The Challenge

Branding bind: how far to go to protect a company name

Special to The Globe and Mail

Sean Brophy, president of Spaces Self Storage Centres Inc., says a conversation with a lawyer made him realize that owning the name may be more complicated, expensive and challenging than he’d thought. (Lars Hagberg for The Globe and Mail/Lars Hagberg for The Globe and Mail)

Every week, we will seek out expert advice to help a small or medium-sized company overcome a key issue it is facing in its business.

Sean Brophy has plans to take his company, , across Canada.

There’s just one wrinkle: At least one other business has a similar name. The president of the Kingston-based storage company thought he had protected his business moniker, spending $25,000 to trademark the name of the company, which he launched in 2004.

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Branding, he says, “for us is very key.” He has aspirations to make Spaces Self Storage as well known as 1-800-GOT-JUNK, which “takes a basic service and makes it very relevant.”

But an initial conversation with a lawyer made him realize that owning the name may be more complicated, expensive and challenging than he’d thought. “As you become more educated about the rules and regulations facing trademark and branding, you come to realize how challenging it is to enforce it,” says Mr. Brophy, whose concern is customer confusion.

Mr. Brophy wants to know how far he should go to protect the name – or whether he should at all. He wonders if there might be a solution he hasn't considered.

“We feel we’ve taken all the necessary steps to protect ourselves, but this is a complicated problem,” he says. “Now we need to figure out: How much is our brand worth?”

The Challenge: What moves should the company make to protect its name?

THE EXPERTS WEIGH IN

Kathleen Lemieux, Ottawa-based intellectual property lawyer with LLP

Before he takes action, he needs to make sure he’s on solid ground on all his claims. If his position is that he has prior use of the trademark, he’ll want to make sure he has the business records to support the claim of first use. In a trademark situation, if he’s not the first user, he could open himself to a challenge of expungement of the trademark on the basis that someone else used it first.

He may need to get more creative. Trademark is all about consumer association, so he could also display his logo differently, or talk to the other parties about displaying [their name]in a certain manner so there’s no confusion between the companies. There may be other creative settlements between the companies, too.

Peter George, chief executive officer of Winnipeg-based branding agency

He’s right, in the case of a business like this, brand is important. It needs to quickly and accurately communicate what the business is about.

Spaces Self Storage doesn’t do that. So my inclination is to go with a new name in this new phase of growth. Even if he can keep the name, if someone Googles ‘spaces,’ hundreds of different businesses will come up.

A lot of times companies like this overestimate the equity in the brand. Changing a name isn’t as risky as he thinks it will be. In fact, it’s not unusual. I would say eight times out of 10, companies that have to deal with this end up changing their name.

Richard Kula, principal at Winnipeg-based , formerly Sustainable Solutions

We were in nearly the same situation. We decided to change our name. It was a matter of a cost-benefit analysis. When you start to get lawyers involved, you could end up spending $100,000 and then not get a successful ruling. The uncertainty was the key issue.

We looked at our options and thought we might as well rebrand. We built a new website for $20,000, and changing the name, logo and letterhead was another $20,000. So it did cost something, but it’s much easier, quicker and more cost effective than litigation.

He may want to consider forming a new and separate company, so he can still work in Kingston under his original name. We still do some business in Manitoba under Sustainable Solutions. We’re winding up that company, but forming a new one gives us flexibility.

THREE THINGS SPACES SELF STORAGE CAN DO NOW

  • Make sure there’s a case.
  • Check to see if the company was the first business to use the name and has the records to support a claim.
  • Find more creative solutions.
  • Talk to the other company to see whether there’s a way everyone can use the name without interfering with each other’s business.
  • Find a new name. It may be easier to change the company name, especially if it isn’t well known. It could be cheaper, faster and offer the opportunity to rebrand more effectively.

Special to The Globe and Mail

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