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law when branding

Why you shouldn’t overlook the law when branding

December 6, 2012

A lack of attention to the legal side of branding has been the cause of unnecessary setbacks for too many businesses.

There are a large number of trademark infringement lawsuits and the high-profile ones which get into the news are just the tip of the iceberg. One which was reported recently concerned Lord Alan Sugar’s new venture YouView. The company’s trademark has been denied due to its similarity to Total’s Your View mark, which was already registered in the same category.

Whilst YouView has been reported to have ‘no intention of changing its name’, the trouble the company has got itself into really demonstrates the need to ensure that a name is suitable from a legal perspective before it’s chosen. Even within the branding industry, it’s not generally appreciated that you need to first make sure a name is legally available before you go on to base your brand around it.

Trademark infringement lawsuits can have disastrous consequences for businesses. Take the case of Scrabulous. You may remember Scrabulous as a Scrabble-like game available to play in 2007 as a Facebook application. The app allowed people to play the game online- with friends, family or anybody in the world- and quickly became very popular with hundreds of thousands of users playing every day.

However, the brothers hit trouble when Hasbro, the owner of the Scrabble trademark, contacted Facebook and shut down the game on the basis of trademark infringement.

Had Scrabulous’s creators sought legal advice before settling on a name for their game, they would have realised that trademark law prevented them from using a similar name to Scrabble. In fact the founders had even applied to register a trademark for the name, demonstrating their lack of awareness of the broad scope of protection trademarks afford.

Despite the fact that Scrabulous has now returned to Facebook under the name Wordscraper, it lost its position as the first app to offer a scrabble like game on Facebook. This paved the way for other apps to enter the market, and Zynga’s highly successful ‘Words with Friends’ app is now the market leader.

Scrabulous had already gone viral when they were shut down. Who knows how big Scrabulous might have been today had they opted for a more suitable name.

The lesson to learn from the Scrabulous experience is that no matter how perfect you think a name is for you, it’s only perfect if it’s legally available. That is the way to build a business on solid foundations and avoid the wasted time, money and heartache of trademark infringement .

Scrabulous is just a high-profile example of what happens to too many businesses. It is a simple mistake which can easily be avoided by understanding the right order in which to do things when looking to brand a new business, service, or product. The legal aspect of creating a brand is too often left till last, after a website has been created and a logo has been designed, by which time it is either too late, or people bury their heads in the sand because they’ve invested too much in a name.

If your company has a brand name, or a name for a new product, that has not been legally checked out or you have any questions, why not submit an enquiry to find out how we can help you?