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Don't Call It That 2edt PDF
Don't Call It That 2edt PDF
ExtraCurricular Press
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For Alex and Allie.
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1
Aim for the Eyes Ch. 1
entire newspapers-worth of data every sin- If we didn’t develop a way to figure out
gle day. This represents a fivefold increase what’s worth paying attention to, we’d
since 1986. spend months in the toothpaste aisle at the
grocery store comparing anti-cavity claims
If you had to catalog every brand you came and being mesmerized by foil packaging.
upon in a single day, it would be an all-con-
suming task. The world is saturated with With such a small window to catch some-
brands, and, as a result, advertisers get one’s attention, what you call yourself be-
excited when two percent of the exposed comes important. This need is amplified for
audience responds actively—for example, startups. They only have so much time to
clicking on an ad, retweeting, or like-ing a show people that they’re gaining traction
Facebook post. before funding dries up. It’s hard to gain
traction if people can’t remember what
The result is some mental triage. We sub- you’re called. The name is often the first
consciously set up simple tests to take thing anyone will come in contact with.
small amounts of surface-level information,
like what a company is called and how it It’s your first impression. Do you want your
looks, in order to instantaneously decide first impression with your audience to be
whether it’s worth paying attention to. something that’s cool and interesting and
helps you tell your story? Or do you want
We pay attention to the content that catches it to be something that sounds like every-
our attention. It’s a coping mechanism for thing else and gets ignored?
the all-out marketing blitz we face every
day of our lives. Since a name is a very compact, easy-to-
2 3
Aim for the Eyes Ch. 1
4 5
Ch. 2
Andrew Sarris
7
You’re Awful at This Ch. 2
8 9
You’re Awful at This Ch. 2
iScream 5
Not Popsicles 8
Cold Cream 9
32 Flavors 11
Flavorz Extreme 12
Kolbalio 13
14
10 11
You’re Awful at This Ch. 2
We’re starting with bad names for a few says absolutely nothing about their point
reasons. Primarily, it’s a lot easier to think of view. Then again, AirTran has a good
of bad stuff than good stuff. This is evi- reason for a bland name—they needed
denced by how negative of a place the to fly under the radar after ditching their
internet can be—get one reference wrong previous name, ValuJet, following the 1996
and you get flamed from all directions. crash. Think of a few descriptive names
Additionally, figuring out what makes and write them here. It shouldn’t be hard—
names bad is a good place to start think- they’re a dime a dozen.
ing about what makes names good. Flip
the switch on the bad attributes of these They try to encompass everything: A lot of
names, and you start to get some qualities people take the desire to not pigeonhole
that you might want to focus on. themselves way too far and avoid showing
any personality whatsoever. Being overly
So let’s look at why bad names are bad: general leads to boring names that have
nothing to do with your specific proposition.
They’re descriptive: Unless you’re doing This is why so many companies say they’re
something truly compelling, having a name in the “solutions business.” Anything can
that describes what you do is a guaranteed be construed as a solution: Waste Manage-
way to make sure people never pay attention ment Solutions, Business Intelligence
to you. An example I always like to use is the Solutions, Container Solutions. The point is,
airline, AirTran. They do transportation... picking a name that ‘doesn’t rule anything
in the air...fascinating. Sure they might be out’ generally doesn’t draw anyone in either.
a successful company, but their name is
sleep-inducing and hard to remember, and
12 13
You’re Awful at This Ch. 2
14 15
You’re Awful at This Ch. 2
Come up with a few names that don’t mean They’re boring: See “names that are de-
anything. You know, things like Blanderelk and scriptive,” “names that try and encompass
ZZwhyG5 and Utah Monday. everything.”
16 17
You’re Awful at This Ch. 2
18 19
You’re Awful at This Ch. 2
Kickshaw
Gus and Dave started a high-end wine de-
livery service in San Francisco. After working
through Don’t Call It That they settled on
the name Kickshaw—a cool, archaic word
meaning something small and elegant. Gus
said “Listing silly, inaccurate, and/or inap-
propriate names helped us focus on how we
wanted our service to be perceived by cus-
tomers. Ultimately, Don’t Call It That helped
us to hone a sharper and simpler vision of
our concept.” Dave added “We had some
bad names, including ‘Wine Dancer’ (think
Flashdance from the ’80s), and ‘Wine–1–1.’
Everyone laughs when we say ‘Wine–1–1.’”
20 21
Ch. 3
Ready, Set
The name is the start of the story.
23
Ready, Set Ch. 3
Charles Mingus
24 25
Ch. 4
27
Get to the Point Ch. 4
28 29
Get to the Point Ch. 4
Heads Up
Start thinking of some feelings and ideas you
want your name to communicate. How do you
want to be different from your competition?
How can you signal that with your name? Let’s
use the outdoor apparel company Arc’teryx as
an example. A lot of outdoor apparel companies
try to evoke the mountains: The North Face,
Mountain Hardware, Patagonia, Sierra Designs.
Arc’teryx, short for Archaeopteryx, makes you
think of digging and paleontology. It’s still
about the outdoors, but decidedly different
than its mountaineering predecessors.
30 31
Ch. 5
URL:
Look, we all know it’s hard to find a
straightaway dot com. This means that
most people who spend any time on the
internet are pretty tolerant and forgiving
when it comes to URLs. That said, not
everyone needs a URL as pure as the driven
snow. While clearly the first choice is to
have yourbrandname.com, its unavailability
should almost never be a dealbreaker.
A lot of people get caught looking for a URL
instead of a name. Don’t join their ranks.
32 33
Jumping Through Hoops Ch. 5
34 35
Jumping Through Hoops Ch. 5
domain extension is a viable option. Some In the end, URLs are a losing battle. The
people think that if you don’t have a dot number of available dot coms that are
com, customers will think you don’t have a even remotely pronounceable in English is
serious business. To them I say that a URL small and declining rapidly. Hell, Elon Musk
isn’t the only way to show people you have didn’t even get his hands on tesla.com until
a serious business. Having a well-designed 2016—well after he established a thriving
site certainly helps, and so does a little empire. According to research by WhoAPI,
publicity. Some very successful sites that zero four-letter URLs are available to be
didn’t worry about having a dot com include registered, so I hope you didn’t have your
americanapparel.net, last.fm, angel.co, heart set on qbmz.com. On the other hand,
rapha.cc, good.is, canopy.co, and Google’s the general population is becoming more
parent company Alphabet (abc.xyz). Again, and more web-savvy. At some point in the
if people are using a search engine to find not-too-distant future, dot coms are going
you, having a dot net isn’t a big deal. In the to be an anachronism. Don’t let this be the
case of Good, they used the country exten- thing that gets between you and coming up
sion for Iceland in their URL. In most cases with the right name for your business.
you don’t have to do business in a country
in order to use their extensions and you Pronounceability and spell-ability:
can create some pretty interesting options A lot of people want names that are edgy,
that are probably available. Other poten- imaginative, and inimitable, but only so
tially useful extensions are: .as, .at, .be, .by, long as they’re also easy to spell, easy to
.co, .ee, .in, .it, .ly, and .to. You can view all of say, and impossible to forget. The only
them here: ahundredmonkeys.com/dcit. trouble being, easy and evocative are
natural enemies. Nothing is so sure to slip
36 37
Jumping Through Hoops Ch. 5
between the ears undetected as the word At the heart of anything good there
that requires no effort to absorb. should be a kernel of something
undefinable, and if you can define it,
We remember best that which asks some- or claim to be able to define it, then,
thing of us. So, embrace the difficult, the in a sense, you’ve missed the point.
strange, the bizarre. And if you want people
to remember you, embrace the one thing John Peel
that will help them do just that: stand out.
There’s no point in coming up with a name
that makes you sound like everyone else
and then spend a bunch of money on
marketing trying to convince them you’re
different. A good name can do the work for
you, but only if you let it.
38 39
Jumping Through Hoops Ch. 5
attacked and dismissed. For example, • You’ll be picketed by people from small,
40 41
Jumping Through Hoops Ch. 5
caring adults. The curriculum is being used Remember, interesting names have a back-
in 2,100 schools worldwide. The goal is to story—they come from somewhere, they
teach kids real life skills in a genuine and arouse curiosity. And no story worth your
engaging way—all the stuff you should have time is all sunshine, smiles, and rainbows.
learned in school but probably didn’t. Every name has weaknesses. Every word
that isn’t clichéd to death isn’t a flawless
“If you’re going to have the nerve to open representation of beauty, strength, and
your mouth, publish something, speak on speed. This is what it means to be human—
something... what’s the point of doing that embrace it. Don’t fall into the same Valium-
timidly?” induced stupor where you’ll find words like
“synergy,” “innovation,” and “solutions.”
Kids These Days doesn’t shy away from Words that act like not-so-radiant beacons,
negativity. It actually aligns itself with it. telling the world you want to be just like
“The name is clear. People are familiar with everyone else.
it. It’s typically a negative thing. ‘Get off
my lawn, get off your iPhone!’ The name
starts with something people are saying
anyway. It isn’t overly optimistic. When you
own the baggage it shows that you get it,
that you understand the problem. Yes, kids
are frustrating. But they’re amazing at
the same time. In order for us to get to the
solution, it was stronger for us to align with
the problem and show that we get it.”
42 43
Jumping Through Hoops Ch. 5
44 45
Ch. 6
46 47
Make Some Headroom Ch. 6
10
Heads Up 11
48 49
Make Some Headroom Ch. 6
Now let’s quickly shift into coming up with How would you explain your project to a
good names for your project. Anything five-year-old in a way that would keep him
goes, as long as “anything” isn’t snore- or her interested?
inducing. Think of some risky names, some
names your mom would get mad at you Does the concept of what you’re trying
for, some names that will make people ask to accomplish exist in other industries?
“What does that mean?”. Do they use different words to describe
this concept?
Here are some questions that might help
you along: What are a few good metaphors for what
you’re doing?
What feeling do you want to evoke in your
audience? What role in people’s lives are you aspiring
to fill?
What are the main actions you’re trying to
get people to do? It might be hard for you to think beyond
the literal answers to these questions. To
If your company were a rare plant or this I say, you’re going to need to come up
animal, which would it be? with non-literal answers to these questions
whether you’re naming or not.
What analogies can you come up with for
how your business operates?
50 51
Make Some Headroom Ch. 6
10
11
12
13
14
15
52 53
Make Some Headroom Ch. 6
People don’t want to be sold a product or What idea are you selling?
a service, they want to be sold an idea.
They want to understand how their lives
are going to be better with your company in
it. The literal, along with basic concepts like
“it’s faster,” and “it’s more reliable,” doesn’t
cut it. Sure, they might be integral to what
you’re doing, but you need to look past
your customers as workers or employees.
They’re people, and people don’t always
make calculated logical decisions. They
want to be excited and intrigued.
54 55
Ch. 7
56 57
The Attention Deficit Ch. 7
In baiting a mousetrap with cheese, You need to show people how you make
always leave room for the mouse. their lives better. You need to get them to
a place where they’re interested in learning
Saki more on their own. Arouse their curiosity.
To get there, you’re going to need a name
that draws them in.
• obscurity
• romance
• subtlety
• comedy
• confidence
58 59
The Attention Deficit Ch. 7
Riverbed
a large-scale data transfer company
Mechanical Turk
on-demand, scalable workforce
Teenage Engineering
electronic music controllers
Arrogant Bastard
strong beer
Band of Outsiders
fashion label
60 61
Ch. 8
62 63
Show Don’t Tell Ch. 8
feels untrustworthy. Another example your life while you hurdle across the sky
comes to mind. There’s a hole in the wall in a metal tube at five hundred miles per
pizzeria on Gough Street in San Francisco hour. How many big airlines have “trust”
with a sign that says “World famous pizza!” or “safety” in their name? None. This is
We both know there is nothing world because they know that using these words
famous about their pizza. If there was a actually has the opposite effect. Virgin
world famous pizzeria nearby, you’d know Airways is a great example. Their name,
about it—there’d be a line out the door. taken at face value, says that they’re new
Saying you’re world famous does little more to flying. If you were literal-minded in try-
than show that you’re not. ing to convey safety and security, this name
would look like a terrifying proposition.
So when we have a company come to us and What the name Virgin does have is tons of
say it’s paramount that their name conveys confidence. And confidence is exactly what
trust, we need to find another way in. While you’re looking for in an airline you’re trust-
trust needs to be built and earned, what ing with your life.
makes someone seem trustworthy? While
a lot of things from posture to eye contact So if you’re trying to use brand attributes
play into it, confidence and honesty make as a foundation for coming up with names,
us inclined to trust someone. The confident it’s important to ask yourself how you con-
person doesn’t say “trust me,” they make vey the feeling of your brand attributes.
you feel safe. Airlines are a good industry to It’s almost never a good idea to actually use
look at as an example. The most important the words or their synonyms in naming.
thing for airlines is safety. When you get
on a plane, you’re trusting that airline with
64 65
Ch. 9
Wordsmash
Lexical synergy or a head-on collision?
66 67
Wordsmash Ch. 9
68 69
Ch. 10
70 71
Kids, Dogs, Goldfish Ch. 10
a chance people won’t laugh—and that’s every audio mixing studio offering online
embarrassing. What people don’t talk services has ‘mix’ in the title. After working
about, though, is the risk you take when through the book, we settled on MadSam
you don’t stand out. Naming, branding, Studios.”
positioning, marketing are all about engage-
ment—getting people’s attention to the The name came from the engineer’s two
point where they actually send something children, Sam and Madison. “When people
back your way. There is absolutely nothing ask about the name, it opens us up to talk
engaging about a name that makes you about us being family guys. We only do
sound like everyone else. So you tell your- the studio thing because it’s our passion.
self you’re going to stand out some other We aren’t out to make a ton of money and
way. Are you? waste time we could be spending with
family. Itsthemix was just confusing for
And even if you are, if your audience balks people and really had no meat. Our think-
at your name, there’s a pretty big chance ing was originally when people ask about
you’re not going to get that opportunity what the name means we’d say something
anyway. So when you actually think about like ‘Your mix makes or breaks your song.
it, not having an engaging name represents It’s all about the mix’ but that’s usually
a pretty big risk. where the conversation ended. We have
found we’ve created deeper relationships
MadSam Studios with our clients because we’re personable
Jason Smithers used Don’t Call It That and just your average guys raising families
during a studio rebrand. “We started with and making music.”
Itsthemix.com, but it was so generic and
72 73
Kids, Dogs, Goldfish Ch. 10
74 75
Ch. 11
76 77
I’m with Stupid Ch. 11
right away is a great reason for someone 4/ People like to play up a level:
to pay attention. Hell, they might even look Remember when you were in middle school
it up. and you thought high schoolers were so cool
and grown up? They can drive! Remember
3/ Everything isn’t for everyone: when you were in high school and you
One of the biggest reasons people try to thought you really belonged in college? We
appeal to the lowest common denominator want what we don’t have. This applies to
is that they want their company to appeal love, money, and even knowledge. So just
to everyone. Hate to break it to you (them), because people might not understand your
but nothing is for everyone. Sex and choco- name or brand right away, doesn’t mean
late aren’t even for everyone. In fact, you they aren’t going to be attracted to it. Some-
run a bigger risk turning off the one or two times aiming over people’s heads is a great
audiences who are really important to you way to get their attention. What percentage
by trying to appeal to anyone with a pulse. of people who walk into a Starbucks know
People are attracted to brands that speak to where the name comes from? (Moby Dick.)
them. It’s hard to have a real conversation
with someone when you’re worried about 5/ If the people you’re trying to communi-
what everyone else is going to think. Focus cate with are college educated, don’t pretend
on your customer. If you’re successful at they aren’t:
communicating with them, they’ll pitch People like it when you appeal to their
other people for you. intelligence. They like to associate with
“smart” brands. And if they don’t under-
stand your name or how to spell it, that’s
what Google is for.
78 79
I’m with Stupid Ch. 11
Figure out who your most important audi- Who is your most important audience?
ence is. Find out how to grab their attention. Circle one from each column.
Don’t worry about appeasing them yet—
that’s not a job for a name. Just try to get Rugged Imaginary Luddites
a reaction: a smile, a question, a genuine Fiery Lost Hippies
laugh, even an inquisitive glance. Blithe Taciturn Milennials
Belligerent Traveling Tesla drivers
Who is your most important audience? Skeptical Exacting 1%ers
1
Boisterous Reactionary Dual citizens
2
Canny Evangelical Athletes
3
Adventurous Progressive Coders
4
Mysterious Mustachioed Long-haul truckers
5
Absurdist Lewd Academics
6
Calculating Romantic Parents
7
Protective Laconic Artists
8
Hopeful Carnivorous Engineers
9
Righteous Voyeuristic Alcoholics
10
Persistent Practical Gonzo journalists
Theatrical Articulate Dreamers
Domineering Verbose Amateur chefs
Salty Experienced Ex-pats
Over-eager Predictable Teens
Myopic Laid-back Medical pros
80 81
Ch. 12
82 83
Don’t Reinvent the Wheel Ch. 12
84 85
Don’t Reinvent the Wheel Ch. 12
88 89
The Power of Isolation Ch. 13
does two things. It makes people curious Come up with some words that feel fresh
because they aren’t used to seeing a name on their own.
in this light. It also happens to be much
more protectable from a legal standpoint.
90 91
The Power of Isolation Ch. 13
237
92 93
Ch. 14
94 95
New Species Discovered Daily Ch. 14
Monkeys we have come up with 29 different Bumble and bumble / AIAIAI / Lululemon
types of names and we’re still looking. This
is not an analysis. We’re not talking pros and High Class Gibberish
cons. If you’re trying to name a company or Where do they come from? An ancient dictionary? Outer space?
Initials
The easy way out
Acronyms
Initials that you say instead of spell
96 97
New Species Discovered Daily Ch. 14
Airbus / VitaminWater / Whole Foods Warby Parker / Dr. Pepper / Captain Morgan
Juicy Couture / Mighty Leaf / Big Gulp Banana Republic / Old Milwaukee /
Crown Royal
Part Descriptive, Part Emotional
We’ve got soul™
Suggests the Solution
Zendesk / SoulCycle / Zenefits What’s in it for me?
98 99
New Species Discovered Daily Ch. 14
Adrenaline Mythical
Get your motor running A lot to live up to
Foreign-feeling Exclamation
Implied sophistication Something to get excited about
Clinique / Häagen-Dazs / Tazo I Can’t Believe It’s Not Butter! / Yelp! / Buzz
Off!
Literary/Historical
Align yourself with something powerful
Name as Statement
Starbucks / Big Bertha / Rosetta Stone Names that are on a mission
Flickr / Tumblr / Unbxd Crate & Barrel / Bourbon & Branch / Bot & Dolly
100 101
New Species Discovered Daily Ch. 14
102 103
Ch. 15
ACE
Ace Hardware
Ace Hotel
Ace Ammunition
STANDARD
Standard Accounting
Standard Caviar
Standard Cement
104 105
Push and Pull Ch. 15
106 107
Ch. 16
108 109
Apples and Alligators Ch. 16
Instead, focus on your objective. What is What are your competitors’ names?
the name supposed to communicate to my
audience? Does this name sound different
from my competitors’ names? Is this name
going to be a good vessel for holding my
story and products and experiences? If you
can focus on these things, your name will
have everything it needs to develop into
a thriving brand. Remember, the name is
just the beginning of your story—don’t put
more weight on it than you have to.
110 111
Apples and Alligators Ch. 16
112 113
Ch. 17
114 115
Ch. 18
116 117
Names are Living Beings Ch. 18
118 119
Ch. 19
120 121
How to Ask Friends Ch. 19
This applies to focus groups, too. A lot It doesn’t work that way. The environment
of people try to focus group or “A/B test” of the focus group is entirely contrived.
names. It is seen as “safe” because you’re
letting consumers make decisions for People are never asked about how they feel
you. This is not what focus groups are for. about names devoid of context. They’re used
They’re for learning about people’s prob- to seeing names as part of a bigger whole—
lems and desires and understanding where live companies and products in the real
they are coming from. Focus groups are world. Attempting to isolate the name as a
not supposed to make decisions for you. So variable is unnatural and foreign to the
while there are a lot of good reasons to do people you would be asking. This, however,
focus groups, naming is not one of them. does not mean these people won’t be happy
to give you their opinion, typically delivered
As Dan Pallotta points out in his Harvard in a manner disproportionately forceful
Business Review blog post “Real Leaders relative to how they actually feel about it.
Don’t Do Focus Groups” [ahundredmonkeys.
com/dcit], asking someone what they think
when it comes to something creative is Heads Up
a pretty clear signal that you’re lacking If you’re ever going to involve other people,
confidence. you need to do it in a way that simulates the
way they would actually come in contact with
This applies to naming. You can’t focus a name in the real world. “I was thinking about
group names because creativity is hard to maybe naming my company Orbiter, what
test and harder to qualify. It would be like do you think?” is not a question people are
using scientific analysis to find great art. equipped to answer.
122 123
How to Ask Friends Ch. 19
124 125
Ch. 20
126 127
Climbing Over Clichés Ch. 20
telling people what we do. We hand out with the name I was curious and skeptical.
business cards and talk to potential part- Then the doubt started to settle in. Can I get
ners. Your name is just as important here a URL? I started having my doubts. Really
as it is on the web. And when people ask though, you can poke holes in anything.
you why you’re called Engin, “...because But it’s like a new pair of jeans. The fit is a
engine-with-an-e wasn’t available” is not little rough at first, but as you wear them,
a good answer. Neither is, “Whatever, it’s they really start to shape around you and
just something we came up with. It works the way you move.”
for now.” Answers like these do not help
your case.
Talent Show
Abe Vizcarra used Don’t Call It That to help
him name his collaborative design studio
in Los Angeles. Abe said “I wanted some-
thing that was a bit utilitarian. Talent Show
is common vernacular so people are familiar
with it, but not in this context. It’s not meant
to be taken literally. I was looking to get
a reaction. The name is about showcasing
not only our own talent, but the talent
of our partners and clients, too. It’s always
a collaboration.” But it wasn’t a eureka
moment (it rarely is). “When I first came up
128 129
Ch. 21
130 131
To Verb or not to Verb Ch. 21
“Just Twitter it” doesn’t have a ring to it, but Take your verbs for a spin.
“tweet it” does. Either way, without critical
mass getting adoption for an invented verb it.
is a fool’s errand. If your name has poetry
or is fun to say, and is relatively short, you’re me.
putting yourself in “verbable” territory. Now
you just need a few million fans. that.
Let’s there.
I therefore I am.
it.
me.
that.
Let’s there.
I therefore I am.
132 133
Ch. 22
Field Exercise
What your name says about you.
134 135
Field Exercise Ch. 22
“I work for Klipspringer.” never say you make web apps. Web apps
“What’s Klipspringer?” are rapidly approaching ubiquity. When
“It’s a relative of the antelope that lives in the you’re introducing someone to what you
African grasslands. It can jump 15 times its do, why would you ever want it to sound
height to see predators above the tall grass.” uninteresting? Be sarcastic if you have to.
“Ha, cool.” No one is going to be interested in what
“Yeah, we do cloud analytics. It’s easy to get you’re doing if both your name, and the
caught in the weeds. We jump over all that way you describe what you do, are yawn
stuff and look at everything from a higher inducing.
level.”
2/ “I work for Klipspringer.”
So let’s examine this interaction. Clearly Klipspringer is an interesting word. It’s a
Sarah kicked your ass. You should work on word that some people have heard of but
that. Diving a little deeper: probably can’t place. This is a good thing.
It fuels curiosity. Considering you’re at a
1/ “I’m the CMO for Omnitau. We make web cloud expo, you would imagine there would
apps.” be a lot of meteorological names: cloud
There are a few issues here. First, the name: this, cirrus that, cumulus something. So
Omnitau sounds totally made up. There are when everyone zigs like this, a name like
a few pleasing sounds and maybe an oblique Klipspringer zags. It sounds different which
reference to omnipotence but absolutely puts you in a position to show people why
nothing to catch anyone’s attention. The you’re different. If your name sounds like
name is designed to go unnoticed—a bad everyone else’s why should people believe
idea for almost any new company. Also, you’re not like everyone else?
136 137
Field Exercise Ch. 22
138 139
Field Exercise Ch. 22
140 141
Field Exercise Ch. 22
142 143
Ch. 23
144 145
The Proving Grounds Ch. 23
sodomist” in Dutch or Korean [ahundred- The report should give you an idea of how
monkeys. com/dcit]. Rinse and repeat for all available your potential names are. When
your other highlighted names. You are going you get down to your final three or four
to submit the ones that pass inspection to contenders, it’s a good idea to run a more
an IP attorney for scrutiny, but you might exhaustive search. This costs a little more
as well save yourself a couple hundred bucks money and takes a little more time, but it’s
eliminating the options you know are taken. a far better option than not knowing what’s
out there.
3/ Legal
For as much as people focus on URL avail- Just because you do a Google search and
ability, it’s a lot more important to make see some people using your name, doesn’t
sure you do your homework in the trade- necessarily mean you can’t use it. As lawyers
mark department. A URL can be changed explain it to me, it’s like a party: If you ring
relatively easily. A Cease and Desist, poten- the door uninvited to a party and there’s
tial damages, plus finding and implementing just a few people there, it’s highly unlikely
a new name is a serious wrench in the gears they’re going to let you in. However if you
no matter how you look at it. Thankfully, show up to a party and the door is open,
this is why trademark attorneys exist. You there’s obnoxious techno blasting and a
can typically get a preliminary report in the ton of people milling around, you might be
neighborhood of $50/name. You’re going able to get away with joining. So if there are
to need to give them a short description of just a few people with a trademark, they’re
the legal territory you want to cover. probably going to want to protect it. If it’s a
crowded party, trademark ownership gets
pretty complicated and people are less
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likely to defend their marks because they Do I need to trademark my new name?
will probably have a harder time proving Yes.
that you’re invading their turf.
Care to expound on that?
Considering I’ve never been to law school, In the United States, trademark rights are
I figured it would be a good idea to hear established through filing or through use.
about trademarking names from an actual If someone starts using a trademark, they
trademark attorney who works on this don’t actually need to register. However,
stuff everyday. So I sat down with Rebecca filing a federal trademark gives you pre-
Liebowitz of Venable LLP in Washington D.C. sumptive nationwide rights. In other words,
even if you’re only using your mark in south-
Who are you and what do you do? ern California now, if you have a federal
I am Rebecca Liebowitz. I am a trademark registration, you should be able to move
attorney. I have been in the trademark field into Florida easily. Common law rights
for about 18 years—started as a file clerk (established through use) only apply to the
and a paralegal and I’ve had just about every geographic area where you’re in business.
title you could have. I have been a lawyer for So if you only have common law rights and
about eight years. I focus largely on trade- are using it in southern California, that
mark clearance and prosecution—searching doesn’t give you rights to use it in Florida.
to see if trademarks are available, licensing But if you have a federal registration you
and deals, purchasing trademarks, looking have presumptive nationwide rights and it
for potential issues. freezes the rest of the country in terms of
their existing use of that mark.
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The Proving Grounds Ch. 23
example, downloadable software is a prod- made-up words and existing words used
uct while online software is a service. Most completely out of context. “Apple” is not
countries accept really broad definitions of protectable for fruit, but it’s very protectable
Goods & Services. The United States gener- for computers. Similarly, made up words
ally requires a higher level of specificity. like Xerox are very strong. From a marketing
perspective, it takes a lot more time and
Can you still find yourself in trouble even if money to get people to know it—escalator,
you’re legally in the right? thermos, trampoline—used to be trademarks.
Absolutely. Just like any other type of legal But over time their popularity turned them
claim, just because someone alleges a into generic words.
wrongdoing, doesn’t mean they are correct.
There are “trademark bullies” that try to Suggestive Marks—these are marks that
assert their trademark rights beyond that suggest something about the product or
which they actually have—frequently service but don’t actually describe it. Grey-
against smaller companies. Or, you see hound for busses. Greyhounds are really
smaller companies trying to do the same fast dogs, so you assume the bus will be
to larger companies who appear to have fast. Coppertone for suntan lotion is another
deep pockets. Unfortunately, until a mark suggestive mark. These names aren’t as
has been registered for five years, a third strong as Fanciful or Arbitrary Marks, but
party can challenge the registration owner’s they’re generally solid.
rights based on prior use.
Descriptive Marks—these are the weakest.
What are the best types of trademarks? These are marks that describe the products/
Fanciful and Arbitrary Marks—these are services themselves or a characteristic
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Generic terms are not trademarks and not It is also useful to search the internet for
protectable—“Apple” for fruit, “Pencil” for your name with your intended Goods &
writing instruments. In other words, if it’s Services. It can be easy to find conflicts
the common commercial name for an item, this way.
it is not a trademark.
How long does the registration process
What are things you can check on your own? take? Can a name be safely used before the
You can search and access the USPTO data- process is complete?
base. It can be persnickety to use but you In the United States you can file on actual
can find obvious conflicts pretty quickly. use or intent to use. In most cases you
It can be complicated and esoteric, but won’t actually obtain a registration until
it’s a good place to start. The International you show use. How long it takes depends
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The Proving Grounds Ch. 23
on if you have use but generally speaking, three years to begin to use the mark. If your
an application filed based on use that application is based on your intent to use
doesn’t encounter any problems will regis- the mark, you stop the clock by filing the
ter in six-to-eight months. application, meaning that if someone else
files after you, you still have the first shot
What happens when you file an application? at registration and once you obtain regis-
You need to specify the Goods & Services tration, your rights will date back to your
on which you plan to use the mark. Within filing date.
three-to-five months of filing the application,
the Trademark Office will see if you meet
all the basic requirements. If they have any
issues, they issue what’s called an Office
Action. Then the applicant has six months
to reply. You can either comply, modify or Heads Up
state your argument. If you’re successful, Trademark is only shades of gray—that is to say,
the mark is approved and published for there is almost no certainty to be had. It’s just
opposition. The mark remains open for 30 good to know who’s out there and do what you
days for opposition by anyone who feels can to avoid some trouble down the road. If you
that they might be harmed by your regis- need help finding a trademark attorney, check
tration. If it’s not opposed, and the trade- out: ahundredmonkeys.com/dcit. Ask them to
mark is in use, a registration could issue give you an example of a trademark report so
within six-to-eight months. If it’s based on you know what you’re paying for. Usually they
intent to use the mark, a “notice of allow- will rate preliminary results with an A–through–F
ance” is issued and you have six months to or 1, 2, 3 grading system.
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The Proving Grounds Ch. 23
4/ After getting the trademark results back, about something before chiming in. Tell
assess your appetite for risk and select them the name with confidence, not like
the passing names accordingly. Like I said, you’re asking for permission. Writing out
there’s no “sure bets” in the trademark the answer to “Why is your company called
world so you should probably draw pri- [blank]?” can be helpful, too. If there’s a
marily from the “A” category unless you’re strong connection and an interesting story,
unfazed by the threats presented for other you’re probably headed in the right direction.
names in the trademark report.
If you have too few:
5/ Get down to some final contenders. The If you have too few names at this point,
goal at this point is to have three to five chances are the names you came up with
names in contention. are already taken. Go back to your big list
of names and look into some of your more
If you have too many: wild options. Revisit the Types of Names
This is a good problem to have. Think about section and explore some more categories.
which names differentiate you the most Check out our lists resource here:
from the competition. Think about which ahundredmonkeys.com/dcit. Think of it as
names get the biggest reaction out of an excuse to be a little more daring.
people. Instead of asking them how they
feel about a name, just say, “I’m starting a If you’re planning on registering for
[blank] called [blank].” Don’t ask. Just tell trademark, now is the time to take your
and gauge their reaction. A lot of people best name(s) to a trademark attorney
are really good at reading facial expressions for registration.
and vocal intonation to see how you feel
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The Proving Grounds Ch. 23
160 161
Back Matter About the Author
@elialtman
@ahundredmonkeys
162 163
Back Matter Colophon
ECP/003
ISBN: 978–0–9898320–1–4
ExtraCurricular Press
This and other ExtraCurricular Press
printed matter can be ordered direct
from the publisher:
extracurricularpress.com
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