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March 25, 2007

The Naming Company Challenge

Smokin' Chicks restaurant signWhat is the most difficult part of naming a product or service for a naming company?

No, it’s not creating the name. It’s creating a name that is trademarkable. There are over 300,000 US trademark applications a year, but the typical college dictionary contains only 80,000 words.

Plus many international class codes, like the Technology one, contain thousands and thousands of brand name trademarks with hundreds added almost weekly.

In another international class code that includes restaurants, many do not bother to register their restaurant name, but under trademark law, have rights to the name. This is referred to as common law usage.

So I do not find it surprising that a restaurant in Hamburg, Michigan has found it difficult to trademark a restaurant name and incurred unnecessary legal expenses, and investment in signage, menus and website development:

  • The original restaurant name, Mother Cluckers, was considered distasteful by the landlord. I agree
  • So the owner, Gary Baja, changed the restaurant name to C. R. Smokin’ Chicken. You guessed it, a Florida restaurant by the name of C. R. Chicks sued.
  • Then the owner removed "C. R." from the name, but a trademark attorney for the Smokin’ Chix in Missouri advised Gary Baja that Smokin’ Chicken infringed on his client’s restaurant name.
  • The restaurant added ribs to the menu and renamed the the eatery Smokin’ Ribs and Chicken. You guessed it again. The US trademark office rejected the application as too close to the Smokin’ Chix restaurant in Missouri.

What lessons are learned from this restaurateur's experience:

  • Common law names are as protected as officially US registered names.
  • Descriptive names are hard to trademark and if trademarkable, someone has thought of it and registered it already.
  • Descriptive names can be quickly outgrown. With ribs added to the menu, calling the restaurant Smokin’ Chicken is too limiting. This is not unlike Boston Chicken changing their name to Boston Market after adding beef and other menu items.
  • It might be cheaper in the long run to have hired a naming company :)

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Posted by William Lozito at March 25, 2007 10:20 AM
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