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.

 

A Roadmap to Financing Your Business

Paola is the founder and owner of SUGARMOON, a sugaring business with three salons, take-home sugaring and organic body care lines, and the SUGARMOON training academy. In this instalment of her Women of Influence web series, The Truth About Entrepreneurship: My Life on the Moon, she shares her experience and advice on financing your business.

By Paola Girotti


As an entrepreneur, I have often heard the advice: “pull yourself up by your bootstraps.” But how does that work? We are often left holding our bootstraps and searching for someone to help us get them a little higher when we start a business. In running SUGARMOON, I have learned a lot about how my bootstraps alone aren’t going to cut it when it comes to financing, supporting, and growing my business.

My Roadmap

My financing journey began with a $10,000 loan from my mother to open the first SUGARMOON salon. How many of us have relied on family (or personal savings) to take the risk of turning our dreams into reality?

A few years later I was able to secure a line of credit from a bank to move and expand that salon. My home equity and good credit history allowed me to secure that funding—a luxury many of us don’t have as entrepreneurs.

A few years after that success, I accessed funds from a merchant lending group, Thinking Capital funded by CIBC, to fund further expansion and product development. These funds came with a large interest rate but I was lucky to generate the profits required to take that financing risk.

The next stage of my journey came with financing from the Business Development Bank of Canada to launch store number three. They supported SUGARMOON with expansion dollars for consulting and technology.

Throughout my journey, I have faced many challenges, and learned a lot about entrepreneurial financing in the process. My financing roadmap has been less than straightforward; it has been filled with potholes, uphill climbs, and enough smooth sailing to make the ride worth the effort. My chief regret: not accessing enough money to make a capital investment in SUGARMOON’s product in order to maximize profits.

Here’s what I learned from my experiences that can help you with financing your own business:

Big Banks

In order to secure financing from banks, entrepreneurs are assessed on their personal credit. How are we supposed to access the funds we need to establish and grow successful businesses if our personal credit is less than stellar? What do we do if we don’t have enough equity in our homes? What happens if we don’t have a guarantor/cosigner? Many of us are left without financing when faced with the banking lending rules.

I was lucky enough to have good credit, but I could not rely on banks to access enough capital to finance SUGARMOON’s growth. For those of us with cash flow-based retail and product development businesses, we may need to look for alternatives when financing our entrepreneurial dreams.

Merchant Lending

These lenders are a decent option for cash-flow based businesses with established profitability. Although I paid hefty interest rates on the funds, SUGARMOON’s profits offset some of the losses. If you use this financing option, bank on smaller profits. Do your research before taking this financing road.

Business Development Bank of Canada

The BDC really focused on helping us move from planning, to execution, to long-term success. They helped to calibrate my entrepreneurial GPS and to keep my business vision crystal clear while accessing the capital I needed to succeed. This is a great option I wish I had accessed sooner!

Other Options

If these options don’t work for your unique situation, there are alternatives. These may include putting in personal savings, or approaching family members (I was lucky to have a supportive mother at the start of my business). You can also seek a cash infusion from a venture capitalist or angel investors, but be prepared to prove your business case.

Whatever option you choose, stay focused on your business vision and financials to guide you along the way. When you find the right financing, you’ll be pulling up your bootstraps to keep your feet comfortable along the path to success.


 

During her fourteen years as the owner of SUGARMOON, Paola has experienced both the triumphs and the trials of being a female entrepreneur. In her Women of Influence web series, The Truth About Entrepreneurship: My Life on the Moon, she’s sharing stories and lessons from her journey as a business founder and owner. From financing, to expanding, to balancing motherhood, Paola offers a candid view and valuable insights for aspiring and fellow entrepreneurs.

Interested in more? Read other articles from Paola’s web series, or learn about her business at sugarmoonsalon.com

 

Tips for Mixing Motherhood with Entrepreneurship

Paola is the founder and owner of SUGARMOON, a sugaring business with three salons, take-home sugaring and organic body care lines, and the SUGARMOON training academy. In this instalment of her Women of Influence web series, The Truth About Entrepreneurship: My Life on the Moon, she shares her story of mixing motherhood with her entrepreneurial journey, and offers advice on how to do it well.

By Paola Girotti


In my last blog about deciding whether entrepreneurship is right for you, I mentioned that I had my first child not long after starting SUGARMOON. My son was born 8 1/2 weeks premature, a shock on the home front as well as the business. We had no room set up for my son, nor did we have plans firmed up on who would replace me at SUGARMOON. Luckily, we had started interviewing a month prior and our first employee, Flora, was able to jump in to help out a few days a week, she too with a six-month old baby. We were blessed to find a trained sugarist (I have come to realize, 14 years later, that this is a rare find).

My son remained in hospital for nearly a month, his lungs needing to develop. He also needed to learn how to suckle. I was pumping around the clock and recovering from a C-section, while my former partner took the helm and made sure the business was running smoothly. This was a difficult time for everyone, with the theme being fatigue—I was struggling with having a newborn, and my partner, with two children of her own, was working endless hours.

I had no plan, and a big reality check: this was having a baby while owning a business. EI was not structured to support entrepreneurs, so at home we discussed all options that would make sense for the family. In the end, my husband took paternity leave and I went back to work after eight weeks.

My schedule looked interesting. There were appointments, and blocks all along that read “pump”—which meant mooing in the back room with the pump hooked up to both breasts, or having Elias come over for a visit where I could hold him. He became a bit of a celebrity at SUGARMOON. I was showered with gifts and people were excited to see him. The situation was not ideal but it was working; there was stability at home, Elias was happy, and I was able to continue to build SUGARMOON.

My advice for entrepreneurs heading into motherhood?

Try to plan in advance what you will need. Look into your partner sharing maternity benefits, as we are so lucky in this country to have this support. Hire a nanny or nanny share to allow you to continue to focus on your business and help you with at-home routines to allow you the best time with your child.

I would also suggest taking time to consider the decision—if that’s still an option. Looking back, I likely would have waited to start the business. I would have loved to have the year off to spend with my son without a lot of worry. That being said, I have friends and clients that have chosen this path, and they have shared that there are pros and cons.

Know that feeling guilty is normal and a part of this process. Ultimately, your child will appreciate the hard work that you are putting into your life for the family. My kids are part of my business. I share all the marketing initiatives we have, and they get excited and appreciate giving their opinion.

I will never forget the day I visited my son’s school for their Mother’s Day’s breakfast, where he presented what he loved most about me. It started with “I love that Mama makes me pasta, I love that she reads me stories, she cuddles me, and she sugars people’s bikini lines.” The entire room roared laughing and I smiled with pride. Little did Elias know that he was my best marketing tool that day as many of the mothers approached me afterwards to ask me about sugaring. Many of those mom’s are friends and clients still today!

Motherhood and entrepreneurship may not be perfect together, but they are by far the best things I have done.


During her fourteen years as the owner of SUGARMOON, Paola has experienced both the triumphs and the trials of being a female entrepreneur. In her Women of Influence web series, The Truth About Entrepreneurship: My Life on the Moon, she’s sharing stories and lessons from her journey as a business founder and owner. From financing, to expanding, to balancing motherhood, Paola offers a candid view and valuable insights for aspiring and fellow entrepreneurs.

Interested in more? Read other articles from Paola’s web series, or learn about her business at sugarmoonsalon.com


Is entrepreneurship right for you?

By Paola Girotti

Paola is the founder and owner of SUGARMOON, a sugaring business with three salons, take-home sugaring and organic body care lines, and the SUGARMOON training academy. In this instalment of her Women of Influence web series, The Truth About Entrepreneurship: My Life on the Moon, she shares why she chose to start her business journey, and what you should think about before taking the plunge.


Do you have an idea for a business? Are you asking yourself, “To be or not to be?”

There are many things to consider before becoming an entrepreneur. There’s also a challenge that comes with weighing the pros and cons: when you’re really excited about your BIG idea, it’s easy to overestimate the positive.

Before launching SUGARMOON, I remember reading some books on how to start a business and it seemed relatively straightforward and appealing. Although I am not formally trained in business, I do celebrate that I have come from a long line of entrepreneurs and I can appreciate the hard work and dedication required.

I had a real vision of bringing the art of body sugaring to Toronto, a method of hair removal that I grew up with. I had the knowledge that there were few body sugaring studios that existed. So my former business partner and I left very lucrative jobs in the film industry, went back to school at 30 on a hope and a BIG dream that SUGARMOON would become a brand name in the world of hair removal.
Little did we know…

After the dream became a reality, we were both shocked by the minimal money we were making as owner/operators, the cost of overhead, and the cost of marketing in a competitive market place. We were putting all of our time and energy into the business, and although it wasn’t losing money, it certainly wasn’t turning a profit. By far our biggest challenge was raising our infant children—and staying happy at home—while doing all of it.

We worked for 2 ½ years in this way, and after much thought my amazing partner left the business to pursue a new career while I carried on with SUGARMOON. Failure was not an option for me, and it’s a decision that I am grateful for now. I believe in what I do and I continue to go the distance to develop SUGARMOON to its best potential.

Here’s my advice on how to decide whether to take the entrepreneurial plunge yourself:

  • Take a quiz (or two) on whether you have what it takes to be an entrepreneur. They are easy to find online (this assessment is a great example). Just be sure to answer the questions honestly.
  • Seek advice from other entrepreneurs. Ask them what initial steps they took in opening their own business. If you don’t have any personal connections, try attending conferences or networking events.
  • Ask yourself, do you believe in your vision? This is the most important factor. You need to be ready to commit to whatever it takes to get there.

During her fourteen years as the owner of SUGARMOON, Paola has experienced both the triumphs and the trials of being a female entrepreneur. In her Women of Influence web series, The Truth About Entrepreneurship: My Life on the Moon, she’s sharing stories and lessons from her journey as a business founder and owner. From financing, to expanding, to balancing motherhood, Paola offers a candid view and valuable insights for aspiring and fellow entrepreneurs.

Interested in more? Read other articles from Paola’s web series, or learn about her business at sugarmoonsalon.com