In my last post, I shared my high expectations that we would have a new name cleared through the legal process by now. In reality, our journey continues.
Renaming is an incredibly complex undertaking and I’m beginning to get a better sense of how long it takes to get a new name all the way through the legal process. Especially when seeking global clearance.
The new name, or “mark” in legal parlance, does not need to be identical to other marks for our registration to be blocked. When the mark is being assessed for usability by examining attorneys in the United States and European Union, the following are taken under consideration: sight, sound, meaning, and general description.
Interestingly, I’ve learned that the most significant grey area is around sound. Although names can be spelled much differently (sight), if the pronunciation is similar (sound), then the likelihood is high that the registration would be blocked.
The touchstone of blocking is whether confusion in the market is likely. If we have similar advertising and marketing channels—go to the same trade shows, sell to the same customer segments—this could lead to likelihood of confusion in the market. However, it’s not clear how deep examining attorneys will dig to understand this likelihood. We are being educated that many attorneys simply rely on the broad classification of goods and services.
This is where the real fun begins. There are the forty-five international classes into which trademark applications are classified. Our goods and services are registered under Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.
The emphasis is mine.
Class 42 is an crowded space. Our lawyers are educating me that it will be nearly impossible to find a name that doesn’t pose at least some risk to infringement and blocking. Because the tolerance for the level of risk we are willing to assume is much lower for the brand name of the company than it would be if we were naming a product line, the search continues.
I remain as excited as ever to rename the company and I appreciate all of your support and comments.
