About nine years ago, I and two others started up a historical map publishing company. One of the many necessary tasks was coming up with a name and we eventually chose ‘Timeline’. We did some patent-office searches – without the assistance of an expert – which seemed to indicate no problem. We registered the company and started producing maps, 32,000 of them in fact. All went well until about six months later we got a phone call.
The phone call was from a company which had obtained a trademark in the name ‘Timeline Maps’ a few months before. God alone knows how we missed them. Their and our activities, products and markets were too similar for them to allow this to pass unchallenged. Flustered and annoyed, we agreed to a six-month period of grace for the situation to be remedied.
It was an ugly moment. The other company was quite within its rights and we bore no ill will. It left us with another chore, however, for as well as continuing to extend our planned national mapping coverage, we also had to to re-brand and reprint the ones we had already produced and pulp any original ones we could not sell within the agreed period.
In one way this did us a big favour. Close examination of the maps so far produced revealed errors in the design, copy, naming and branding that thirty-odd combined years in publishing should never have allowed to happen. We had spent our creative energies on a genuinely difficult task, that of scanning, combining and re-projecting hundreds of original sheets. Everything else seemed easy and unimportant. We were wrong. A proper cover design, sensible series names and more appropriate text were all demanded. And, of course, a new company name.
This did not prove so easy. Each option was at first brilliant, but a few moments later seemed awful. Everything obvious appeared trite or else had been done before. Everything unobvious seemed pretentious or forgettable. Tempers frayed; inspiration failed; corporate confidence waned. If we couldn’t think of what we’re going to call ourselves, what chance did we have? Naming a baby is by comparison a far less onerous task.
Look at the choices. Something that unambiguously says what one does, such as ‘The Historical Map Company’, has advantages but generally lacks snap. The assertive ‘John Smith Mapping’ is another option, but presents problems when there are several partners with equal shares and different names. Words or phrases unconnected with the products (Apple, Next and Tesco spring to mind – whatever happened to them?) seem great ten years on if all has gone well but at the time need a big leap of faith. Finally, and most desperately, there’s the temptation of some nonsense name like Consignia which, with neither product nor proprietor nor pronounceability on its side, is courting failure before the ink’s dry on the business cards.
So we had another think to narrow it down. We knew we were going to sell our maps to retailers and that we would have a website. Both considerations suggested a short, distinctive name that was easy to spell. A connection with maps and with history was important; a whiff of the exotic would do no harm. Above all, we had to be aware of what was already being used. Re-naming a company once due to a trademark confusion might be a misfortune; having to do so it twice – well, you often never get to hear about the third name, put it like that. We had to get it right this time.
So, we hit upon Cassini, the name of an extraordinary dynasty of Franco-Italian cartographers, astronomers and general all-round renaissance men in the 18th and 19th centuries. We’re happy with it. You have to admit it’s short and easy to spell. The only possible challenger was the spacecraft of that name: but as that’s currently orbiting Saturn there seems little risk either of an imminent lawsuit nor of any possible confusion between what we each do. If we start doing historical maps of Saturn that may change, of course.
This tale illustrates two useful commercial points. The first is that if you’re planning to produce anything, particularly if a series or several series are envisaged, think very, very carefully about every detail and how future variations will work before pressing the button. The second is that there are some things that you can do yourself and others where specialist advice is a very good idea. Patents and trademarks fit into the latter category.
Round about the same time, Penny was starting to send occasional, and un-named, newsletters to the members of the recently-formed Valley Film Society. Increasingly these spread to other people in the area as a result of requests for promoting a jumble sale, helping find a lost cat or asking if anyone knew a reliable plumber. It’s since grown into the regular newsletter and frequently updated website that you’re using today. The name ‘Penny Post’ didn’t occur to her for some years. When it did, it seemed so blindingly obvious that it was as if it had always been there. Penny is, after all, her name, and she posted things, at first to people by email and later by adding articles to the website.
When things grow slowly and organically, as Penny Post did, a number of things can remain informal for longer than is prudent. One is the legal status which, once the enterprise has acquired a life of its own, needs to become corporate rather than sole-trader. Another – closely associated in my mind with this as a result of the Timeline/Cassini debacle – was safeguarding the name. Changing the name of new business from one reasonably random name to another is irritating but do-able. We both felt that having to change the name of ‘Penny Post’ would be more serious: no reprinting costs but a far greater loss of – I think this is the right phrase – brand awareness which had been carefully built up over the best part of ten years.
Twenty seconds research on the web proved something we knew already, that the name ‘Penny Post’ tripped so well off the tongue because it was the name of the world’s first formalised and one-price postal service, launched in London during the reign of Charles II. A bit more research revealed that the Royal Mail owned the trademark and used it to sell a range of heritage stamp-related products.
For a few months we tried to convince ourselves that if we kept our heads down everything would be OK. It’s my name, after all, Penny said. I countered this with a story I’d read years ago and which was probably true of Harrods’ lawyers forcing a hardware shop run by a Mr Harrod in the middle of New South Wales to change its name. Just having something on a birth certificate clearly wasn’t going to be a defence. But where, I asked myself, would it end? I was dimly aware that superstars registered their own names in some fashion. Were there people called Tom Cruise or Cristiano Ronaldo who at that moment were being issued with a summons just for introducing themselves to someone at a party? What else could celebrities or large corporations register and force us to pay for using? Colours? Prime numbers? Adjectives? Days of the week?
All this libertarian speculation wasn’t really getting us anywhere so we decided to enlist the help of a specialist trademark lawyer, Dale Campbell of Trademark Tribe. She explained the issues, costs and risks involved in either acting or refraining from acting in this matter – already, the legal jargon is starting to find its way into my syntax. With her help we filed our trademark application. She told us that Royal Mail would object, that we would have to make some compromises but that given our very different areas of operation we should be able to reach a co-existence agreement with them: rather like lions and leopards living in the same bit of the savannah agreeing that one will go after the zebras and the other the antelopes (vegetarian analogies also available).
Everything panned out exactly as she predicted.
The first response from Royal Mail’s lawyers wasn’t superficially encouraging. It was full of phrases like ‘notwithstanding’, ‘without prejudice’ and ‘with immediate effect’ and created the sensation that I was either back at school or under arrest, or perhaps both.
It’s a common and regrettable aspect of human nature is that a proposition that seems utterly unacceptable – for example, someone else wants you to do something that you don’t – suddenly appears reasonable and natural when the relationships are reversed. Dale was able to explain how Royal Mail’s position was to be expected and what areas of their objection left room for discussion. Their letter was motivated by the understandable desire to protect their own position rather than (as it could have been all to easy to conclude) trying to screw us up out of pure malice.
Legal communications tend to have this effect on me so it was good to have someone to analyse the situation dispassionately. Corporate lawyers are, or ought to be, like good security guards: zealous when stopping someone breaking into their client’s property but with no interest and certainly no instructions to break into anyone else’s. There are exceptions, of course, certainly with security guards: those who did the night duty at a certain West London exhibition centre (being unsure of the laws of libel I’m unwilling to be any more specific but the name sounds like ‘girls sport’) in the 80s and 90s routinely used to steal anything that hadn’t been screwed down (and you weren’t allowed to screw anything down).
Thanks to Dale, within a week we had arrived at a satisfactory compromise. In essence, as long as we don’t try to sell philatelic memorabilia we’re pretty much OK as we are. So, if you see anything in Penny Post in which we seem to be passing ourselves off as stamp collectors, shop us to your local postman. And if you hear of another community newsletter calling itself Penny Post, shop them to us. After all, it’s a good name and now it’s ours. I mean, would you subscribe to or advertise in or take any pleasure from something called Locke’s Letter or Brian’s Blog? Exactly. Neither would I.