For start-up brands a trademark is tricky business.

Branding and trademarksNaming is the most important element of a brand’s value proposition. It’s the first perception by an audience about who the brand is and what the brand represents. From day one, a brand name requires and deserves full creative consideration and legal protection.

Trademarks, which are the names or symbols associated with a specific company or product, are tremendously valuable to companies building a brand. This is especially important for start-up brands that may underestimate the importance of developing a brand name and registering it for trademark protection early in the game.

Developing a trade name for a product or service is a highly specialized marketing discipline and a difficult process in and of itself. Outside of the creative aspects of naming, being able to “own” the name as a registered trademark is more difficult than ever. The sheer volume of trademark registrations each year in every product category is staggering– and that’s why the process of naming is so critical to the success of start-up brands.

The process for creating a brand name strong enough to propel its unique value into the minds of customers and pass legal muster requires the skill and talent of experts. It’s not a casual exercise. Even when the process has been carefully executed, owners of start-up brands can run into unforeseen legal trouble from larger competitors who may use trademark law as a means to deter competitive threats to their business.

Trademark registration is not a routine matter.

Such was the case for a start-up snack food brand whose owners thought was a routine move to register the trademark of their hot new product — a flat pretzel snack called “Pretzel Crisps” — and it was contested by none other than Frito-Lay, the 800-pound gorilla of the snack food market owned by PepsiCo.

According to its filings with the Patent and Trademark Office, Frito-Lay contends that Pretzel Crisps cannot be registered as a trademark because it is a generic term. “Like ‘milk chocolate bar,’ the combination of ‘pretzel’ and ‘crisp’ gains no meaning as a phrase over and above the generic meaning of its constituent terms,” the company wrote in a 2010 motion. You can read the full story here.

Pretzel Crisp Product Packaging

With so much at stake in a crowded marketplace, brand owners are much more likely to fight over trademark rights to names. For example, Apple, Microsoft, and Amazon are embroiled in a dispute over the term “app store,” for software applications, which Apple moved to a trademark in 2008.

The legal question seems to hinge what types of names are more “ownable” than others. In the case of the snack food “Pretzel Chips”, this is a descriptive name. On the other extreme, a name like “Fandango” is more evocative. Descriptive names have obvious connotations and benefits because consumers more easily connect the meaning of the brand name to the product’s physical attribute. Consequently, descriptive names can be favored over more evocative names whose meaning must be developed in media and marketing communications over time.

The legal question remains– can descriptive names be distinctively unique and ownable under current trademark law?

It’s this question that sometimes gets overlooked by new brand owners in the process of naming their new product. This is a grey area and can be left to fuzzy legal interpretation. Of course, it’s far better to hedge this risk very early in the naming process by completing a comprehensive legal scan of early naming candidates by a skilled trademark / intellectual property attorney.