Boiled down to basics, keeping my clients out of court is at the top of my priority list, even a notch above innovation, as I help them resolve certain corporate identity or brand-related issues. Avoiding having any client stumble into harm’s way is my primary directive.
A while back, I was retained by a relatively small Colorado-based company wanting a new name.
At the time the project started there already existed a highly recognized brand name in this particular industry sector that the CEO of the new company I was representing liked a great deal. He desired something ‘similar’ (he actually meant ‘identical’ I came to learn later) that had the same level of visual impact, a comparable aura and panache when spoken aloud, a similar dose of elegance and charm, and that would provide trademarking rights and domain availability.
By the way, we got ‘divorced’ early on (the CEO and me) because I believed he was on the precipice of violating federal trademarking law when he shared his favored hand-made ‘solution’ with me. As divorces go, this one was relatively painless; no post-divorce counseling or alimony.
What was being asked of me on every level was something that I knew to be wrong — plain and simply wrong.
For the purpose of this article, let’s pretend the trademarked name the CEO was copying was 'Encompitran'.
Let’s also pretend that the name the CEO eventually launched was ‘Incompitron’, a very subtle, if not imperceptibly small variation of the aforementioned 'Encompitran'', which as I mentioned, is a hypothetical name used in this article to put things in perspective.
Let me make it clear that Encompitran and Incompitron have no similarity or relationship to the actual name the CEO chose to use or to the trademarked name he chose to infringe upon.
By the way, I created the actual term ‘Incompitron’ in 1999 for a SNL-style parody I prepared for a major high tech client to announce the new name (which I can't divulge in this posting) that client selected and continues to use successfully on a global basis.
As soon as the CEO mentioned he was seriously considering his Incompitron after rejecting more than a dozen top names I had already created that fit all project criteria and appeared to be available for trademarking and domain registration, I alerted him to a few obvious risks. Then, with his permission, I contacted an intellectual property attorney to get some preliminary legal input. It was an inexpensive investment in peace of mind....at least for me.
I was still trying to protect the CEO's company by providing him with an unbiased legal evaluation pertaining to the pros, cons, and potential risks associated with his Incompitron and Encompitran, the pretend name I'm inserting into this article in lieu of the actual brand name in question.
The intellectual property attorney was adamant that my client should avoid Incompitron. She advised me that there was a strong likelihood the company that owned Encompitran would take legal action to challenge Incompitron once it became aware of the new name.
The attorney labeled the choice of Incompitron as an 8 to 9 on the 10 scale, with 10 being the highest risk. She also expressed doubts the name would make it through the U.S. Patent and Trademark Office’s approval process because of its nearly identical spelling and pronunciation to an existing trademark in the same classification.
The attorney also believed the confusion factor for marketing, advertising, and general business communications would be seen by the USPTO and the other company as undermining the well-established brand equity of the actual brand name Encompitran represents in this article.
A few months after resigning from this project I learned that my former-client went ahead and launched his Incompitron solution despite everything he had been advised. I'm guessing he rationalized (to himself and apparently to his Board of Directors) that Incompitron was different enough from the existing trademark, Encompitran, that he'd have smooth sailing.
Pretty sure he and the Board didn’t run this past their legal department for approval before crowning his Incompitron as the new identity. Or maybe whomever might have disagreed in the legal department got fired?
Let’s be honest –– in sight, sound, inference and the potential for creating confusion in the same market segment –– his Incompitron was an obvious knock-off of the existing trademark that I'm referring to as Encompitran. If you saw these two brand names (i.e. the actual brand names involved in this situation) anywhere on the Internet, or heard them mentioned at a tradeshow, or referred to in a newscast, or referenced in a TedTalk video for instance, the similarity would be obvious. Confusion would reign supreme. Head scratching would occur. Huh?
The client’s game plan? His Incompitron versus their Encompitran. Let me emphasize that the actual brand names are even closer in spelling and pronunciation than my two examples.
I’m not an attorney. I do not provide legal advice. I provide business opinions based on my business background and in-depth experience in the field of intellectual property development. For thirty years I've tried to express myself in an unfiltered manner based on common sense, a working knowledge of business, and an intimate familiarity with many of the rules and guidelines relating to intellectual property.
Admittedly, despite coining new and often-times unorthodox names for my clients, I take a conservative, practical and pragmatic approach insofar as the legal parameters relating to trademarking and domain use.
This approach apparently works pretty well as I'm not aware of a single client represented by Transum since 1993 (or previous to Transum being formed) for whom I’ve developed a naming solution ever losing a legal battle of any sort due to a brand name I created. And I’ve created dozens and dozens and dozens and dozens of naming solutions that were successfully introduced into the marketplace and from Day One were able to obtain federal trademark protection and URL rights.
That CEO did not agree with my assessment nor the trademark attorney’s. He made a conscious decision that appeared to violate the trademarking rights of a well-established brand.
I can only guess that the CEO convinced himself that he’d probably never get caught up in a trademark infringement battle because he mistakenly believed a large international brand (i.e. their Encompitran) would never come after a small brand (i.e. his Incompitron). This was flawed reasoning since his new brand name would be on the Internet through a multitude of websites, in addition to being displayed on his company’s website. His new copy-cat brand identifier would now be visible to the entirety of Planet Earth.
It seemed that his intention was to have Internet search engines and other online resources display Incompitron ads and references whenever the widely recognized Encompitran brand name was searched via online sources and services.
This was a calculated attempt by the CEO to begin establishing a new brand in the marketplace by overtly playing off the 'good will' firmly established by another company with a trademarked brand (in the U.S. and other countries); a brand into which its owners had invested tremendous financial resources and effort over the years.
The CEO's decision to copy another name, trespass as far as I'm concerned, was not only wrong, but on a practical level, was completely unnecessary. There is an infinite supply of unique, one-of-a-kind strategically based brand identity solutions than can be created by those of us who specialize in practical and innovate branding solutions. His company had the opportunity to adopt any of the top names I'd already created before he made what can only be considered to be a bad decision with his Incompitron.
As I see it, brand name development is a strategically-driven art form. There's absolutely no reason to settle for a slightly altered photocopied image of someone else's branding solution.
There's a somewhat cryptic one-liner I created nearly twenty years ago that appears on Transum coffee cups and t-shirts that describes my philosophy about being a follower versus being a leader: "...Move behind me to determine if unnecessary lines always form at the rear..."
In other words, don’t follow too closely or copy others.
Do your utmost to innovate practical strategies and distinctive solutions that enable you to develop your own unique brand niche to its fullest potential.
And to anyone considering changing a brand identity or creating a new one –– beware of trespassing. Do your best to avoid becoming an Incompitron no matter how you spell it.
p.s. If you got a bit confused by the multiple uses of Incompitron and Encompitran in this article -- join the club. That's one of my points about a copy-cat name: Abject confusion.
by Hank Fisher, Transum LLC
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