The Sweet Payoff: How I battled a trademark bully, and won back my brand

Paola Girotti is the founder and owner of Sugarmoon, a sugaring business with three salons, take-home sugaring and organic body care product lines, and the Sugarmoon training academy. She spent ten years growing her successful brand — and then four years fighting a trademark battle that almost robbed her of the Sugarmoon name. She’s sharing the lessons she’s learned from the experience, and her big plans for the future.

By Paola Girotti

It felt like extortion. I wasn’t able to use the name Sugarmoon in the United States. I couldn’t open a store. I couldn’t sell our products. Another business had locked up the trademark, and it wasn’t because they had happened upon the same made-up moniker for their own brand. This was a calculated and strategic move: a competitor had trademarked Sugarmoon with the singular goal of stopping our U.S. expansion.

I spent four years fighting to get back what was rightfully mine.  

How The Battle Began

When I realized what had happened, my first reaction was one of shock. Who would trademark my made-up name in the States? The shock didn’t wear off when I found out the culprit was a former supplier of mine.

She had gone to extensive lengths to make sure I wasn’t going to be able to have any movement south of the border. The way that trademark law works, a business must prove that they have first use in the market to secure the rights of ownership. She had labeled some bottles with Sugarmoon, took a picture, and sent it to the trademark office. It was enough for her to lock in the name as her own, and block me from ever using it in the United States.

I have always thought that competition is good for the marketplace, but certainly she and I didn’t have the same objectives or strategies when it came to running a business. And so my four year battle began.

Winning Back my Brand

I had spent ten years building Sugarmoon, and I believed strongly in the importance of a brand — I wasn’t going to give up without a fight. After a year of deliberating on how to move forward, I hired a lawyer in Ottawa and one in the United States, and we entered negotiations. I couldn’t predict the final outcome, and so at the same time we began to prepare for the possibility of having to come up with a new name that we could own both in Canada and the U.S., enabling my goals of expansion.

“I believed strongly in the importance of a brand — I wasn’t going to give up without a fight.”

By 2016, after nearly four years of frustrating negotiations, I had little faith that we were ever going to reach an agreement that was reasonable. It felt like I was losing more than my brand name — I was losing my clear vision. We stopped all our marketing efforts, as it made no sense to push anything with Sugarmoon while the future was so uncertain. And while we kept fighting to keep our old brand, at the same time I had to come up with a plan to launch an entirely new one. We settled on a name, but I still had to figure out how to transfer over all my loyal customers, and rebuild the equity from over a decade in business.

As soon as we had a new name, I realized I had a new advantage. I phoned my competitor without my lawyers, and said: “I have a new registered trademark. I surrender.” I didn’t think we could ever agree on a price, so instead I told her she could have it — effectively stripping her of her power position. Not long after, we came to a settlement.

A New Beginning

We rightfully won our brand trademarks in the United States on December 19, 2016. And in the year that followed, we made up for lost time.

We went through the full trademark process in the US, protecting our brand name in all the different classes we hoped to operate in, from beauty products to salons. We updated our Sugarmoon logo and the look of our brand. We launched Sweetmoon, a product line for teens, and Babymoon, a line designed for babies — with forty new products between them.

It has been a very busy year, but I have 24 dedicated women on my team who are all as determined as I am to make the Sugarmoon experience the best it can be for our customers. And now that we have our trademark debacle behind us, we can focus on doing just that.

Lessons Learned

My trademark experience was a financial strain, an emotional burden, and a tactical nightmare — but it wasn’t a waste of time. I learned valuable lessons that I know will help to guide my business towards future success.

Looking back, I would have hired an experienced coach sooner to review my long-term vision. We had a comprehensive business plan and vision board for the company, but we didn’t have that experienced voice in the room to ask the question: “Hey, did you trademark that?” It was a bit of ignorance on our part. I now recognize the importance of detailed strategic planning around how to achieve a business vision, as well as the need to bring in outside help to fill in any experience or knowledge gaps that you and your team may have.

That includes seeking qualified legal counsel (in fact I suggest you do this on everything — from your brand trademarks to your HR practices). I never believed I would be in this situation with my business, but the reality is, I’m not even the only company our former supplier has targeted in her efforts to block her competition. Trademarking my brand name would have been a fraction of what it cost me to win it back, so I urge you not to make the same mistake. Legally protect whatever you use to differentiate yourself and create your own authentic voice.

At Sugarmoon, our authentic voice is continuing to pioneer eco-friendly alternatives to the beauty market. We remain committed to bringing responsible and effective products to women, men, teens, and babies. With this vision and our passion, I like to think of us as more than a brand — we are a movement. And now nothing stands in our way.