Andrew D Price
Venable recently launched its new tech-inspired naming service called WellbrandTM. Can you tell us more about that?
It has been thrilling to share Venable’s new WellbrandTM service with the world since its launch in early 2021. A first-of-its-kind service, Wellbrand leverages the trademark law know-how of our team to help clients accelerate the process of finding effective, available brand names. Basically, we help clients ‘get to yes’ faster. Drawing on the team’s deep well of trademark intelligence, the service helps to proactively avoid the three main problems that can arise when marketing departments or advertising/branding agencies brainstorm names – namely, that:
- the names are not inherently distinctive;
- they pose a significant risk of USPTO refusal and/or third-party challenge; or
- they have negative connotations (this happens more often than you might expect).
There are three key moments when the service is useful:
- the moment of brand name creation;
- when outside-developed names do not clear; and
- when a naming alternative is needed to resolve a dispute quickly.
The Wellbrand service started as a pet project with a decade-old origin story rooted in tech. It also stems from two personal experiences that crystallised the problem we are trying to solve. The initial trigger was our representation of a global consumer electronics company with a continuous need for new brands. In one particularly busy year, we searched more than 500 potential names provided by an advertising agency, and over 90% posed one of the problems identified above. Another trigger was a personal experience with a high-profile client with offices on Fifth Avenue in New York. The legal and marketing departments were literally on opposite sides of the street, and the legal team made it clear that: “They don’t come here and we don’t go there.” It became a great metaphor for the lack of synchronisation between legal and marketing departments when it comes to naming. We thought a new approach could help to bridge that gap.
This is where tech comes in. A friend and I wrote an algorithm and developed it into a naming app. But we soon realised that the tech solution had its limitations; while an app can produce a large number of available names, many of them may not be attractive from a marketing perspective. In its original form the app could not account for how a brand might really fit into the landscape of other brands or how people respond to brands emotionally. We realised that it was better to use everything we had learned about the technical aspects of trademarks, combined with the creative bent of some of our team (made stronger by solving countless trademark problems in a busy global practice) and some proprietary techniques.
What were some of the biggest challenges that you faced in building the offering?
When we first approached the firm with this idea years ago, it was lukewarm to it, having never really launched a sub-branded service, apart from newsletters and the like. Fast-forward to the covid-19 pandemic and two factors made the move an easier sell. First, the pandemic created uncertainty in the legal market, which made the firm more open to new ways of working with clients. Second, there was a notable uptick in client engagement on trademark matters. Working from home has driven clients to become more open to new approaches to traditional work and more focused on accelerating the process to get goods or services to market. The firm was still unsure about branding the new offering with a logo, as we had not used logos for offerings other than newsletters and the like. Ultimately, we were able to develop and start using the logo below.
Where do you see the Wellbrand service headed in the future and does the firm have any other innovations in the pipeline?
Clients will dictate where the Wellbrand service is headed, as we learn more about how they use and respond to it. While we are happy to have a unique position as one of the first movers in this area, this is a long-term play for us and one where we expect competitors. We are focused on the Wellbrand service right now (in addition to our traditional services), but our team is always on the lookout for new ways to innovate and contribute to the development of trademark law and to make the work of trademark lawyers more practical for clients.
Andrew D Price
Andrew Price, a co-chair of Venable’s trademark prosecution and counselling group, is a globally recognised IP attorney who helps clients to establish, protect and profit from their brands worldwide. He manages large trademark portfolios, exploits IP opportunities and controls crisis situations for clients of all sizes – from start-ups and celebrities to non-profits and multinationals. Mr Price focuses on brand strategy, as well as clearing, registering, licensing, enforcing and defending all types of trademark worldwide. He is also a creator of the firm’s WellbrandTM naming solutions service.