A few months ago, Vivek Jayaram, a trademark attorney who runs Jayaram, one of the only law firms I’ve ever encountered with a meaningful brand identity, dropped a piece in his Substack, The Innovator ®, called Why Your Trademark Portfolio Is Probably Overgrown — and Underpowered.
It kinda stopped me in my tracks. This was the first thing I’d ever read (written by a lawyer no less) that so squarely illuminated the tie between naming architecture and legal strategy.
Vivek’s premise is: most trademark portfolios reflect the history of the company, not the strategy of the company.
He purports that the portfolio you have is the cumulative residue of a thousand reasonable decisions made in isolation. Marks get filed when a product launches, and then when brand gets really excited about a tagline, and then where brands start to expand globally, etc, etc.
He sums that all up in a way that could apply to so much of naming, too:
“None of that is wrong. It just isn’t exactly a strategy.”
Picture how this usually goes:
Brand has been working on a new product for months.
They’ve narrowed it down to three names they love. Maybe they did a knockout search, maybe they didn’t. Maybe they Googled them, maybe they didn’t.
They send the list to legal.
Legal runs a search.
Legal sends back a verdict: yes / no / it’s complicated.
Brand reacts. Either the favorite cleared (woo!) or it didn’t (Shit! [scramble] Will Linda sign off on Name #2, or are we abandoning all three and starting over with the launch in six weeks?!).
Brand puts out the fire.
Brand and legal part ways. Until the next product.
Repeat. Repeat. Repeat.
For years.
This is how you get a portfolio that reflects a series of reactive decisions, not a cohesive brand strategy rooted in business objectives.
Not because anyone made a bad decision — but because nobody was ever in the room asking, “Where does this mark fit in the bigger picture? Which ones are actually worth fighting for to communicate what we want over time? What are we collectively trying to build?”
If names were not subject to trademark law we’d live in a very different world. I probably wouldn’t have a job because naming would be so much easier.
But trademark is one of the most powerful constraints on the naming process.
And so if that constraint is treated in the workflow like a hurdle, it will be a hurdle. If that constraint is treated as something to co-navigate between expert partners with complimentary skillsets, a lot changes.
That framing is powerful and impacts the business.
Creating a cohesively named product portfolio happens through a working relationship between brand and legal that exists before any specific name is on the table.
There are many ways that brand and legal can strengthen their relationship, but I’ll be exploring three in this piece. One way through the lens of recent client work and two other ways through conversations with trademark lawyers on either side of the aisle (law firm and in-house counsel): Vivek Jayaram of Jayaram and the award-winning Irina Lyapis, Director - Trademark and Brand at Atlassian.
Last year, we partnered with one of the top QSRs in the country to help them redesign their naming process. Rated as the most efficient QSR, it only made sense that they’d look at their brand building process this way, too.
During our research phase, we identified, essentially, the “default mode” as outlined above. Brand would generate lots of names and submit often, 20+ to legal to screen.
Overwhelmed by this number, legal would have to rush and prioritize to make broad decisions.
In addition to trademark availability, because of their industry, this brand also has to be cognizant of Truth in Advertising standards. So sometimes, even after clearing a name for trademark, they’d run into issues late in the game around specific words they could/couldn’t use.
For instance, “pure maple syrup” is a federally protected term — by law, nothing but maple can be in the bottle. So if you’re serving anything but pure juice squirted from a maple tree, you’ve got to call it something else.
To solve for both of these issues we designed specific workflows based on name type (legal standards differ for descriptive vs suggestive names) that involved earlier and more frequent check-points between brand and legal. During these checkpoints, legal can outline key watchouts, examine ingredient lists for products to be named, and advise on the trademark landscape prior to name generation even beginning.
As their ongoing naming partner we also only present names that have passed a knockout trademark screen, so that by the time brand managers are submitting shortlists of names to their legal department, they have at least been scrutinized at a high level.
These small checkpoints and extra bits of due diligence may feel like more of a commitment but compared to time/despair spent putting out frequent fires that erupted without them (extra resources spent on rush trademark searches, extra rounds of creative, hours spent in extra meetings with execs, unpredictable timelines), it’s no time at all.
Over the time I’ve been doing this, I’ve met a lot of trademark attorneys. Some of them I hire, some I refer work to, some are incredible mentors, some are collaborators, some are a mix. Irina Lyapis fits in the “incredible mentor” and “collaborator” category. She spoke on a State of the Trademark panel at last year’s Business of Naming conference (tickets on sale now for this year’s!) and has been a great source of advice and wisdom even in the short time I’ve known her. When I set out to write this piece, it only made sense to interview her.
Topline from that convo: Magic happens when things go from verdicts to conversations.
Irina has this taxonomy I keep going back to. When a brand team asks her, “is this name cleared?”, she pushes back on the question itself:
“What does it mean to be cleared? Is it cleared for registration? Is it cleared for use? Is it cleared plus some kind of modification?”
Three different answers with each one unlocking a different brand move.
Brand teams who hear “not cleared” as a single binary verdict are losing two-thirds of the available moves. Because what Irina is actually offering, when there’s an opportunity to talk, when there’s enough trust and collaboration in the room, is a menu of adaptations:
Narrow the identification of goods and services. You can register a mark for fewer use cases than the maximalist version, and that often opens space.
Specifically exclude certain categories. Build a fence around existing third-party rights.
Add a housemark. Atlassian Abigail might fly where Abigail alone won’t.
Add a design feature. Visual elements can unlock space that wordmarks can’t.
This is what “shared vocabulary” actually means. It’s not a glossary. It’s a working understanding that “cleared” is a spectrum, not a switch and that there are usually three or four moves available between “yes” and “abandon the name.”
And the texture of the relationship has to go both ways. Irina actively manages around her own bias toward helping brand:
“If a brand really wants something, I will find a way to get it done. Either don’t register it, tweak it a little bit, do something. But I’m not always sure that that’s necessarily the best thing for the company.”
She is so aware of this pull that she explicitly asks brand teams not to tell her which name they prefer when she’s clearing a set of finalists:
“My preference is for the brand folks to not tell me which one they like the best. Because that serves a little bit as an anchoring effect. I may try to oversell or overpromise the ability to clear a mark because I know the company really wants it.”
YES! That is a damn good lawyer and teammate right there. She knows her own bias and actively builds guardrails against them so brand can make a clear-eyed decision.
That is what brand-and-legal-as-friends looks like in the wild. Close enough to bend; structured enough not to break.
When brand and legal work this way over time, they don’t just produce better individual naming decisions. They produce artifacts. Tools. Smartsheets. Processes. Things that scale the relationship beyond any single moment.
My favorite one, which I’d never seen before Vivek described it to me, is the enforcement heat map.
Here’s how it works. Say you have a two-word trademark.
You build a grid.
The axes are: which part of the mark is being used (one word, or both), and what category or context the unauthorized use is appearing in.
The cells of the grid map to specific responses — send the standard C&D, monitor, do nothing, call us before doing anything.
The brand or brand protection team holds this thing. They use it day-to-day.
In Vivek’s words:
“When they’re out there in the world, monitoring the brand, they’ll be like, ‘Okay, I just got fed an ad on Instagram that uses one of the words but not two — what should we do?’ The internal heat map is nice for the brand marketing and legal teams because they could be like, ‘Alright, on this one, let’s send our standard C&D. On this one, let’s not do anything…”
Three things, to break it down:
This is “tolerance bands.” Codified, written down, operational.
It only exists because brand and legal built it together. Legal contributed the risk profile of each scenario. Brand contributed where they’re vulnerable and where they genuinely don’t care. Neither team could have built this alone. The cells require both perspectives.
It scales the relationship. Once the heat map exists, brand operates with embedded legal judgment instead of paging the attorney for every ambiguous Instagram ad. The lawyer’s time gets protected (hey, budget!) and their expertise gets baked into brand’s daily workflow.
The heat map is, fundamentally, an organizational design artifact in legal clothing. It’s the relationship turned into a tool.
I think a lot of people take comfort in the fantasy that all law is incredibly black and white. But like so many things in life, trademark law is grayer than most people want it to be.
The takeaway that I hope to leave you with is: that grayness is a liability when brand and legal are strangers. Every gray decision becomes a fight over a black-or-white question that doesn’t have a black-or-white answer. Brand pushes. Legal shoots down. Repeat. Repeat. Repeat.
That same grayness is an asset when brand and legal are pals. Every gray decision becomes a creative collaboration: Hey, can we chat to figure out how to make a good name happen here? What would we have to change? Where’s the strategic move?
Same law. Same facts. Very different outcomes.
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