How one small tech company overcame trademark issues and developed a new brand name for their business.
Back in September 2017, I joined a promising South African tech company called Honeybee as part of the team to scale the business and take the company and brand global.
We have a great product (cloud-based Field Sales Management software and a Mobile Sales app that integrate with Sage), had 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 operating under the same name – and they owned the trademark globally.
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 developing the new name and brand. As a marketer, I know just how important it is to choose the right name for a company or product. It needs to be easy to spell and pronounce (in various languages if you’re going international). If possible, it should have some positive connotations (definitely no negative ones) that can be associated to your company or product. And above all, it must be distinctive and unique.
Finding the right name
When coming up with a company or product name, you can either go with:
- an acronym (IBM, SAP),
- a family or person’s name (Ford, Dell)
- an existing word (Amazon, Apple, Salesforce)
- a misspelled word that looks or sounds like an existing word (Xero, Google), or
- a completely new word either made up of a combination of existing words (PayPal, Instagram, Accenture), or
- a completely new word entirely made up (Skype).
Out of the above options, I decided to work on making up a word, since all the existing suitable words would likely be taken. I figured it would be easier to also find an available domain name for it.
Working with Trademark lawyers
The first time, we didn’t worry about trademarks, because we were a start-up and just weren’t thinking “big” or beyond our South African borders. This time, we decided to work with trademark attorneys to guide us and ensure we never face this hurdle again. And it’s a good thing we did.
Some of you might be thinking: “Do I really need to trademark my name?”
Yes, for two reasons.
- You might be a small business already trading under a name that already exists in the market. And maybe the other company that has trademarked that name in your industry classification won’t ever issue you with a cease and desist letter when you enter their market, because they are nice people and just don’t feel there’s any harm in letting a company by the same name trade in their market. Or maybe they do. It’s a decision that is totally out of your control. Do you really want to take that chance as you build a global brand?
- You’ve invested tonnes of money into building your brand in your market and then all of a sudden, another company enters the market with the same name. Trademarking your name protects your brand from being copied or from another company riding the wave of your brand awareness you’ve invested so much into building.
Trademarks are important if you want to build a brand on a solid foundation and protect it in the long-term.
Example of why it’s good to work with a trademark lawyer
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.
According to our trademark attorneys, even though a word isn’t already being used as a name for a company or product, it could still potentially be confused with another made-up word that sounds similar. We would run the risk of having our registration either rejected by the US Trademark Office or successfully opposed by a company in Europe that has successfully registered a trademark for a name that either sounds or looks similar to the one we had come up with.
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.
How to check if your chosen name is available
Check the national trademark search database for the country or countries you want to trade in and search for your name within your industry classification:
- US Patent and Trademark Office search system
- Canadian Trademarks database
- European Union Intellectual Property Office search system
- United Kingdom trademark search
- Australian Government IP Search
- New Zealand IP Office Search
- South African Companies and IP Commission search
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, I went to our trademark 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.
You don’t need to work through an attorney as you can register a trademark yourself, but working with one can save you a lot of time and increase your chances of getting your registration through the first time. If you ask any attorney, there is no such thing as zero risk.
Why is it so hard to find a name you can trademark?
According to the US Patent & Trademark Office, there have been 182,000 trademark registrations and 312 000 applications in the past 5 months alone. That’s more words than there are entries for in the Oxford Dictionary!
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 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.
Be patient and persist
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 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
In conclusion, some advice
My advice to any company already operating and with ambitions to grow globally is to make sure your brand name is trademarked and protected.
If it’s not, you should:
- conduct your own search in any of the national IP or trademark offices’ databases (some of which are listed above, others can be found through a simple Google search);
- hire a credible trademark attorney to either register your name or advise and guide you along the process of registering a new name;
If you MUST change your businesses name, then
- hire a brand development agency for the creative process of developing the right name for you. (We didn’t do this, but only because we had no idea how time consuming and difficult it would be. Although it worked out well in the end and we love our new name, it did take up a lot of time and perhaps more importantly “headspace.” I could have been focusing on other pressing things requiring that required this level of strategic thinking or creativity;
- hire a change management agency or consultant to help with the communication and roll-out process of the new name to all stakeholders: staff, partners, customers, and the market. We managed well on our own, but if you don’t have the internal competency for this, or the time, rather outsource this very important and often neglected step;
- and finally, just pray to whatever god(s) you believe in that whatever name you finally come with gets the green light from stakeholders and your trademark attorney. (Yes. Seriously.)
If you have any questions about the process of developing a new brand name, registering it for trademark or communicating the change to all stakeholders, feel free to send me a message or leave your questions in the comments below.