What's in a Name? Ask a Trademark Attorney
The name of my business changed recently. It wasn’t my idea. A franchise company five states away, with a similar name, decided that I was confusing to their customers. We both have brick-and-mortar businesses that perform anti-aging treatments, and we both serve a mostly local clientele. One thing they had that I didn’t was a trademark and that made all the difference.
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. 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 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.
Do a trademark search.
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.
Hire an attorney.
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.
Know when to give up the fight.
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.
Most of all, remember 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.”