Trademark Attorneys – The CMO's New Secret Weapon?

Matt Avery,

“EXCITING!” That’s what I told my friend at a dinner party last week when he asked me about how I find working in the world of trademarks. He didn’t expect that. Where’s my ‘stunned’ emoji? Ah there it is... 😮 !

Naturally, he wanted to know more, and that part is what I want to share with you on this blog. I could of course have chosen to write about the rest of the conversation at that dinner table, but my friend is particularly dull, so I thought I’d spare you. Thoughtful, huh?

It might seem strange to write about the marketing team in my first trademark blog, but I think it will help you see why I find this space so exciting right now. The world of trademarks is changing. For the better. New software solutions are changing the way teams work together, which is changing the way work gets done and adding net new value. New trademark platforms are reaching out beyond the traditional legal silos, spreading value across different parts of the organisation. Little bits of value are dropped at everyone’s door – especially at the door of the aforementioned CMO and his/her marketing team. Let me give you an example. A fictional one, that is…

J Patties Ltd sell burgers. Really good ones. And they’re good at it, making hundreds of millions of dollars in revenue every year. Their marketing team has a new idea for a super-hot burger made with raw chilies, beef, and chicken. They have brainstormed a long list of clever names for the new product, and, being a tech-savvy, connected organisation, they email this list to Julie Meryx (Meryx/Marks I know, I know. Not sorry!) on their trademark team, to search and clear the names so they know which ones they can safely consider.

Now they’ve got 50 names on that list, and yeah, I can almost hear you about to tell me how long that’s going to take Julie, plus the cost, and, “surely they need to narrow the list down before they send it over?” and, “why are they sending it to the trademark team before they’ve decided on the name?” In the “old world”, using legacy processes, you’d be right; however, J Patties are using TrademarkNow (tech-savvy, remember?). And this is why the marketing team can give Julie a list of 50 names and not feel they need to dodge a bullet from her of any kind. So, how is this possible, you ask?? Cue Superman music, here’s what they do:

1. Julie happily accepts the list of 50 name candidates and runs a full global trademark search for all of them. Yes. All of them. It takes around 15 seconds per mark, plus coffee sips, plus Whatsapping Mr. Meryx about where they’re going for dinner tonight. Because this is real life after all. All in all we’ll be generous to Julie and say it takes her 20-30 minutes. To run a full search for 50 different trademark names. At the end, she gets a comprehensive report that has all of the results for the names, organized and listed in order of risk priority. The platform has analyzed registered and unregistered trademark data, word meaning in over 200 languages and domain names.

2. The results alert Julie that name candidate #23 “La Vache” (well it’s a beef burger so) as well as meaning “cow” in French (could work), it also means “oh cr*p!” in French (not so much!). France is one of J Patties’ largest markets, so Julie throws #23 out. Not sure that would’ve been picked up using the old way!

3. Julie also finds candidate #11 is probably not a good idea for their German market. In case you were wondering, candidate #11 takes two aspects of their burger into one awesome name. It’s got chicken in it (yes as well as beef, they’re innovators), and it’s fiery… fiery chicken. “Fireicken Burger”. Genius, I know. The marketing team loves this one; however, Julie’s search flags a warning. It turns out a very similar word in German has a vulgar meaning. Uh-oh. That would’ve potentially damaged J Patties’ credibility and good brand in Germany had they used it. Needless to say, Julie is straight back on the phone to marketing, who promptly strike candidate #11 from the list! Looks like J Patties Ltd won’t be the next law school case study. Phew! That’s a relief.

4. Finally, it’s not just vulgar word meanings that marketing need to know about. Julie finds that a related word in Romanian (another big market for J Patties, they’re truly global) “fachie” means a “stick with a fire at one end”… hmm… spicy food… fire… heat… double hmm… marketing could work with that! Maybe in Romania they could call it – the “Fachie Burger”. Julie shared this insight with Marketing, who incorporate it into a new line of brainstorming on the name. They also share it with their colleagues responsible for local marketing in Romania.

If you’re wondering how the story ends, they settle on the name “Chillified” – connotations of fried chicken and hot chilies included! No vulgar word meanings. No unwanted impressions in English or in other languages. Safe. A hot – but cool – name!

So there you have it. Trademark team and Marketing working in tandem to protect, create, and innovate. And the trademark team is now involved at the START of the process rather than at the end. Go trademark team! Yay!

CMO’s secret weapon? You bet.


Photo Credit : Oleg