by Susan O'Malley, Reprinted from Entrepreneur.com
The name of my business changed this month. It wasn’t my idea. A company five states away, with a similar name, decided that their customers might be confused by my business. We both have brick-and-mortar businesses that perform anti-aging treatments, and we both serve a mostly local clientele. The names were similar, but not the same, and none of my customers were confused. But I didn’t own the trademark. The other company did, and they threatened to sue.
At first, I didn’t take it seriously. Can’t we all just get along? I’m one woman, you’re a franchise -- how could I possibly be a source of confusion to your customers five states away? I thought it would resolve itself. I was naïve.
I opened my business 15 years ago and named it The Aesthetic Care Center because I loved the word aesthetic. After years of being an emergency room doctor, I was transitioning to the entrepreneurial world. The word aesthetic was much more appealing than the word emergency. It was peaceful and didn’t come with lights and sirens. Three years later my name morphed into Shoreline Aesthetic Care, with a change of location to a shoreline town. Very creative, I know.
In 1999, I won a branding contest. The company was having a difficult time making a logo. The owner thought my name didn’t represent my offerings and asked if I would be willing to change it. I agreed and for the first time, I really put thought into my business name.
When I heard the word sonas, which is the Gaelic word for happiness, I knew immediately that was the name I wanted and Sonas Med Spa was born. I registered the change with the state but never thought to do a trademark search. The name brought me much happiness, until the cease-and-desist letter arrived last year.
There were many twists and turns over the past year. I fought a good fight, but in the end I had to change the name. Here are three lessons from my experience and a checklist if you find yourself in a similar situation.
If you haven’t picked a name yet, you’re ahead of the game. If you find yourself in a situation where you have to change your name, do the search. Registering your name with the state and obtaining the trademark are two different things. When I had to change my name, I went to the trademark website and thought I would be able to do the search myself. Within 40 minutes, I was dazed and confused.
This is not a DIY project. When I was first approached with the cease-and-desist letter, I thought I could handle it on my own. I thought everyone would be reasonable. When companies are defending their trademarks, they are not reasonable. I consulted two attorneys, a litigator and a patent attorney. They all told me the same thing -- I wasn’t holding the winning hand. I decided to try to save my name, but I went into it knowing my chances.
Even though I wasn’t in the power position, I was willing to spend some money to negotiate. I had a dollar figure in mind, and when I got close to it, I knew I had to honor my decision and walk away. Don’t give money to an attorney that you could use to build your new business, unless you know for sure you have a good chance to triumph.
The day my name change was official, friends, colleagues and patients all offered congratulations. It was confusing to me because I felt overwhelming sadness. It wasn’t until a dear friend showed up at my spa with a bottle of champagne that I realized I needed to christen my new business launch and embrace the new journey.
Sonas Med Spa will always be my first child, but it doesn’t mean that I love my second child, Madison Med Spa, any less.
Here’s a checklist of projects that need to be completed to change the name of your business:
And most of all, remember your Shakespeare: As Juliet said to Romeo, “What’s in a name? That which we call a rose by any other name would smell as sweet.”
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