What’s In a Name

September 10, 2014 written by:

We often ask businesses about their top priority –  they immediately and consistently point to sales.  And, importantly, many of these companies already appreciate the key connection between sales and branding. However, this connection is not always well understood. Let’s look at some hits, misses, and happy endings.

 

When CVS Pharmacy rebrands itself to CVS Health, and the Halal Guys expand from a street cart to actual restaurant space and franchising, the brand, and the name, mean everything. Savvy businesses know to aggressively protect their brand – through trademark registration, monitoring their brands and trademarks online, launching protective lawsuits against potential copycats, and pursuing favorable licensing deals.

 

Take the Halal Guys as an example: they recently entered into a potentially lucrative franchising deal.  Notably, they also sued Halal Guys of New York for trademark infringement, and won. The win can certainly help ensure that customers were clear who they were buying their gyros from, potentially preventing brand confusion and subsequent lost sales. With the franchising deal recently inked, brand protection understandably became even more important.

 

For businesses where the founder’s name IS the brand, brand protection gets trickier, especially when the brand becomes widely known. Often an entity with deep pockets and an aggressive expansion strategy can be an important partner for emerging brands. But here’s where an emerging brand needs to consider the importance of its name even more carefully. Does the additional financing require you to assign, i.e., sell, and give up the rights in, your brand name? Would you still have a say in the disposition of your assets? Or is generating revenue through licensing the best route? A key difference between licensing your name and assigning your name is that licensing allows you to keep and even use your name in a different capacity after the deal is done. However, once you relinquish ownership of your name to a third party, you cannot use your name for a similar business – just ask Sigerson Morrison and Herve Leger.

 

One designer’s battle for her brand name has a happy ending:  Rachel Roy who sued the Jones Group in court for the right to her eponymous brands, received a preliminary injunction preventing the rights in her brands from being transferred until the matter was litigated. However, a new buyer emerged.  Topson Downs, which acquired a majority stake in Rachel Roy’s business, bought out Jones Group’s stake, and has permitted Rachel Roy to maintain complete control of her brand names. Cases like these exemplify the importance of brand identity and ownership in a company’s success.

 

Last, but not certainly not least – while it may be common sense to seek trademark protection for the brand name, logo, and even tag lines, in the tech space, products and services are not readily tangible. How about apps? Or software solutions? If your marketing team comes up with a name for an app, a software as service, cloud technology, and the like, these names can be protected as well.

 

Names can not only represent a brand’s essence, they can be a powerful generator of value for the company. Unlocking, protecting, and leveraging the value in these names should be part of every company’s growth strategy.

 

The Halal Guys Expand Rachel Roy vs. Jones Group part I

Rachel Roy vs. Jones Group part II

Racked’s List of 10 Designers Who Lost Rights in Their Names

The Washington Post:  When A Fashion Company Is Underwater, The Options Are Few

The Sigerson Morrison story

Tech and Trademarks

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