A trademark fight just broke out involving the merger of BB&T Corp. and SunTrust Banks Inc., two banks with heavy footprints in central Virginia. Those banks announced June 12 that the new name and trademark for their merged financial institution will be Truist Bank.

Shortly afterward, Truliant Federal Credit Union sued BB&T and SunTrust for trademark infringement. Truliant contends Truist is confusingly similar to Truliant and other trademark phrases Truliant uses that are based on the word true including Truliances and Truism.

It’s a backyard brawl. BB&T and Truliant each are based in Winston-Salem, N.C., but the combined Truist Bank will be based in Charlotte, N.C.

Several other financial institutions have federally registered trademarks containing the word “true” or a variation of it. Yet the Truist versus Truliant conflict is immediate because both companies serve the same market and both are financial institutions.

This conflict piques my interest because I’ve been through many business, product or trademark selections where the business picking a new name won’t back down from making a bad choice. Don’t fall in that hole.

The hole can take several shapes. Sometimes, the business gets a trademark attorney to do a clearance analysis of the new name and the result shows it’s risky, but the business goes ahead anyway. That might have been the case with picking Truist. BB&T and SunTrust surely knew of Truliant and must have been warned by counsel that it was taking a risk by adopting a similar name.

Or sometimes the business is bent on picking a name that’s merely descriptive of the goods and services and possibly even a generic name for them (for instance, Bank of Virginia). Such names can be difficult or impossible to register as trademarks and often are unprotectable.

Or after being warned, the business insists on using a name commonly used in the industry. For example, many banks use variations of citizens, people, community and union. That’s begging for trademark conflict.

The common theme to these poor choices is company leadership fell in love with a name and let love trump reason. Often, this happens when executives pick a single name candidate and gets attached before having it legally vetted.

The way to avoid this is to explore various naming options with legal counsel before falling in love. Give your attorney a list of five to 10 widely varying candidates to vet before getting attached. Look more closely at the ones that do well in initial vetting. Avoid merely descriptive names, such as Community Bank, and names commonly used in the industry, such as Citizens Bank.

Ultimately, you’ll save money. Picking a name that poses trademark problems is the road to high legal bills and difficulty distinguishing yourself from competitors with similar names. In the worst case, you could be forced to change your name and pay damages to the company that had the similar name first.

When you’re doing a new branding, there’s no excuse for putting your company at risk. Pick a clean name so you can protect it from imitators. Let reason rule the day, not true love at first sight.

John B. Farmer is a lawyer with Leading-Edge Law Group PLC, which specializes in intellectual property law. He can be reached at www.leadingedgelaw.com.

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