Finding A Strong Trademark

Lisa Wright,

“The easiest way to make money is - create something of such value that everybody wants and go out and give and create value, the money comes automatically.” – Jordan Belfort (The Wolf of Wall Street).

Marketing and creative teams can spend months working on the best angle to attract consumers to a new product. The right image, tone, messaging and product name are critical elements to any marketing campaign and are carefully crafted by marketing and branding professionals to ensure that the product sells.

Finding the right name that creates value worldwide and helps you to sell is key. And, trademarking that product name in the territories in which you plan to market and sell your goods will ensure brand strength and brand protection and will ultimately add value to your business.

Coming up with strong product names and trademarks, which set the right tone and translate globally is no mean feat. If you are just thinking about a new product name our Enhanced Knockout Search tool helps at the very first stage of brand development by allowing you to see if any potential new brand name is already trademarked and protected by a third party. The tool enables marketers and creatives to “knockout” any weak trademark candidates and immediately move to brainstorming for a stronger brand candidate at the outset and save the business time and money in the process.

How to trademark a new brand name

Here is a basic roadmap to successful trademark registration that can help to guide you through the entire process of trademarking a new brand name.

  • Brand storm
  • List your potential trademark candidates
  • Run a preliminary trademark knockout search (of exact match and semi-exact match searches) to eliminate bad trademark candidates
  • Run a trademark similarity clearance search (to identify the similarity risk of your good trademark candidate to any existing trademark names) 
  • Get approval of your good trademark candidate by a trademark professional 
  • File your trademark application (depending on the territory, the application may need to be done by a licensed trademark attorney)
  • Successful trademark registration and initial brand protection! 
  • Monitor your trademark and protect it against potential infringements (to maintain brand strength and protection rights)

Word strength

Moving your potential new brand name from the knockout stage and along the trademark assembly line to running a full clearance search enables you to dig deeper and understand the candidate word or words strength by breaking the trademark down into its component parts and comparing those parts against any matching marks. 

Your whole team can work seamlessly together online. Our technology makes it really easy for creative, marketing and legal teams to collaborate on our platform. Trademark search and watch reports can also be customized, downloaded and shared externally!

Word meanings

Our AI Clearance Search tool also gives you a unique opportunity to check the candidate word meanings with our Word Meaning Tab. This gives your marketing team the opportunity to explore the brand candidate word meaning in one or more languages and eliminate problematic meaning - a factor that could hinder its success in the marketplace.  

The Word Meaning Tab is not only important to evaluate the strength of your future brand, but also it gives an overall picture of the words that may prevent registration in particular territory. 

An example of these features can be seen when searching for the mark IRISH MIST in Nice Class 33 (Alcoholic Beverages, Except Beer) using the Word Tab in our AI Clearance tool. The Word Meaning Tab reveals the following top word results:

Screenshot 2019-12-10 at 17.52.36

So it is clear that it would not have been a smart idea to launch a beverage under this brand name in Germany or Austria.

6 strong brand names

We have put together a short list of six strong brand names (and trademarks) that have perhaps caused an unintentional (or intentional) stir somewhere in the world - although the first two examples were totally unavoidable and just really unfortunate.

1. Corona (beer)

This beer, owned by Belgian company Anheuser-Busch Inbev, is exported to 180 countries. The Coronavirus outbreak led to some media reports of a drop in sales of Corona due to consumer confusion over whether the beer was connected to the virus, although little or no evidence was actually found to back this up. In fact, according to Inc. and Constellation Brands (who own the brands rights in the US) CEO Bill Newlands, sales are actually up by 5%.

Last month the Mexican brewery Grupo Modelo temporarily suspended production under order of the Mexican government as the production of beer was deemed to be non-essential at this time.

When running a search in our enterprise solution ExaMatch we can see that, at the time of writing, the brand name is heavily trademarked in Class 32 (Light Beverages) with over 500 valid trademarks containing the mark text CORONA.

2. Ayds (appetite suppressant candy)

This American brand has changed hands a few times over the years. It was introduced by Carlay Company of Chicago and a U.S. trademark was registered in 1946 claiming first use in commerce was in 1937. This product failure was also due to circumstances seemingly beyond the company's control. The appetite suppressant candy Ayds was originally marketed in the 1930s and sold well right up until the 1970s. However the brand suffered in the 1980s as consumers gained awareness of the fatal virus bearing an uncomfortably similar name. The owner at the time, JMI-DEP, Corp. responded by changing the product's name - to Diet Ayds and applied for the trademark in November 1988. This trademark was deemed invalid by the USPTO. The company reported a drop in sales of 50% and the product was discontinued.

3. Veri (mineral water)

The Spanish mineral water Veri brand comes from thawing and rainfall in the Pyrenees. The brand is owned by Aguas de San Martin de Veri. The brand is popular throughout Europe and is trademarked in Spain in the OEPM registry and also in the European Union EUIPO. However, the word “Veri” does not translate well in all European countries. It actually means “blood” in Finnish! Unless you are a vampire this is not something that you would reach off the shelf to drink.

4. Bimbo (bread)

The Bimbo brand (and loveable bear logo) is owned by Grupo Bimbo, a Mexican multinational bakery product manufacturing company. According to their website Bimbo “started in 1945 with a product line of white bread, toast and Panques. It currently has a presence in more than 24 countries”. However, the word “Bimbo” is also a derogatory term for an unintelligent female that was widely in use well before the brand was launched. The brand is however much loved by many women and men the world over - and Bimbo is heavily trademarked by the owner Grupo Bimbo with more than 2,500 valid marks registered today.

5. Dick’s Sporting Goods (sports goods)

Dick’s Sporting Goods is one of the leading sporting goods stores in North America today. The corporate name is the nickname of the original franchise owner, Richard Stack. However it also has connotations with a very common term for male private parts. This fact does not seem to have hit the business too hard, as it has seen rapid growth. Today the company controls over 600 stores across North America. The trademark owner American Sports Licensing, Inc., currently holds over 15 valid trademarks with the mark text DICK’S SPORTING GOODS.

6. Per Una (clothing brand)

Marks & Spencer’s Per Una saw a relaunch of the brand in 2019 to take it from “frilly to feminine”. This would prove to be a hard sell in Finland - where the term “per una” actually means potato!  With over 60 valid trademarks containing the mark text PER UNA at the time of writing registered by the owner Marks and Spencer PLC, the 3 top products are all found in Nice Class 18 (Leather Goods) with “Leather and imitation leather, pelts and hides, and goods made thereof” and “Luggage” sharing the top spot with a ratio share of 40.6%, followed by “Umbrellas” (37.5%).

May clearance sale now on!

We just made your search even easier for any new strong brand names and trademarks this month! Our May Clearance Sale is on all week. Save 20% on all Enhanced Knockout Searches and/or AI Clearance Searches until Monday May 25th 2020! 

Start creating something of value today that everybody the whole world over will want! 

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