Rebranding the company - a fight with the Patent and Trademark Office

Join Projectworks’ CEO Mark Orttung in this new series titled The Consulting Balance, as he shares experiences and insight from his career growing successful services firms. In his second article, Mark shares about a 2014 experience – when an internal debate about his company name triggered a legal situation involving another company and the US Patent and Trademark office, and why it was all worth it in the long run.

“Your Nov 2014 application to trademark ‘Nexient’ has been rejected because another company’s Dec 2014 application came first.”

We had already launched our new company name when we received this confusing notice from the US Patent and Trademark Office. We had spent over $100k on a new URL, a website redesign, and changing out all of the random things you have to change like signs and business cards.

Before I dive into what we did next, I’ll give some context:

In my first interview to come aboard as the new CEO of what was then Systems in Motion, I was asked what I thought of the company’s name. It seemed a weird question, but I gave a quick answer and moved on. When the second and third interviewers also asked me this question, I realized I was walking into a potential rebranding debate.

I didn't actually think it was a great name. It was too long so everyone would shorten it to “SIM.” There were already at least a couple of other organizations known by that name in our space, so I felt we should change. We also used SaaS software for everything we did and I didn’t want to type out my lengthy email mark@systemsinmotion.com as my username every time. I decided that while it’s painful to change names, it would be best to do it quickly and then get down to the changes I would make to scale the firm.

Four of the startups I’d previously worked in had rebranded, so I had seen multiple approaches to finding a new name. In one case, we spent over $100k on a naming company. In another, we went through a long internal process of brainstorming and vetting names before we had a last-minute suggestion from an employee’s spouse that won everyone over (we had to buy that URL from a porn site, but it was a great name for the company).

When our CMO suggested that we could use a new website, BrandBucket to buy both a name and the URL, I was interested. After a few sessions, we kept coming back to the name Nexient, which was for sale with URL for $5k. When we tested it, everyone either liked it or was neutral. I was surprised nobody hated it (usually people do). So we grabbed it and worked with an agency to redesign our website and launched it with an event at a conference with analysts and clients in attendance.

A week later, we got the crazy letter from the US Patent and Trademark Office. We had debated internally whether to file for the trademark at all. We decided we should and filed at the end of November. We didn’t realize it, but a Fortune 500 company had also landed on this same name for a whole new line of products and submitted their application a week later in early December.

I called our lawyer and asked how we address the issue with the Patent and Trademark Office, thinking that this obvious mistake would be easy to fix. Our lawyer said that I had thought wrong. There wasn’t a formal process to complain other than a 30-day window to dispute the other company’s application. To do so, we’d need to go through a process similar to a lawsuit and expect to spend more than $100k on discovery and depositions. We didn’t have $100k to spend, so I asked if there was anything else we could do.

The lawyer mentioned that for $500, we could automatically extend the 30-day window for public comment by a further 90 days. Figuring that at a minimum, this would buy us some time and get the other company’s attention, I decided it was worth a try. So on day 30, we filed the form, extending their window another 90 days. They wouldn’t know for sure if they had the trademark until the window had closed.

A day or two later I got a call from the other company’s lawyer. They asked me to give up on the name and in exchange, they would pay us $5k. Having already launched publicly, this was a non-starter and I told him as much. Things then went very quiet. An agonizing month later we received a notice that the other application for the trademark had been withdrawn and we were awarded it based on our second-place application. It turned out the company had a product launch scheduled and the additional 90-day window went beyond their launch date.

It was a wild ride, but with some luck and very little cost, it ended well for us.

There are a number of takeaways from this whole process:

Great names are valuable - as you are looking to build your firm’s reputation in the market, having a short, memorable name (and the URL to go with it) is really important.
We had another lucky side note: people always said that they had heard of Nexient when I was fairly sure they couldn’t have. I think that they were associating it with a heavily advertised medicine for heartburn called “Nexium” and it made our name seem familiar.
Be scrappy - it often seems like you need to spend a lot of time or money to get to a great result. Having been through this before, I thought that might be the case here. Thankfully my CMO suggested this scrappy process which seemed like a good solution. Luckily, it worked out really well.
Appear bigger than you are - a strong brand really helps propel a small firm to acquire new clients. One of the key foundation pieces of the brand is creating a strong name. As we looked to grow Nexient from a few hundred people to over a thousand, I’m convinced that our rebrand was key to speeding us up along the way.

A few final thoughts

People have asked me what makes a great name. I’m not an expert, but I’ve worked with enough wordsmiths to have learned a few rules:

Keep it short. The shorter, the better for a name. If it’s too long, people will shorten it to a nickname or an acronym;
Starting and ending with a consonant makes a stronger name;
Ending with an A makes it softer. Depending on your product or service, you may want a stronger or softer name;
Having an X in the name gives you bonus points for some reason.