How one small tech company overcame trademark issues and developed a new brand name for their business.
A while ago, I joined a promising South African tech company called Honeybee. My purpose was 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). It 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.
We were sad to say good-bye to our name and brand, one that employees and customers had grown to love. However, 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.
When coming up with a company or product name, you can either go with:
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.
The first time, we didn’t worry about trademarks. 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.
Trademarks are important if you want to build a brand on a solid foundation and protect it in the long-term.
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.
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:
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.
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.
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:
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:
If you MUST change your businesses name, then