Naming Your Perfume

What would you do if, just as you were about to launch a perfume, you discovered that someone else held rights to your name?

It happens. After the successful launch of Sean John's "Unforgivable" it was revealed that trademark registration for "Unforgivable" had been denied. It was too close to a name owned by another company. A special arrangement had to be made. This cost some money.

When Calvin Klein was about to launch "Obsession" it was discovered that the name was owned by someone else. Money was paid to acquire the name. It was an unexpected expense.

These are just two examples of companies with big plans being forced to negotiate rights to perfume names they wanted but were already owned by someone else.

Before you settle on a name for a new perfume it is wise to do at least some limited research to avoid selecting a name already in use by someone else.

Two Tests For A Perfume Name

A perfume name should meet two tests. The lawyers will insist that the name be "available," that is not owned by someone else. Marketers look for a name that will help sell the perfume. In naming your perfume you are confronted with both technical and creative challenges.

Is the name of your perfume that important?

A good name is always helpful. But a brilliantly original, blockbuster name is not so easy to develop. And, if your brand is established and you have a loyal following, obsessing over a name may not be worth your while, especially if it distracts you from presenting your new perfume to customers who are already eager to try it.

In this situation you might simply go with a name that is not in current use — as indicated by a simple Google search for a perfume with that name. You'll find that you have lots of possibilities with little chance of conflict with a trademark owner.

On the other hand, if you expect to sell your fragrance aggressively and perhaps advertise regionally or nationally, the name you give it becomes more important.

How do you find a really good name for your perfume?

Perfumer Constantin Weriguine lists five factors in selecting a name for a perfume.

  1. The name should not, by accident, be offensive anywhere in the world where the perfume will be sold.
  2. The name should be simple, short, and easy to pronounce, even by people who don't speak your language.
  3. The name must appeal to the class of customer for whom the perfume is intended.
  4. The name should suggest the personality of the perfume.
  5. The name and the perfume (scent) should go together.

If the name of your fragrance "fits" the advertising and the scent harmonizes with the name and advertising, you have an ideal marketing situation.

How to develop a good name for your perfume

When large companies develop a new fragrance, they start with pen and paper trying to describe what they want their new perfume to be and how they intend to promote it. You would do well to approach your perfume and the naming process in the same way.

Look for a story — a story that can be told in your advertising, a story that is repeated in the name of the perfume and suggested its scent.

Then a personal sampling your perfume will say, "Yes, that is the story!"

This is not easy to achieve. First comes the story, the fantasy that inspires the perfume — a picture, a place, a famous person, an event, an emotion — the more universal the better.

Most fragrances launched by large companies today do not have much of a story behind them. Often the only "story" is the celebrity who declares that it is his or her "signature" scent.

But, for a small company or independent perfumer, each fragrance you create and launch is too important to allow this carelessness. So the starting point in developing both your perfume and its name — and it's packaging, whether simple or complex — is a story, a tale in words or in pictures or both that your fragrance will illustrate.

Mind Maps

One technique for developing a story is the "mind map." In a sense it is a story one a single piece of paper and all you need is a piece of paper, a pen or pencil (or crayon) and your imagination.

The starting point is, as suggested above, a picture, a place, a person, an event, an emotion, a song.

At the center of your paper, write or draw the central theme — the heart of the story you will express through your perfume.

This may not be easy for your. It might not come right away. It might not come in a day or even a week. But if it doesn't come it should be a warning to you that you don't yet have a story to tell with your fragrance. If you decide to go ahead without developing a story you risk being stumped when, after naming and bottling your fragrance, you can only think of weak lines to sell it.

After developing your name and story you must now create a perfume that repeats the story through its scent.

Trademark protection for your name

It is important to understand that a trademark is a "mark" — an identifier — that is used on "goods in commerce" to show their origin.

A trademark comes into existence by use — by putting the mark on an item and placing that item into the "stream of commerce." In the case of a perfume, the NAME of the fragrance is it's mark and it becomes a legal trademark when the perfume is offered for sale. Registration is NOT required.

Creating a trademark is simplicity in itself. You make up a name, put it on your perfume, and go out and sell it. A problem arises only when someone else uses, or wants to use, the same or a similar mark for a similar "class of goods," in this case, goods associated with perfume. At this point to defend your mark legal action will be required. This can be costly and the outcome may depend on circumstances that were unknown to you when you first made use of your mark.

At this point too, with a lawyer, you will be told that had you REGISTERED your trademark, you would now be standing on firmer ground. In the United States a trademark can be registered with the Patent and Trademark Office. You do not need a lawyer to file a trademark application. Some states also register trademarks. These too can generally be filed without the assistance of a lawyer. But before making the decision to file for a trademark registration it is worth considering the value and the risks of the protection that might be gained.

Before filing an application to register a trademark it is important to do a "search" in an attempt to determine whether anyone else is using a similar or identical mark for an identical or similar "class of goods." And here the uncertainties begin.

There is no single search you can do, no single database you can query, that can guarantee that your name is clear. The Patent and Trademark Office offers a free, online, search service through its TESS (Trademark Electronic Search Service) that can help you uncover conflicts with federally registered marks but TESS will not uncover conflicts with state registered or common law trademarks — marks that have gained legal protection through "use" but have never been registered.

Professional trademark search services are generally used to uncover conflicting trademarks both within the TESS system and elsewhere. These services are generally linked to an attorney's service because information the search service produces is best interpreted by an attorney who is an expert in trademark law. You pay for these services and yet even if no conflict is discovered, there is no guarantee that your perfume name is not already being used by somebody else.

Filing for a federal trademark registration is a fairly straightforward procedure and you can do it yourself. Should your registration fail, you do not get your money back. This is the same whether you submit the registration yourself or whether an attorney handles the matter.

If all goes well your registration will be granted in about 12 to 18 months. Assuming all has gone well and you have received your registration, let's look at what rights you have gained.

The first "right" you have gained is the right to renew your trademark which requires periodic additional filings with the Patent and Trademark Office (TPO). You receive no reminders of the required filing dates. If you miss a date, you lose your trademark registration. However, you do not lose your common law rights to your name.

The second "right" you have is the right to defend your trademark against others who might try to use the same or a similar mark. This will require that YOU spot the offender and take legal action. Victory is not necessarily yours even if you have received a registration. Your adversary can petition the TPO to CANCEL your registration. Depending on your use of the mark, either you or your adversary might prevail. Either way the fight will cost you money and, even if you win, you are unlikely to get the money back.

On the positive side you can use your trademark to block entry into the United States of goods that infringe on your mark. The enforcement (and expense) will be up to you and your legal team. You do, as a trademark holder, have the right to sue for damages and legal costs when you uncover a situation in which your trademark has been infringed. Again, while you might be money ahead in the long run, the fight will require that money be laid out, either by yourself or an attorney working for you on a contingency agreement (no victory, no pay) but even here you might be asked to front certain filing fees.

If you take a practical approach to trademarks, you'll consider the value of the mark you wish to protect BEFORE you decide to apply for a registration. If you expect to make good sales with your perfume, a registration makes sense, particularly if your trademark attorney advises you that you have a "strong" registration, one that is unlikely to canceled if attacked.

If you have indeed created a unique trademark (name) for your fragrance and are successful in selling your fragrance, you will have a valuable property that may very well be worth registering. Once you are out there with your fragrance, if a large company suddenly gets a bug to use the same or a similar name for a perfume, they may be denied registration and, since they are looking for protection too, may wish to strike a deal with you to either buy your mark or negotiate (for money) the privilege of using the same or a similar mark.

In short, while you do gain common law rights simply by using a mark, and while you can submit a registration without a lawyer, if you feel that you have a serious trademark for a perfume that you will be backing with serious dollars, it makes sense to consult with a qualified trademark attorney before risking your money.

Strong Trademarks and Weak Trademarks

When selecting a name for your perfume you might have to strike some balance between a good name for your perfume and a name that can gain greater trademark protection.

Not all names gain the same level of protection. There is a "strength" hierarchy ranging from "fanciful" names (generally having the strongest protection) to "generic" names (generally having no protection). Quite likely you will strike a balance between a name that is unusual or unique or a word name that has been invented by you — and a name that will sell.

It can be useful to review the host of prescription medicines on the market and notice how, while their names are not words from the English language, for some the spelling and pronunciation can be suggestive of the cures they propose.

A Practical Strategy

As a minimum, to gain rights to the name of the perfume you have developed, you must produce the perfume and offer it for sale. By taking these two steps you gain what is known as common law trademark protection for your name.

Once you have created your perfume, offered it for sale, and thus established your right to the name, that name can be used for a totally different perfume and you still own your rights to the name.

This is important because it gives your name value beyond the first perfume you use it on. If people don't like your perfume or your bottle, you can change to another fragrance or another bottle and your name is still protected. Even more important, if a company or someone else approaches you and wants to pay you for the name you have created, they can buy your name from you without being locked into using your bottle and fragrance. In short, you can produce a few dozen bottles of a fragrance, offer them for sale on eBay, and by doing this establish at least a minimal legal right to the name you have developed. It's as simple as that.

The limits of a good name

A name by itself cannot sell perfume. It can only support a well planned marketing program. Before you develop a perfume, give some thought to how you are going to sell it.

References


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Philip Goutell
Lightyears, Inc.


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