A short story of how a small tech company dealt with trademarks and developing a unique brand name in a global marketplace
Back in September 2017, I joined a promising South African tech company called Honeybee in Stellenbosch, Cape Town’s winelands area, as part of the team to scale the business and take the company and brand global.
We have a great product (a Field Sales Management and Mobile Sales app), a name with strong brand equity and a large customer base in the South African market. However, as we entered the UK market, we discovered that our name was not unique. There was another technology company with the same name. And worst of all, although they were not a direct competitor, they operated in the same space – CRM or sales software. After a brief discussion with the other Honeybee company, we both agreed that as we had not trademarked our name and they had, we would be the ones to change our name.
While we were sad to say good-bye to our name and brand, one that employees and customers had grown to love, we saw this as a good opportunity to develop a brand that was more versatile and suited to a global market. I was tasked with finding the right name and developing the brand and making sure that this time we worked with trademark attorneys to guide us and ensure we never face this hurdle again.
“How hard can it be?”
I decided to work on making up a word, since all the existing suitable words would likely be taken. (Have you ever tried to register a domain name?). I naively thought it would be a matter of simply getting the creative juices flowing to make up new words that I could build a story around and then doing a Google search to see if any companies were already using that name.
You see, a made-up word is distinctive and, if you’re lucky, unique. However, in the land of trademarks nothing is this simple. Even though a word doesn’t exist in normal vocabulary, it could still potentially be confused with another made-up word that sounds similar. According to our trademark attorneys, we would run the risk of having our registration either rejected by the US Trademark Office or successfully opposed by a company in Europe with a similar sounding name registered in the classes we wanted to register in.
Our first potential name, which had an excellent back story and we could have loved as much as the name we’ve now chosen, was Xavi – pronounced “savvy.” Short and smart and with a great story. Perfect right? Apparently not. The legal team felt it was too similar to other four-letter brand names starting with X like Xavo or longer brand names that start with Xavi like Xaviant. This was the problem with coming up with a made-up word, it’s so distinct that it can easily be confused with another made-up word that sounds similar or is spelled similarly. Gutted cannot even begin to explain how we felt.
Google searching, it turned out, was only the very first step. The next step, was searching the publicly accessible databases of the various trademark offices across all the countries we wanted to register in.
Click here to read my “how to” guide on developing a unique brand name and how to conduct trademark searches
I focused those initial searches in the US, UK and Europe. If I didn’t come across any trademark registrations for that same word in our classifications, then I went to our attorneys to conduct a more thorough search using their local experts in those markets. Only once their contacts in those markets came back with no conflicts could we then proceed to register our trademark with minimal business or legal risks. If you ask any attorney, there is no such thing as zero risk.
“This is hard.”
What I first thought would take perhaps a month, took over 5 months. I would dedicate some time during the week just to brainstorming a name and a lot of headspace thinking about it while commuting or walking the dogs.
Every time I would come up with a great sounding name I could build a story around, I found myself stumbling over one of the hurdles in the process: an initial Google search would result in me finding another technology company with the same name, or after clearing that first hurdle, I would find a registered trademark for that name in one of the national trademark office databases. Then, if I managed to clear that hurdle, I would approach the attorneys only to have them come back after a more thorough search and analysis with a similar sounding registered name that could pose a business or legal risk if we were to try and proceed with a trademark registration.
It got to a point at the pinnacle of our frustration when, exasperated, I just typed a bunch of random letters on my keyboard and came up with a ridiculous word that was over 20 characters that I half-jokingly, feeling defeated said, “maybe this is the only choice we’ve got: Schaneffenhoogenstorm.
I ran into our CEO’s office and shouted the name, “I could build a story around it! I could make up a character called Baron Schnaffenhoogenstorm – an historical character with a colourful past! He could be our mascot! The Baron of Sales-bury!”
My CEO looked at me with a combination of amusement and concern as he saw the desperation in my eyes to let us just settle on a freakin’ name that the attorneys would find posed minimal risk. “The .com is available!” I said in a last-ditch effort to convince him. He laughed. I laughed. We laughed and laughed. I pretended I was just kidding. And I went back to my desk to start over.
Inspiration can come from anywhere at anytime
Then one day, looking up at the sky and thinking, “I like the word sky, it would be nice to have a name with the word sky in it,” and then later on admiring my wife for the little dynamo that she is, I hit pay dirt: Skynamo! I quickly went through the previous mentioned steps and managed to get all the way to “green light” from the attorneys.
Inspiration can come from anywhere at any time. It cannot be forced. You just need to be open to it and in the right frame of mind to receive it. After months of trying, I finally had a great name that fulfilled all of the criteria of a great name to build into a global brand:
- it was easy to spell and pronounce in various languages
- it invoked positive connotations – Sky (upwards, limitless) and dynamo (converting mechanical energy to electricity)
- it was distinctive and hopefully memorable
- and above all – according to our trademark attorneys – it is unique in our desired trademark classifications