Trademark law prohibits the use of a mark that is identical or similar to prior trademarks in the class or classes in question. There is, however, one exception: “diluted” marks. These are words that have been used by so many marks that the law makers finally decided that they no longer belong to anyone.

What is the benefit? Simply to be able to turn to names that, while not very differentiating, are not liable to draw future lawsuits in industries with high trademark saturation.

Example: A famous American phone brand is looking for a name for its new line of cell phones. Constraint: The name must be an English word or group of words. Problem: 70% of the words in the English dictionary are unavailable in the telecom class (CL38) in the U.S. The solution: Look towards overused names, the ones that are considered “diluted”.

Quensis’new tool works by applying a series of statistical models to marks registered in one or several classes, in one or several countries. DILtool helps us identify and classify the words most often used in trademarks so we can find possible solutions. End of problem!

Some Examples of over-registered names 
in Class 38 at the USPTO*:

SKY: 191 registrations
BOX: 237 registrations
BLUE: 284 registrations
PLANET: 347 registrations
INTERACTIVE: 424 registrations
SERVICES: 1173 registrations

This tool, specially designed by Quensis, enables you to imbue your brands with the local color of your choice. This is a recipe for success when going global, to market your products or services with brand names that are likely to work in countries that have significant cultural or linguistic differences. It is as straightforward as a recipe from your favorite chef…

INGREDIENTS

• Take a root (VIV-, SENS-, OCEN-…), any root, from any word you want, in whatever language you want
• Do a parallel search for toponyms from a certain number of countries chosen for their connotations (e.g., England for its international language, Italy for its elegance or music, etc.)
• Extract the endings of these place names and subject them to a statistical analysis: likemagic, you get the list of the most likely word endings in the countries selected!
• Now you just have to combine the desired root with the list of chosen endings.

A name only has value if it can be commercially exploited. To be exploited, it must be available, that is, it should not be too similar to any existing trademarks in the field and the countries where it is going to be exploited. Hence the necessity of checking for similarities with live trademarks in the relevant business sector. 

Until now, the Quensis automatic filter system made it possible to detect all similarities within one letter for a given name, against a database of registered trademarks in pre-selected classes and countries. Quensis has just added a new, even more powerful tool: Similar 2, which detects similarities within two letters.

Just think: There are 125 combinations within one letter for a five-letter word (25 x 5), but 15,625 combinations within two letters (125 x 125). As for performing thousands of verifications for several hundred names against a database of tens of thousands of registered trademarks… Guy, our brilliant computer specialist, will spare us this mathematical mind-bender. It’s downright incalculable, except by the Quensis tool. 

This tool has just been successfully tested in researching names for the French pharmaceutical industry. The criteria used by Afssaps (France’s health products safety agency) are stricter than those of trademark law. 

And if we can do it for the pharmaceutical industry, just think what we can do in other, less restrictive industries…