Turning a Cease and Desist Letter into an Opportunity: The Power of Rebranding
In today’s fast-paced business world, choosing the right name for your company or brand is crucial. It’s not just about what sounds good; it’s about avoiding potential legal troubles down the road. In this podcast, we explore the importance of trademark research, the risks of trademark infringement, and how to turn the daunting cease and desist letter into an exciting rebranding opportunity.
The Pitfalls of Neglecting Trademark Research
So, you’ve come up with a name that you absolutely love, and you’ve taken the first step by doing a trademark search on the US Patent and Trademark Office (USPTO) website. You might think you’re in the clear, but there’s more to it. Before you fall head over heels for your chosen name, take a moment to conduct a thorough search on the web, using all the keywords associated with your brand.
This additional step is crucial because, even if you receive the much-feared cease and desist letter years later, the legal battle that follows can be financially and emotionally draining. Legal fees for trademark infringement cases can soar to an astonishing $1 million, even if you eventually win. The best way to avoid this nightmare scenario is by doing your homework before launching your brand.
When a Cease and Desist Letter Arrives
Imagine the dreaded day when that cease and desist letter arrives in your mailbox. It’s a daunting situation, and you might feel like you’re stuck between a rock and a hard place. However, there is a silver lining to be found in this cloud of uncertainty.
Embracing the Opportunity for Rebranding
Changing your brand name due to a cease and desist letter doesn’t have to be all doom and gloom. In fact, it can be a fantastic opportunity to reinvent and revitalize your business. Let’s explore some real-world examples of companies that turned a necessary rebrand into something exciting:
Amfac Parks and Resorts to Xanterra: Amfac Parks and Resorts faced negative associations with its name. Rather than clinging to the old, they embraced the chance to create something fresh and appealing. Xanterra, derived from “Xanadu” and “Terra,” conjured images of idyllic natural getaways.
Addressing Customer Concerns
One major concern when rebranding is how your existing customers will react. You might have thousands of loyal customers who have grown attached to your brand. The good news is that if you approach the rebranding process strategically and for the right reasons, you’re likely to retain their support.
Remember, if you’ve been doing an excellent job, your customers are loyal to your product or service, not just your name. Consider what you’ve learned over the years and how your new name can better communicate your brand’s essence, benefits, and uniqueness.
The Case of Verizon
To illustrate how a new name can breathe life into a company, let’s look at Verizon. It emerged from the merger of two well-known but somewhat dated brands, GTE and Bell Atlantic. The name “Verizon” brought a fresh, modern, and distinct identity to the mobile phone industry, shedding the old-school image of its predecessors.
Conclusion: A Fresh Start Awaits
In the world of branding, change is inevitable. Whether prompted by a cease and desist letter or a desire to stay relevant, rebranding can be an exciting journey. Embrace the opportunity to pivot, create buzz, and position your brand for success. The right name can set you apart, convey your unique value, and engage your target audience. So, when life hands you a cease and desist letter, turn it into a chance for a fresh start and a brighter future for your brand.
Transcription:
Mike Carr (00:03):
Okay, so this is our podcast talking about do you want to get sued for trademark infringement because you’ve decided to use this name you just love without going through the right steps. And you may say, well, I got my URL, what else do I need to do? Or I went out to the US PTO website, what else do I need to do? And so you’ve been using this name for a few months or maybe even a year, or we got a call from a client earlier this week, three years years, and they get the dreaded, cease and desist letter. So a couple things backing up. If you have a name that you love or a name that you know your customers are going to love, please, please, please don’t stop with just going out to the uspto.gov and doing a trademark search. That’s a great first step, but you got to do a little bit more legwork, right?
(00:59):
You got to go out to the web and google it with all the keywords you might be using and see what else shows up, and make sure there’s nothing else out there that matches your new name identically or that’s even close. If you start getting into things that you don’t know about, it always helps. Always, always, always helps to go talk to a trademark attorney. Yes, they charge a lot of money, but maybe you have a friend or someone you know, or an aunt or an uncle that does it. They can give you a little bit of advice. It’s always a good idea. We think before you launched your personal brand, your new company, your new business, you get a little bit of legal advice. But let’s say you didn’t do that, and let’s say what shows up in the mail is that dreaded, cease and desist letter, which is really bad news because that typically means you’re probably going to have to change your name.
(01:46):
Now, years ago when we came up with the CarMax name for Circuit City, and everyone thought it was okay, circuit City got a cease and desist letter from TJ Max, the retailer, saying, you can’t use CarMax because we own Max, and that is going to be trademark infringement. Well, as we all know, CarMax succeeded in winning that case, and now you see CarMax is all over the place, but the legal fees were hundreds of thousands of dollars. An attorney we talked to last week said, if you get into trademark infringement, by the time everything’s done, a ballpark number for just the legal fees, about $1 million, $1 million, even if you win, you’re going to be spending a lot of time and a lot of effort and a lot of money fighting a battle that you may or may not win. So there are some things you can do instead of trying to fight that battle that might make a name change, a little bit more palatable, a little bit more exciting, a big step in the right direction, as opposed to this is a bummer, man, I don’t have a million dollars.
(02:58):
I don’t want to change my name. What am I going to do? So the first thing is to really think about this is an opportunity to create some new buzz, some new excitement to reposition your brand to do some things that are pretty cool. So Amfac Parks and Resorts came to us years ago. They had this name that had been out there forever. Everybody knew them, but it had some negative associations. They were the guys that took care of the accommodations, the cabins at a Yellowstone National Park or a Grand Canyon, and they had a very bad image. And so the CEO came to us and said, look, we’re not going to try to keep Amfac Parks and Resorts or resurrect that name. We’re going to use this as an opportunity to come up with a brand new name that’s exciting and cool and hip. So the name we gave them, they ended up using was Xanterra.
(03:49):
Whoa, Amfac Parks and Resorts to Xanterra., which name is cooler, which name is hipper? Which name sounds like what in the world is Xanterra.? And it came from Xanadu That Nirvana kind of place you want to go for a vacation. It also had Terra in it. Getting back to nature, getting back to Mother Nature, going out in the park and actually having a campfire and a tent, and all those kinds of things that you may or may not want to do. But they sound very cool until you’ve tried to do them. So there’s an example of where you had to change your name because of some negative baggage. Let’s go with something that’s more hip, more cool, more exciting. Now, another worry that you might have about changing your brand is what am my existing customers going to think? This guy that called us a few days ago had thousands of customers, he’d been using this name for three years, three years before he got that cease and desist letter.
(04:39):
That’s how long it might take. If you go down this wrong path and don’t clear your name ahead of time, you might be out there using it for years Anyway, he said, I don’t want to change my name. I got thousands of customers that are using this name. Well, again, thinking about, okay, if you have to change your name, what can you do better? After three years? Surely there’s something you’ve learned that maybe your current name doesn’t communicate quite as well, or doesn’t create the excitement or the engagement or the buzz or whatever it might be. So we had a client come to us. They’d been using this name for a while. It was called Web Inertia, but Web was sort of a dated term, like web, sounded like old school. Nobody really calls the internet the web anymore in inertia. What does that mean, right?
(05:20):
What’s the benefit? So the new name we gave them, they ended up using is Clear Digital. That sounds sort of cool, right? There’s all this noise out there, right? You’ve got all these social media platforms, TikTok and Instagram and Facebook and WhatsApp and all this other stuff. Clarity, clear Digital. That’s what we do. We deliver a cool digital experience with the Clarity, the conciseness, the succinctness that you need in your space to succeed. So what name better Webinar Inertia or Clear Digital. So clearly that was an example. Clearly you get that little double entendre there. Clever, huh? Clearly that was an example of where a new name gave them some additional uplift, some additional buzz. So don’t worry too much about existing customers in our research. If you’re doing a good job, your existing customers are not going to be put off by a name change, especially if it’s done for the right reason.
(06:21):
I’m going to give you one other example. A lot of you have probably heard of Verizon as in the mobile phone company, right? You got Verizon out there and you got T-Mobile. You got AT&T. Well, Verizon, I dunno if you know this, it came from two of the best known brands in the country at the time. GTE- General Telephone and Bell Atlantic, one of the AT&T Bell operating companies. Bell Atlantic was very well known in that part of the country, and GTE was everywhere. And then Verizon comes along. What is a Verizon? But what was cool about Verizon is it didn’t have any of the baggage or the stodginess of a GTE or a Bell Atlantic that sort of sounded old school, like the kind of company my parents would use, but not the kind of company. For me, Verizon sounded cool.
(07:14):
It was a different kind of name. So taking the reason you have to change the name away from this legal problem to an opportunity that creates buzz and excitement, lets you better position what you’re going to do with your customers, right? Something that’s going to be hipper and cooler and more with it and might engage. It could convey a benefit. What do you do better than anybody else? What’s your secret sauce? And put that in the name. Something that really sets you aside from all those other folks you’re competing with. So that’s what we would suggest. Think about this need. Unfortunately, if you get the cease and desist letter and you’re infringing upon someone’s trademark and you don’t have to spend your life or the next six months or the next year and hundreds of thousands of dollars in legal fees to maybe, maybe win, instead of going down that path, take this as an opportunity to pivot, create some buzz and excitement.
(08:17):
Come up with a name that you’re really proud of and that you know is going to do something amazing for you. We did this not for a company that had to change their name, but for a company that knew they were missing their market. So Hilton Hotels came to us. Yes, Hilton Hotels. That’s the place I stay with my mom and dad when we go on vacation. Very traditional, expensive, nice, very nice accommodation, but not necessarily what I can afford as a genzer or as a millennial that’s traveling on a budget on business. The Hilton brand did not really work for that younger audience. It had all that other imagery. Yeah, nice place, but I’m paying for a lot of extras I don’t need. So the name we came up with for Hilton that really did work was three letters. TRU. Tru, Tru by Hilton.
(09:12):
It didn’t have all the accommodations that the old-fashioned Hiltons had, but it had exactly what that millennial and what that Gen-Zer, what you guys are looking for. It had great wifi. It had clean rooms. It had a modern area down in the lobby where you could all sort of socialize and sit. It had all the things that a younger business traveler is very interested in, but not all the amenities that you don’t want to have to pay for. And that raises the price tag. So there are all kinds of examples of names, whether you’re forced to change your name or whether you just want to change the name, it’s no longer hip and cool or resonating with your target. That’s the direction we recommend you go when you get that dreaded cease and desist letter and don’t want to end up in a lawsuit. Good luck to you and have fun.