[Patent Talk] Startup Naming Strategies and Trademark Rights

This is a column contributed by our patent attorney Taeyoung Lee to Etoday on August 19, 2021. It discusses naming strategies for company names and strategies for obtaining trademark rights.

[Patent Talk] Startup Naming Strategies and Trademark Rights

Many startup clients ask us to file a trademark application for their company name after they have already registered their business. In such cases, they often have to abandon the application because the name lacks distinctiveness or a similar earlier mark already exists. What makes it worse is that, having already registered the business, changing the company name is not easy either.

For example, one client operating a hospital registered under the name "빛고을병원 (Bitgoeul Hospital)" asked us to file a trademark application, but "빛고을 (Bitgoeul)" is a well-known geographical name, the native Korean name for Gwangju Metropolitan City, and therefore lacked distinctiveness and could not be registered. Because the client had already put up a sign and was running the hospital, it could not change the name, and so it abandoned the application.

Because a company name and the names of its goods or services can be different, some businesses succeed without trademark rights in the company name. For example, iriver was a very famous MP3 player brand, but few people remember the name of its manufacturer, ReignCom Ltd. In fact, a trademark application for the company name "ReignCom" was rejected, and only "iriver" was registered. Later, as iriver became famous, ReignCom changed its company name to iriver altogether.

On the other hand, a brand strategy in which the company name is widely used for goods or services is also common. Kakao pursues a unified brand strategy across the entire group by using service names and subsidiary names that share "Kakao," such as KakaoTalk, KakaoBank and Kakao Games. For "Kakao," "KakaoTalk," "KakaoBank" and the like, Kakao has all...

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