ability to evoke positive concepts and distinctive values compared to competitors.
  8. Support in the rebranding process, if necessary.
  9. Checking the availability of the name and ensuring that it has not already been registered by other companies.
  10. Guidance in the registration process and legal protection of the trademark.

Choosing a name involves important legal considerations related to intellectual property and the relevant territory. The assistance of an attorney who specializes in this area can be crucial in avoiding infringement of third-party rights, guiding through the trademark registration process, and addressing cultural and linguistic challenges associated with the chosen name.

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Publication date: 22 March 2023
Last update: 7 September 2023
Avv. Arlo Cannela

Avvocato Arlo Canella

Managing Partner of Canella Camaiora Law Firm, member of the Milan Bar Association, passionate about Branding, Communication and Design.
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