Does creative spelling make a name more protectable?

Short answer: No.

Slightly longer answer: Sometimes there are good reasons to alter the spelling of a name, but trademark protection is never one of them.

This persistent myth—“If we misspell the name we can get the trademark”—resurfaced this week amid the fuss over Netflix’s newly announced movies-by-mail service, Qwikster. (If you managed to miss the kerfuffle, read my post about it.) An MBA student tweeted that the kree8tive spelling of Qwikster made the name “trademarkable.” (I hope she wasn’t taught this in a marketing class.) And yesterday Brand New, the influential corporate-design blog, had this to say about Qwikster:

A silly name with such a ridiculous spelling that it makes Syfy and Cloo look like the authors of the Merriam-Webster dictionary. Sure, it’s probably a breeze to trademark it but so would be Peenoz, that doesn’t mean it should be chosen.

(Emphasis added.)

Sorry, they’re both wrong.

 

Here’s a common-sense test: Let’s say I started my own streaming-movie service and decided to name it “NettFlicks.” Creative spelling! Available domain! Hurrah!

So what are the chances the U.S. Patent and Trademark Office will allow me to register that mark?

Correct answer: Zero.

You can’t register Kokka-Kolla as a soft-drink trademark. You can’t register Guugol for a search engine. You can’t register Dizznee for an entertainment company.

Oh, sure, for $7.49 a year you may be able to register those domains. But domain availability and trademark availability are completely different matters.

A domain must be unique—and, yes, altering the spelling may get you a cheap domain. But a trademark follows a different standard: it need not be unique, but it must be distinctive. (And it should not be descriptive.) An important test of a viable trademark is likelihood of confusion, and one factor in determining confusion is “whether the marks are similar in appearance, phonetic sound, or meaning.” (Emphasis added.) Owning a creatively spelled domain won’t score you any points with the USPTO if the pronunciation of the name is too similar to that of a rival brand.

Consider the “Dove” trademark. It’s registered to Unilever for a brand of personal care products. It’s also registered to Mars, Inc., for a brand of chocolate confections. Both companies were able to register their marks—without resorting to weird spellings like Duvv—because it’s highly unlikely a consumer would ever confuse the two brands or their products. Of course, only one company, Unilver, owns Dove.com. Mars owns DoveChocolate.com.

Over the last 12 years or so, many companies have become so dazzled by domains—and so frazzled by their apparent scarcity—that they’ve lost sight of what’s really important: trademark protection. A “pure” domain name—whether it’s Dove.com or Qwikster.com—is never as important from a trademark and branding standpoint as legal ownership of your brand. You can buy a domain on the aftermarket, often for just a few hundred dollars. But defending a trademark-infringement suit will surely cost you many thousands of dollars in legal fees, and if you lose you’ll need not just a new name but also a new logo, website, and print collateral.

So go ahead and creatively misspell your company or product name if it will help with pronunciation or make your brand more memorable and distinctive. Just don’t do it out of the misguided notion that it will help you with trademark registration. It won’t.

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P.S. Netflix owns Qwikster.com but has not filed for trademark protection of Qwikster. What does that say about the company’s faith in the viability of the brand? UPDATE: Netflix did in fact file for trademark protection of Qwikster—on September 19, the same day CEO Reed Hastings announced the new service in his “explanation and some reflections.” (Thanks, commenter Michelle K.)

Comments

[Jessica]

I think you were listening in on our breakfast conversation this morning, wherein my daughters probed the likelihood of confusion between Dove soap and Dove chocolate!

Other than that? I couldn't have said it better myself!

[Laura Payne]

Trademarkable or not, my teenage son pointed out the fact that Netflix must not have done much research when choosing the name because it is the Twitter name of an account holder who likes to be associated with marijuana.

http://k2radio.com/netflix-may-have-to-pay-100000-for-qwikster-twitter-account/

[Nancy Friedman]

Laura: I wrote about (and quoted) @qwikster in my original post: http://bit.ly/qkMhGD

[Michelle K]

Nancy,
Thanks for the clarification. I learn a lot from your posts and tweets. I had SyFy in mind when I tweeted that purposeful misspelling is more trademarkable, but I now know that was a special case because of SciFi being a common term. The mistake was entirely my own. I agree with you that legal ownership of your brand is more important than just a domain name (and twitter account), but maybe Netflix knows this too and we were quick to judge. A quick search on USPTO.gov revealed that they filed for trademark protection earlier this week.