6 Ways a Trademark Can Protect Your Brand - 24

This is Law and Wit, Episode 24: 6 Ways a Trademark Can Protect Your Brand. Welcome to Law and Wit, Creative Counsel for Entrepreneurs. I'm your host, Brittany Rettell, mother of 4, entrepreneur, naptime lawyer, and attorney for creative entrepreneurs. I'm here to share inspiration and action so that you can tackle your business blocks and confidently own your business in every sense of the word. Thank you so much for being here. Hello friends, and welcome back. I'm so glad you can join me here as we talk about an important thing today, trademarks. And this is a really important area of law that deals with protecting your brand, protecting the look and feel, the way that your brand is different from all the other brands. And I know the word brand is really, it's really hot right now. It's so hot right now, Todd, to quote Zoolander. But even before we were talking a lot about branding, trademarks have been used in the United States for almost 100 years. More than 100 years, to protect someone's business and what they're selling, whether it's goods or services. And the reason why we think trademarks are so important is that because the whole idea is that a trademark is supposed to protect a consumer. It's supposed to allow the person who's the end user, who's at a store or who's now looking online— used to be looking in the Yellow Pages— when they're looking to purchase something, They want the confidence of knowing that when they look at a particular name or a logo or a slogan or a tagline, that they know what they're getting and that there's not— people aren't allowed to misuse or mischaracterize those particular words to make it seem like they're selling something that they're not. If you buy a brown shapely bottle with a red and white logo and white script that says Coca-Cola on it, the expectation is that you're buying a Coke. No one else is allowed to use all that particular type of marking, that logo, that script, that name. Coca-Cola has even taken steps to use trade dress for the way that their bottle shape is. So Coke has gone really hog wild for protecting their brand. We're going to just talk about just a few things today so you can get a really good understanding of the way trademarks work and if they might be a good fit for your business at this stage or if it's something that you want to think kind of slip in the back of your back pocket on your to-do list as you grow and scale your brand and your company. So, so let's get to it. Okay, so the first thing, I kind of want to give a walkthrough of the trademark process because I think this will allow you to understand why trademarks are important and, and how it happens and what the strategy is involved with protecting your trademark in whatever it is that you do or you're interested in doing. So As we talked about, so a trademark protects your business name, the name of whatever it is that you're selling, or your logo, or a slogan, or a tagline in any kind of class of goods or services. And the big misconception that I find most often when I talk to clients, like, and we have our first trademark powwow over the phone usually, is that people think that if you get a trademark in something, that protects your name in the whole wide world in whatever, you know, with your name. So take for example Delta. We're usually familiar with Delta Airlines, which is an airline company that's been around for a while. But if you also think about it, there's also a trademark in Delta Faucets. Delta, which is a bathroom hardware company that makes sinks and faucets and beautiful things that go in your bathroom. And both companies have a trademark in Delta. Well, how can that be? Well, no one confuses getting on an airplane to go somewhere with buying a faucet for their house reno. Okay? There is no confusion for a consumer there. And that's what trademarks are all about. The overarching phrase, if you can remember one thing from this podcast, is that trademarks are to prevent a likelihood of confusion. Okay? A likelihood of confusion. That's what we're worried about. We want to prevent people from being confused., and no one is confused about airplanes versus faucets. And so we let both groups use the word trademark because they are protecting it in a particular class of goods or services. And those services that they're both offering, or goods, are very different. And so no one is getting confused. So as you look to your own company to see, well, what would I get a trademark is, what it is, you know, what is it that you do? What are your offerings? What do you sell? And that's what you would try to get protection for. So, so the first step in the trademark process, you know, say we chat and I explain some of this to you, although you might not need this explanation now that you've listened to this episode, and you want to proceed with the trademark. I say, okay, I'm going to walk you through the steps. The first is that I'm going to do a search. And the reason why we have to, have to do a search, it's so important, is that we need to know what else is out there that might be using your name or a very similar sounding name that either sounds like or spelled like or in the right shading under the right light could be seen as very similar and again have that likelihood of confusion to whatever your name is. And we need to know what's out there because we need to know if when we approach the Trademark Office and make our argument with our application saying, "Hey, we'd like to protect this name in this particular thing that we're selling," we need to know if it's going to be a green light, meaning we have a really clear runway, we're probably not going to have any problems because there's nothing else similar in the space. Or if it's more of a yellow light situation where we think we have a good argument, but there could be some things that the Trademark Office could have a different opinion on, that there's some things that are confusing, maybe that sound similar or use some similar even names or transpose the names, you know, say you had a slogan with a couple different names and then someone argued that, you know, they also have overlapping use of those words. Or if we're dealing with a red light situation, meaning, and this is normally when you've probably been using this name for a while, otherwise I would probably just tell you let's move on, but you've already committed to this name, you've spent a lot of time and money, and you have the domain, and you have the social handles, and you have merchandise, and you've done a lot of work behind the branding, and yet we— it looks like we might be in trouble because we have something else already out there. In fact, already might have received a registered trademark that is very similar or exactly the same. Okay, and we need to know where we stand on here because that will, that will inform the way that we fill out this application and how broad or how narrow we're specify the goods and services. Does that make sense? Because the next step after we do the search is that we are going to start filling out the application and in there we have to describe what it is that you do. Not to get too deep lawyer nerd on you, but we have to include a description of the services. We're playing a careful little game here. We're doing a little dance. We want it to be vague enough that you can kind of continue to develop your offerings and your product line. We don't want to have to unnecessarily register for new trademarks unless we need to, unless unless, you know, you were in paper goods and stationery and now you're moving into clothing. Well, that's a completely different set of an industry, so we're going to have to register in clothing. Clothing is its own category. However, if you had, you know, journals and now you're doing greeting cards, well, those are both in the paper industry, so we might be okay. And if I've done my job well, then I've written your description in a way where we don't have to file a new trademark and we've protected your name in that whole area. But we also have to play the little dance game in that it needs to be specific enough that we are claiming that it's distinct and you're not stepping on someone else's toes. And so, and depending on how we need to phrase that description will depend on what we find out in our search. Okay, that's why this search is so important. So, and that's a huge reason why I highly, highly recommend that you hire an attorney to do a trademark, to work with you on getting a trademark. The reason why you will find if you do a Google search, you know, for trademark search, you know, you will get a whole bunch of results that promise you, you know, some low fee to help you fill out your trademark. If you read the fine print on these services, okay, you will find out that is not an attorney helping you. In fact, it might not even be a human helping you. It's just a robot that puts in whatever you put in this intake form directly into the trademark application. Well, guess what? That, that's just a form filler, okay? You can do that. You could go on the Trademark Office and website and fill it out now. Most of those services do not include a search, or if they do, they don't include a search by anyone who's actually trained to interpret those results and let you know, are these things we need to be concerned about or not? And there's certainly no strategy in terms of what class of goods or description that you're using in order to have an effective trademark. And there's usually also no help on the back end, which moves us to the next point in the process, which is What happens if you get an office action? Now, this sounds very, very serious, and it's no joke, but it's also not as serious as the UPSTPTO would make it out to be. So an office action means we've gone through this step, we did our strategy and search, we turn in our application, then we wait. We wait and wait and wait for a few months, and then one day we get a magical email that may or may not have the words office action attached to it. And if it is an office action, or an OA as we call it in the biz, It means this is a formal objection that the USPTO has against our trademark application. And it's the US Patent and Trade Office taking the position formally in a formal letter with all kinds of legalese and cases cited as to why they think that they cannot grant our trademark because there's something else out there that is— there is a likelihood of confusion against our word. That people would be confused, those poor mortals wouldn't be able to handle it, their brains would explode, and they don't think that we can get our trademark. If you've hired someone like me, then we take a look at that office action. I kind of quote out what I would think for me to reply to it. I give you that estimate, and then we can move forward with me helping you, and I draft a reply to that. I cite case law, and I do a formal brief. It looks very legally and official. I write it with pink highlighter. No, there's no pink. You know, that kind of sarcasm and fun is really lost on the USPTO staff, to their detriment. But anyway, we file a brief that basically says, no, it's not what you think. You don't understand this industry. When people are shopping for these items, they're very, you know, they're very sophisticated consumers, and they distinguish between these services. And for example, I was helping a client recently who works in the area of adoption services, and the trademark that we filed was similar. It had some transposed words for another person who works in the adoption services industry. Now, they're not selling the same things or doing the same services, um, not, not even close, but the USPTO thought, well, these words are kind of similar though, and they both have to do with adoption, so we're gonna send you an office action. Um, now I disagreed with that strongly, and so I wrote a very well-formulated letter in response to that, and I'm quite confident that we're gonna get that trademark is going to be successful and come through. But that just kind of gives you an example of what can happen in an office action. So sometimes they want you to disclaim words or translate words and show that this doesn't mean anything, it doesn't have any significance in a foreign language. Those are all sometimes things that you have to wade through. And you kind of use the DuPont factors, which are— is a famous case that establishes what, what is likelihood of confusion really mean and how do you negotiate that in between marks. So you go through all of that and hopefully you get a successful response in a few more months. And if you do, then yay, you have a registered trademark and you get a fancy certificate with the seal on it and you now have a registered mark that is officially in a public database and anyone who is curious could look it up and see and then you get to officially change your TM with the circle if you've been using that to an R with the circle. That is what the R with the circle means. It means stamp. It is a registered trademark that now you have the power to use in your business, okay? Which is great news and What's cool is that this brings me kind of to my next point. So the first was that you can protect your name, your logo, slogan, tagline, any of that. You can even protect and trademark smells or colors. They're a lot tougher to do because you have to show that those are— that when people see those, they immediately think of your brand. So it's not a cheap option per se, but it is an option. So that was our number 1, that you can protect your brand. Your number 2 reason why a trademark is so awesome is that you can stop infringement. And by this we mean if someone else now is using your word in their space, then you can go and you can stop them. You can file a cease and desist and you could say, hey, I need you to stop what you're doing. We actually have a trademark in that area. You'll attach a picture of your certificate with a description of it and it'll really have some legal heft to it. If you don't have that, if you just send a cease and desist and say, hey, pretty please stop what you're doing, that's my business name, Honestly, people are going to laugh at you. And certainly if they've talked to any legal counsel, they're going to laugh and be like, "Come at me, bro." So you want your threats against someone else— and threats kind of has a negative connotation, but you want the strategic protection of your business to have some teeth behind it. And you can do that with an actual trademark registration. You get the number, you get the certificate, you have something in your corner to say, "Hey, that's infringing on my mark and my business. I need you to stop that right away and/or pay me damages for the lost goodwill." will, for profits. Um, you know, you can really, you know, the sky's the limit in terms of what you can go after if people are really doing some harm to your brand. Okay, the number 3 reason is you can stop counterfeit goods. Um, yay! And this is a big deal to you if you are in a product-based business and you have problems with people counterfeiting your stuff, of people creating things that look like your stuff, that have the same types of of, you know, letters or coloring, or they, they look very similar and they're confusing to your customers to the point that people buy them thinking that it's yours. Um, and because they might be manufactured in a country that kind of has some problems with counterfeit— China, I'm looking at you. So although I did hear someone say the other day, which is a really true point, in that China isn't stealing your stuff, your neighbor is stealing your stuff and having it made in China, which So sad, but also so, so true. Because what happens is that people will, they will exactly take a copy of your product and they'll send it to a manufacturer in China and say, "Hey, can you make this?" And they'll say, "Oh sure, definitely. Yeah, we can do that." Here's a little note for you when dealing with sometimes with Chinese manufacturers, the answer will always be yes, even if it's no. So get a trusted manufacturer. And if you're concerned about infringement, then get your trademark registered and register it with the US Customs and Border Patrol. And they can help you actually stop goods at the border and check to see if there are counterfeits in there. I'm not saying it's an Iron Curtain situation where you're going to be able to stop everything, but it can certainly make a dent. And then you can also use that to go after websites that might have listings for counterfeit products and goods. Okay, so looking at you, Alibaba. Okay, um, number 4 is that you can use a U.S. federal trademark to file internationally. The benefit of having a trademark is that it is a federal trademark. Okay, you can file state trademarks, but they're a waste of your time and money. Don't even bother. Okay, you're selling to people all across the US, maybe the world. Get a real big boy trademark. And then once you have your US trademark, you can actually use it to file internationally and get protection overseas, which is awesome. Okay, you can put that— put that in your pipe and smoke it. Okay, number 5 is that you can package up your brand once it's trademarked as something that you can actually sell that to other people. And by that, I mean you can do franchising. You can do licensing. You can do other kinds of business relationships where you are selling access to your brand because your brand is a protected thing that people should have to pay to be able to use and sell in their own business. Does that make sense? So if you have a certification program that you have and people are going to pay for the privilege of being trained and using your program and using your marks and coloring and logos and graphics and name, then you want to make sure that you protected all those things. Otherwise, guess what? Someone could just use them. They could just use them right now, and you might have a tough argument, tough time arguing why they shouldn't be allowed to do that. So if you are interested in doing this kind of work where you are licensing, franchising, collaborating with other people, um, please, please take some steps to protect your brand so that you have something that you can sell. And when you approach those people and you write out your own little agreement and contract with them, you tell them exactly and spell out how they can use your marks and how they can't. You know, can they use them but they have to use the right symbol? They have to use your proper logos? Can they set up a domain using your same marks? Probably not. I wouldn't recommend that. But they could use it in their tags and they can write blog post articles on it, but maybe they can't use it as a social media handle. You can really drill down and be really specific with a kind of program like this, but the very first step in that process is to trademark your material, is to trademark your brand and the important brand elements that you have. Okay, and the last one is number 6, is that you are basically signaling to your customers and your competitors that you aren't going anywhere, that you're legit. You've changed your TM to your registered M, and your branding is distinct and different and thoughtful. You've been strategic and you've been comprehensive in reviewing what your offerings are and reviewing where you stand in your space, and you've made sure that it's not like anyone else's. In fact, you're so damn sure of that that you've gone on and you've trademarked it, and now you can stand behind that name and what you offer and say that this is distinct. You know, there's— it's hard to come up with original ideas, even for someone who does intellectual property law like me. It's very hard. You know, everything's a remix. I totally subscribe to that idea. However, no one can sell what you do like you. And the particular mix that you might have come together with the way that you sell and what you sell and how you sell it and why you sell it, if that is distinct and different and you've built your brand around it, then once you've trademarked it, you've kind of locked that and packaged that up all together. You've turned it into a beautiful little bow, you know, with a gorgeous bow on top and really pretty wrapping paper, and that's something that you could sell to other people, you can give to other people, you can package it up and display it with pride because you've taken all those steps to make it look really nice. Okay, you— it's hard if you're, you know, if you give a present and it looks like really crappy, you know, it's in like some dollar store bag that's falling apart, you know, the ones that like you've dug out there from the bottom of your bag package, your bag storage container, and it's like ripped on the side and you're like, oh no, it's okay, we're just gonna throw some more tissue paper and make it look okay. No, don't do that to your brand, okay? Make it look nice. You spent so much hard work and time and effort on making it important and serving and solving the problems that you wanted it, that you wanted to solve. Take that final step and lock it down, protect it, and make it official so that you can sell it the way that you want to sell it and present it to the world, and that anyone that is buying that thing is not confused. They know that they're buying it from you and that's what they wanted, okay? They're not going to be disappointed because they thought they were buying from you and and they were buying it from someone else, buying it from a competitor because there weren't those steps taken to protect it and distinguish it. Okay? So that's kind of the overview of trademarks. I will say that sometimes I get pushback from people saying, well, because a trademark is an investment, you know, people advise that I shouldn't tell you what pricing is for trademarks. You know, I should get you on a phone call. But look, I don't have a lot of time to mess around. I don't think you do either. So I'm going to lay it on you and say that trademarks are usually start around $1,000. $1,000, I know they're a huge investment. I won't pretend that they're not. But the reason they are is because I, you know, I walk you through all of the steps that happen when a trademark search happens for the strategy, for reviewing the application, reviewing what else is out there, for waiting on it, doing all those different steps. It takes time and money. And guys, and we know time is money. And what happens frequently— well, not frequently, but sometimes from clients— is they say, well, I don't think there should be a problem because I already did a search online. You know, I did a Google search and I have my domain and I have my social handles, so I'm pretty sure I'm good. Those are not trademark searches. So your domain doesn't matter. Your social media handles don't matter. Your LLC name doesn't matter. Those are all different registries. That's not the trademark registries. I'm going to be so bold as even searching in the test database, the trademark search database, is not very dispositive, and here's the reason. That database is your classic bureaucratic government database, and it's crappy. Okay, I'm gonna say it's super crappy. Here's a little test for you. If you want, go on that TESS database and search for Starbucks with two S's on the end, Starbucks, and see what you find up. It'll be a giant goose egg. Okay, how, how is that possible? You know Starbucks has registered their trademark. I'm sure among lots of things. They probably have a whole bevy of trademarks from their bevy of attorneys who's helping them with their brand. But the TESS database is old school and it has to have exact matches even though the law surrounding trademark is not exact matches at all. In fact, marks have been rescinded just because and denied simply because they sound similar or have the same kind of words. They don't even have to be spelled the same, they don't even have to be the exact words, but if they're similar enough to a trademark examining attorney, then they will reject them. Okay, so that's the rub, guys, as to why you really need a trusted attorney and someone who practices in this area like myself— shameless plug— or someone else who does trademark law to help you. The great news about trademarks is that because they're federal, I can do these for any clients across the broad nifty-fifty. So if you are sitting out there and saying, look, this sounds awesome, I'm legit, I want to be legit, it's time, you want to know what the next steps are, it's to sign up for one of my chats, one of my free phone consults where we can talk about your business, your business name, what you maybe want to protect in terms of the name of your business or main product lines that are really profitable to you. And I will tell you that usually it has to be something that is selling in commerce right now or soon to be selling. The Trademark Office does not really allow people to trademark squat. So while you might have a domain name for something, a future offering, if there's nothing really in the works yet, then it's probably not time to trademark that. However, if it is something that you're currently selling or soon to be, you don't even have to be profitable. I mean, you know, mobile apps will trademark stuff even though they're years— there's going to be years until they're actually making money. Um, but it does have to be something in commerce that you're offering. So, but you can sign up for one of those chats at brittanyritell.com www.markandpatent.com/services. You sign up, it's free 20-minute, we talk on the phone, and then we'll see if we want to move forward with the mark. I give you exact pricing and timeline, and then if you want, I send you— we, you know, we work further and I give you my intake form, and then we move forward and we get you your trademark going. Okay, today— I mean, probably not that day, honestly, but very soon. Okay, then we get you moving along. So, so that's what that looks like. So thanks so much for joining me here to talk about trademarks. I think this is such an interesting area of law that is increasingly becoming more important as people are now selling way beyond their local community. It used to be that if you sold something, you were concerned about selling it in your neighborhood shop or maybe in some other smaller distribution channel, and it was more about maybe the store or the pricing, or there are a lot of different ways that you are differentiating yourself in the market. The way that we now buy and sell online, and we have access to huge huge to much greater marketplace, um, means that it's, it's becoming even more important for you to distinguish your brand and for your branding to be on point and distinct and to really, um, be narrow, um, and tailored to what it is that you're offering and what problem is that you're solving for your audience. Okay, and a trademark is a really important tool in that process of getting all of that locked down, um, and for you to be successful. So I hope if you're interested, you'll take me up on, uh, chatting and we'll move forward. Um, I'll even give you guys a special little discount, okay? This is not something I normally offer, but if you listen to this episode and you want to sign up for a trademark and we have our chat and you decide to move forward, I will give you $100 off, okay, of your trademark. So that means normally it would be $1,000. For you, it'll be $900. The only thing you have to mention is the word pineapple. I know it doesn't have anything to do with trademarks. That's the point, people. And here's a short backstory on that. My friends, my closest friends in high school were all debate nerds like me. I know, shocker that I was on the debate team. I was. I triple-lettered in debate, thank you very much. And we tended to leave pretty long-winded messages. And this is at the time of the heyday of voicemail, obviously. And it got so bad to the point that we would start putting secret words in our voicemails to check to see, to actually do a friendship test to see if our friends were listening.. And one of the words that we sometimes used was pineapple because it's not a word that you usually throw in accidentally, you know, it's, it's, it's usually pretty purposeful and it's not something you mention unless you have a reason. So if you mention to me pineapple when we talk or when we email, then I will give you that deal. So, and if you do two trademarks, then I'll still give you the $100 off, whatever it is. So, so that's kind of what that looks like. If you're looking for other resources or freebies for me, please check out the other episode I have that talks about copyrights versus trademarks. That's episode 10. You might find that to be really useful if you're thinking about, well, I have stuff, is it copyright appropriate? Is it trademark appropriate? I break them down, what's a good fit depending on what it is that you sell in that episode. The other resource I'm going to direct you at is if you're interested in looking more about branding, if you know that you need to be doing something with the branding for your company and you're just trying to look for some good resources, I highly recommend Allison's Brand School. That's Allison Faulkner of The Allison Show on Instagram. She also now has Allison's Brand School, also on Instagram, a separate account. But she runs in-person workshops that are hosted in Utah, and they're amazing, and they're all about getting your branding done, okay? And she hosts them a couple times a year. They're worth flying in for, they're worth staying the night for. You get to meet amazing people, and you get to really drill down on what is your brand, okay? And she defines that as the personification of your brand. And you, if you haven't done that hard mental work to decide what that is, then I suggest you do that. And if you have and now you're ready to lock it down and make that speak with your greater brand vision and to get a trademark for it, then let's talk about that. Okay, I also recommend signing up for my newsletter if you haven't done that, and that's at brittanyratelle.com/newsletter. I'll also put a link here in the show notes, and you'll get a free legal checklist that will give you an overview of what you should be checking and kind of a bird's-eye view of the legal stuff that you need to be thinking about for your business. So if you're— if this is the first episode, or even if you've listened to all the episodes and you still haven't subscribed, and you're like, I, I know I need to be doing something, but I'm not sure what, and what's the right step, and I just— I need some, like, you know, first step guidance and where to go— that's the thing, okay? That's the checklist, that's the freebie that'll get you going in the right direction and at least get you some good questions to start asking of yourself or other trusted advisors that you may be working with, okay? BrittanyRattelle.com/newsletter. That's B-R-I-T-T-A-N-Y-R-A-T-E-L-L-E.com/newsletter. Thank you so much for being here. I really appreciate it from the bottom of my heart. And if you can leave a review or share with a friend, that would be great. Awesome. Have a great day, have a great brand, and I'll see you on the flip side.