Navigating The Business And Product Name Maze

Naming is hard. Ask any parent. Identifying a new business or product can be just as difficult, plus there is a cluster of important legal requirements and limits. There is a huge body of knowledge about impactful and effective names (did you know the letters "K" and "X" are especially powerful in product names?) but we will leave that to branding experts. Let's cover a few things you must consider from a legal perspective when naming your new baby, er, venture.

The first step is to ensure you are not infringing any existing names. This begins with searches at the Canadian Trademarks Database, as well as corporate registries in appropriate jurisdictions.

That itself raises some questions. What is the difference between a trademark and a trade name? They are different, but for these purposes we can look at trademarks as protecting products – a good or service. A trade name or business name, on the other hand, typically applies to the overall identifier an enterprise uses, which in turn may offer multiple products of similar or different names. An example would be Meta, the company which owns services like Facebook, Instagram and WhatsApp. Meta is the trade name (actually part of the corporate name Meta Platforms, Inc., but we will lump them together for this discussion). Facebook, Instagram and WhatsApp are all individual products, and usually rest on trademark protection.

We will not spend time on the differences because we need to search both categories. A trade name similarity could block a trademark, and vice versa. Searching both will alert you to potential conflicts early. You should rely on your lawyer to search the appropriate places.

One thing your lawyer or trademark agent will want to know is how widely exposed your name will be. If it will be connected to a restaurant in your town and you know it will never expand to other regions, you may be able to get away with a trademark search (which is always national) and a business name search in your own province's corporate registry. Your lawyer may recommend a wider search, however, at least covering all Canadian provinces and territories, just to get a sense of potential conflicts. Your expansion plans may change, after all. Since so much of trademark and business name priority depends on who used it first, it is always valuable to know if there is someone who could potentially block you, even if you are at opposite ends of the country. It also is not that expensive to search multiple jurisdictions, especially when compared to the cost of an infringement.

Corporate and trademark registries are formal databases, which are relatively easy to search. More complicated, but often necessary, is a so-called "common law" search. This is aimed at uncovering names which are in use, but are not necessarily recorded in government registries.

Common law searches are more difficult because there is no one single place to investigate. Your lawyer or trademark agent likely has experience searching business directories, news articles, phone records and other sources which can tease out names that may be in conflict. Still, some similarities may not show up. The more information you can provide based on your knowledge of the industry and potential competitors will help.

The goal of these searches is to identify any parties with a competing claim to the words you are wanting to use, or at least pose enough of a risk that you will want to avoid. Again, we are doing this before a product or business launch (hopefully) to avoid rebranding costs later. Sometimes you find a direct conflict: the exact same name of a product has already been trademarked, for example. You may not be happy that you must come up with a new name, but it is far better to learn this now rather than months or years down the road when you need to abandon your brand equity and incur costs developing a new one.

More often there is a weaker conflict. The words might be similar but not identical. Or they cover different products or businesses. Or the prior use is limited to a small region far from yours where confusion is unlikely. Depending on the conflict, and your risk tolerance, your lawyer can advise you on alternatives.

And of course, you may be looking at selling outside of Canada, especially with an online business that automatically brings worldwide exposure. It is usually cost-prohibitive to search every country, so international offerings may need a prioritized search strategy, depending on the product and markets. From Canada this usually involves at least a US search, but EU and the UK are also common targets. This will add to costs, naturally.

In addition to conflicts, your name must comply with restrictions contained in legislation. Also, these restrictions will differ from country to country. On the business name side, this is reasonably flexible, but there are some rules. For example, Saskatchewan is like many jurisdictions where a business name must contain at least a descriptive element and a distinctive element. The name "Ciao-der Manufacturing" uses "Ciao-der" as the distinctive element and the business description is "manufacturing." Beyond that, and subject to some rules around misrepresentation or obscenity, business names have a lot of flexibility. For a more complete list of naming guidelines in Saskatchewan, Information Services Corporation has published a guide: https://www.isc.ca/CorporateRegistry/RegisteringaBusiness/SearchandReserveaBusinessName/ChoosingabusinessName/Pages/Name-Rules-for-All-Entity-Types.aspx

There are additional rules when registering a trademark in Canada. This is only a partial list of names which are prohibited under The Trademarks Act:

• Various marks associated with or evocative of the Royal Family or the Crown
• Canadian, provincial or international flags
• The Red Cross or Red Crescent
• Scandalous, obscene or immoral words
• Any matter which may falsely suggest a connection with any living individual
• The portrait or signature of anyone living or who has died in the last 30 years
• Words that are merely or primarily the name or surname of individuals who are alive or have died in the past 30 years
• The words "United Nations" and various symbols used by the UN
• University, public authority, or national defense badges, crests and emblems
• RCMP related images and words
• Geographical indicia for products like wine and food
• Terms which are clearly descriptive of the product
• Terms which are deceptively misdescriptive of the product
• Generic names (for example, one could not trademark the word "refrigerator")

There are other restrictions, but this is a good start. If your proposed trademark runs afoul or close to any of these restrictions, you must investigate further to avoid a rejected application later.

The third consideration you should think about from a legal perspective is only loosely legal. It relates to the SEO friendliness of your name.

SEO, short for search engine optimization, is crucial for any business in the internet arena. It refers to how easy or hard it is for users to find your name or product when searching the billions of items available online. All else being equal, the more unique a name or word, the better it is for SEO. Consider how many more irrelevant hits you would get on a search engine query for "City Cycle" compared to "Cycletrix". There are other considerations for effective branding, obviously, but attention should be paid to distinctiveness to help stand apart from competitors in the virtual world.

We say this is only tangentially legal because it is far more dependent on good branding practices. But there are still legal considerations. For example, simply adding a letter or letters to an existing brand to suggest a connection, but still be distinctive for a web search, will invite a dispute. Do not expect "HondaYXE" to withstand an infringement action from Honda, even without considering the fact they probably have far more resources than you to assert priority. Like other points in this article, your lawyer and agent can identify potential issues.

As we said at the beginning, there is much more to branding than the legal rules. But the laws are important, and we have seen many clients fall in love with a name, adopt it and spend big money developing a brand, only to discover they have walked into an infringement against a powerful opponent. Sometimes those costs of rebranding are manageable, but they can contribute to the demise of the new entity. Our team has experience with these issues and we are always available to discuss and help develop your naming strategy. Contact Procido if you need legal advice on naming your new venture.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.