8 Figure Coach Forced to Rebrand: A TM Cautionary Tale - Solivagant Legal


8 Figure Coach Forced to Rebrand: A TM Cautionary Tale

March 21, 2024

Hello! Hope you’re having a great week. I was listening to an 8 figure coach’s podcast recently and she shared a painful experience that unfortunately, I see often. It’s so dangerous and potentially, very, very expensive, so I wanted to share it as a cautionary tale…

I don’t work with this entrepreneur personally, but admire and respect her, and am surprised it took her legal team so long to inform her; maybe she didn’t consult them until the last minute, but in my experience working with 7 and 8 figure entrepreneurs, legal is a part of every move (my highest earning clients are in touch with me as soon as they come up with a new name for something, before they’ve even created the offer!) Regardless, she shared publicly that it was the 11th hour before her new program when her legal team notified her that the name she chose for the program was in conflict with a registered trademark, so she couldn’t use the name. Like any of us who’ve launched would probably do, she then had a meltdown, before having to change the name, a name she was pretty attached to. And all of the corresponding expensive branding, promo, marketing, planned emails, etc. An expensive, heartbreaking, and very stressful lesson that actually could have been far more expensive if she’d launched and then been subject to a trademark infringement suit (most of these suits are $100k+!) by the owner of the registered trademark.

Lesson: Have a lawyer clear the name of any course, program, podcast, or other named offer you’re considering before you use it publicly.

When you’re developing a new course, program, podcast, etc., you need to have a lawyer clear the name before you’re in a position where rebranding is costly and/or meltdown-inducing.

You might be thinking: can’t I clear a name myself by doing a search of the Trademark Office’s database? In theory, yes, but here’s a recent example of why that’s not foolproof, and there’s no substitute for working with an experienced lawyer, either:

A business owner approached me about trademarking after she tried to do her own clearance search and didn’t find a name identical to hers. However, when I searched (with 17 years experience 😉 ), I found a name that wasn’t identical, but it was in the same industry, selling the same services, and was so close to the registered trademark as to be what the Trademark Office calls “confusingly similar,” so not only was the name not trademarkable by that business owner, but it was also potentially problematic from an infringement standpoint.

So you have an offer you want to launch…what do you do now?

Talk to a lawyer you trust and ensure the name is cleared before investing any money in the name (branding, marketing, etc.) But also, too, this isn’t just about playing defense and making sure you’re not “going to get into trouble.” Especially if what you’re creating is going to be a long term or signature offer, or will have high visibility (e.g. your podcast), you want to be able to trademark the name yourself and prevent anyone else from using it or anything confusingly similar, not just keep yourself from infringing. An experienced trademark lawyer can not only clear the name and make sure you’re not infringing on anyone else’s trademark rights, they can also assess the likelihood of your successful registration of the name you’ve chosen, and start the trademark registration process before you’ve even created your offer yet (this is called an “intent to use” registration and it protects the name as soon as we file, and then once you’ve launched, I supplement your registration). You can find out more here. If you’re just solely interested in clearing a name you’ve fallen in love with, and not ready just yet for trademark registration, choose the “Trademark Clearance Search” option for a full search and risk assessment of your name. If you decide to trademark the chosen name within 6 months of the completion of your Clearance Search, you can deduct the cost of the search from the trademark registration services cost.

Have a great weekend!