Steven Price says "go," "maybe," and "maybe not"
Steven Price runs Tessera Trademark Screening, which specializes in preliminary trademark screening, a critical step in any naming process. Steve is the go-to guy for preliminary trademark screening. He does it for just about every independent naming consultant I can think of, many of the big brand consulting firms, and directly for clients of his own. Through the years, he's worked with Microsoft, Intel, Coca-Cola, Procter & Gamble, and others, and brand names like BlackBerry, Dasani, Pentium, and Swiffer.
Because this episode is about a very specific aspect of naming, I'll provide a little context on preliminary trademark screening: It's a standard step in any brand naming project—or, at least, it should be—for two reasons. The first and most important is that if you go to market with a name that another party perceives as having infringed their trademark, and they notice and get upset about it, you'll likely get what's called a cease and desist letter from either them or their attorney. It's basically a letter that says, "Stop using that name or we'll sue you." That could happen as soon as you start using the name or years later. And imagine how expensive, time consuming, and embarrassing it can be for a brand to all of a sudden have to find a new name.
The second reason preliminary trademark screening is built into most naming processes is because asking a lawyer to do what's called a "full search" on a name that you want to use can cost a lot and take a long time. To avoid doing that for every single name idea, well, that's where someone like Steve comes in. He pores through trademark databases and other sources to narrow a list of potential names by knocking out names that are too similar to existing trademarks.
I've worked with Steve a number of times and wanted to get a better sense of what he does with the name lists I send him and what determines what goes on to the (sometimes much shorter) lists he sends back to me. We started out talking about the structure of Steve's reports, and the order in which he does his screening, which is also listed on Tessera's website:
- Tessera screens the US Federal and US State trademark registers for identical marks in all International Classes and for similar names in classes relevant to the goods and services of a project.
- Tessera typically screens 30 or more trademark registers outside the US for identical and near identical marks.
- Tessera screens the Internet for identical and similar marks on identical and similar goods and services.
- Tessera screens high-level domains for identical and similar use.
Much of the required information for preliminary trademark screening is publicly available, through sites like the USPTO's Trademark Electronic Search System (TESS). Steven, however, uses Corsearch, which makes his searches much more efficient. We also talked about the words he uses in his reports ("go," "maybe," and "maybe not") and why he uses them.
For more on Steven or to get his help on a project, visit Tessera.bz. Below, you'll find the full transcript of the episode (may contain typos and/or transcription errors). Click above to listen to the episode, and subscribe on Apple Podcasts or eleswhere to hear every episode of How Brands Are Built.
Rob: Thanks for making time to talk with me.
Steven: Of course.
Rob: I just want to get right into the details of what how you do what you do. So, when I send you, or somebody like me sends you an email with, say, 30 name ideas in it, what do you do when you open that e-mail? Do you have a consistent process you go through, or what are some of your first steps?
Steven: Yeah, I do. I put all of the names into a preliminary trademark search report of my own making. It's a very simple, as you know, Microsoft Word document. And the first thing I do is develop a preliminary trademark screening strategy, which is based on what the goods and services are for the names that you've given me. There are 45 international classes of goods and services for registered trademarks around the world. So, then I just start screening and I usually start with the US Federal and US State trademark databases. I use Corsearch as my source of those databases. Someone who does not have a subscription to Corsearch might rely on the USPTO public database of registered marks. That only includes federal marks, doesn't include state marks. And, always, I will discover identical or near identical marks for exactly the same thing. And those names will begin to get dropped off the list. I will note what the conflicting marks are so the report I give you is not a black box. It's one that you can review. It's one your client can review. It's one client council can review. And the list gets shorter as I move on to other country trademark databases. If, that is, they're doing going to do business in those countries. Again, the [list] gets shorter against the same the same rigor and then I will go to using the Google search engine looking for marks that aren't registered. Common law marks and other uses that might not be on the registers. And then finally, typically finally, looking at the dot com domain, since it's the most popular, and looking for conflict as well as anything inappropriate that might be there. And in some cases the clients are looking to obtain the domain name. So I will just include the status of what that is.
Rob: Before we leave this topic. Any other tools that you use whether it's software or physical things — books — or subscription services? Any other tools that you use as you as you do what you do?
Steven: I'm smiling because of the reference to books. Thirty years ago, when I started in the brand name development business, that's how we did it. You subscribed to this encyclopedic set of books and you looked up marks by hand.
Steven: In books. And, that just seems crazy now. No. Everything is online. And, besides the specialized databases — there's specialized databases for alcoholic beverages, there are specialized for pharmaceuticals, there are specialized for mobile apps. So, besides those, but they're all in basically the same place online. And that's one reason I subscribe to Corsearch, because it's all right there.
Rob: When you provide your your opinion, you use sort of a stoplight type of ranking. You say some names or "go," some are "maybe," and some are "maybe not." What factors into that ranking? And, is there some sort of checklist that you used to say, "If it checks off this many boxes then it pushes from 'go' into 'maybe'" or something like that?
Steven: Yeah, that's a great question. And so, you'll see I'm supersensitive to words that you use, so I never provide an "opinion." That's what trademark lawyers do. What I am doing, though, and those terms that I do use: "go," "maybe," and "maybe not" are specifically nonlegal. So, I don't use "clear." I don't use "available."
Steven: So that's all on purpose.
Rob: You don't use "safe" or "unsafe."
Steven: I don't use "safe" or "unsafe." I don't use the green, yellow, red lights. But "go" means that nothing similar was found. So, if we are screening for an electric car and your name is "Amber," that doesn't mean there are not pipes called "Amber," that there are not nursery's called "Amber," but there's nothing in the motorized vehicle, transmission, transportation field called "Amber," and then that would get a "go" name having gone through all the levels that we already talked about. A "maybe" means that there are some things that need to be looked at but they probably won't cause a problem. And I'm basing that on my understanding of trademark law and how I've seen attorneys in general respond to whatever I have found. And "maybe not" means there are identical or similar marks for similar goods and services and you know your name is not unique. Somebody is already using it. And at the level of preliminary screening I'm , as I said before, just really pointing out those names that are most unique.
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Rob: Do you have any tips for just doing searches in that database? Because the the search field on the USPTO database is pretty complex, how you can do some searches, things that you can include or exclude from your search.
Steven: You want to probably start with looking for identical marks as opposed to rotated marks. Identical are if I'm looking for "Alpha," it's gonna find "Alpha" just the way I spelled it. If I can expand to rotated, it's going to look for letter strings of A-L-P-H-A. And, just be aware that you can do both of those things. And then you want to probably focus on the most pertinent or most relevant trademark class, that if you're computer software you can pick 9, but then you're going to have to say, "Well, I should also look at 42 because that's software that's available only online, not in a package. And just be aware of what the relevant classes are. And then if you can restrict the search to particular words that are in the goods and services, such as software or candy bars, that too will probably make your search more efficient if you're knocking out the name. So, I did all that and I find Alpha candy bar from Nestle, boom, I don't have to worry about any more. It's done.
Rob: You just used a term I hadn't heard before, "rotated marks," I think you said. What what does that mean?
Steven: "Rotated" means that — and it's probably a term that may not be a general term but it's a term that one of the search companies used — is that if I search for a rotated marks for "Alpha" again for candy bar, it's going to find every mark that has "Alpha" in it, even if it's like a design mark that says, "circle with a X through it, meaning 'Alpha Omega.'" It'll find that and it'll find an identical as well.
Rob: How far do you go into different spellings or even similarly spelled names? Like, if somebody had a candy bar named "Elfa," E-L-F-A, would that come up in your searches?
Steven: Yeah, that's a great question. The Corsearch has an algorithm that does a lot of that for me.
Steven: And that algorithm can be manipulated to become stronger or weaker. You can put in vowel replacement. You can put in suffixes. It all depends on what the goods and services are. A candy bar called "Alpha" and a candy bar called "Elfa," we're going to argue about the overall commercial impression of "Alpha," meaning "the beginning" or a letter, a Greek letter, versus "Elfa," which seems to suggest something with, you know, little men dressed in green.
Rob: With pointy ears.
Steven: With pointy ears, and so a consumer's not going to have a problem with that. The two companies may or may not. I don't know. So again, I can only take it so far but I'm grateful that the Corsearch — and I don't know if the USPTO has this, but — it has an algorithm that does a lot of that for you. And it certainly does for pharmaceuticals. There is a very powerful, their Corsearch advantage algorithm, and that's a very powerful algorithm and you need to use it for pharmaceuticals because they're a completely different kettle of fish.
Rob: Yeah, different ballgame and much more difficult from from what I understand. A couple of hyper-specific questions about the USPTO database. Do you ever use...I think it has international classes but then also U.S. classes. Do you ever use those U.S. classes?
Steven: No, I don't. The international classes are sufficient.
Rob: Just out of curiosity, any sense of average time per name, or is it completely dependent on the nature of the project and the nature of the names?
Steven: Yeah, it is definitely dependent on both of those things. Screening for cars is simpler than screening for enterprise data mining software. And so, there's just more to look at for the software than there are for the cars. The kinds of names is a huge thing. If you have a list of names that are all well-known, really attractive nouns and verbs, that can make things go really fast or really slow.
Rob: Just as a last question, what is it that you enjoy about what you do? Because I feel like, in order to have done it for so long, you must you must get a kick out of the work. Or, I hope you do.
Steven: Yeah, no, I do. I enjoy providing this service and I think it's one that I understand the benefit of it. What I enjoy doing is finding the most unique names in your list and imagining that the list that comes back to you of "goes" and "maybes" are ones that your clients are going to enjoy and see some promise in. And you're going to have a wonderful meeting and that meeting is going to stay wonderful because once they send it to their attorneys, that the work I did will be good and solid and they'll come back and go, "It's fantastic. That name you shared with me Rob, that we got so excited about, is available for us to use. And thank you very much." And so, that's sort of...I'm enjoying the wonderfulness of that without being involved in that directly.
Rob: You enjoy saving people like me from having embarrassing and negative experiences when the client comes back and says, "We loved all these names but we can't use any of them."
Steven: Yeah, exactly.
Rob: Well, luckily you're the best at what you do, so that doesn't happen. Steve, thanks so much for making time to join me today.
Steven: Thanks, thanks.