LET’S GET UP TO BUSINESS

Joey Vitale of Indie Law

Trademark Attorney Joey Vitale

Do you own your brand? Unless you’ve gone through the process of copyrighting and trademarking it, then you might not. That means that someone might be able to take your content and use it without your permission.

Attorney Joey Vitale can protect your company and your brand from improper use. His firm, Indie Law, specializes in Trademarking. They can help you keep your Brand Name, Logo, and Tagline protected from improper use by others.

Joey and Jordan sat down a little while ago and discussed the Trademark process and why every business owner needs to make sure they’re following the rules to keep their Brand safe. They talked about best practices, how to do the research, and when you should be contacting an attorney to help.

Joey Vitale is an attorney for thriving small businesses. He is one of the top-rated lawyers for creatives in the country. With his law firm, Indie Law, Joey works with creative small business owners to protect their passions and give them the legal foundation they need to thrive.

Indie Law offers innovative subscription plans, flat-fee packages, consultation sessions, and educational webinars. With these services, Joey focuses on the legal issues that matter most to creatives: business formation, trademarks, copyrights, and contracts. While based in Chicago, Indie Law serves business owners all over the country.

Episode 26: Joey Vitale of Indie Law – Full Transcript

Jordan Ostroff 0:00
So ideally, trademarks are a part of the naming process. Because when you decide on a name or a slogan, you probably do what most business owners do, you know, you run that Google search and see what pops up, you see if you can get the domain name, maybe you even think to run a search on the trademark database, which is the free database at USBTO.gov. But even that doesn’t show you all of the results that you need, because there might be a similar trademark that exists that would cause your own application to get refused.

Narrator 0:35
Picture a world where costs are down, profits are up, and customers are clamoring at your door. You’re listening to “Let’s Get Up to Business” from Jordan Law. Our interviews with business owners, service providers and area experts can teach you how to create a world of success and profitability. If you’re looking for an attorney to assist in your business formation, employment agreements, or other legal business needs, contact Jordan Law at 407-906-5529. You can also reach us on the web at JordanLawFL.com. Jordan Law, we protect you and your business.

Jordan Ostroff 1:31
Hello and welcome to “Let’s Get Up to Business” with Jordan Law. Joining me today is Joey Vitale with Indie Law. Thank you so much for being here.

Joey Vitale 1:39
Thanks for having me, you guys. This is awesome.

Jordan Ostroff 1:42
So our listeners are missing out on this just being a podcast and not a video presentation. The last time I saw Joey speak, he actually rapped for us. It was pretty funny.

Joey Vitale 1:52
Yeah, that was the first time I did that.

Jordan Ostroff 1:54
Really?

Joey Vitale 1:55
Yeah.

Jordan Ostroff 1:56
Oh, good for you, man. That was- I would not have guessed that was your first rap in front of a bunch of lawyers at a conference.

Joey Vitale 2:03
Thanks! Yeah, you guys are a hard bunch to get. I mean, I think I talked, I was the first talk that morning so I knew that I had to do something to get everybody’s attention.

Jordan Ostroff 2:13
Well, it worked. I still remember it. I can’t say I remember all the presentation.

Joey Vitale 2:17
Good to hear it.

Jordan Ostroff 2:19
So tell me a little bit about Indie Law and what you all do.

Joey Vitale 2:22
Sure. So Indie Law is primarily a trademark law firm. So we help new, growing and emerging businesses protect their brands as they grow. I’m sure we’ll get into this later, but one of the, one of the things that I learned when I first started my law firm and was kind of like a kitchen sink lawyer for business owners, was that out of all of the things that my law firm could have provided to business owners, trademarks kept popping up as this thing that clients said they wish they would have known sooner. And so we decided at that point to really just go all in on that one thing so that both our clients but also our potential clients and our, you know, anybody who kind of saw what we were doing, would understand that that’s the main thing that we were offering.

Jordan Ostroff 3:18
Okay, so we have somebody who’s listening, they know they have a trademark issue or at least a trademark question. What’s the best way for them to get in touch with you?

Joey Vitale 3:27
Sure, the best way is just to go to IndieLaw.com. That’s I-N-D-I-E, like in the film, not like short for Indiana, IndieLaw.com. And then from there, you can schedule a call with me. We’ve also got some resources that might be able to help you out as well.

Jordan Ostroff 3:45
So unlike Indiana Jones, I’m assuming the law firm is not named after a dog.

It is not named after a dog, is that where Indiana Jones is from?

Did you not know that?

Joey Vitale 3:57
No.

Jordan Ostroff 3:57
Yeah, he’s named after the dog.

Joey Vitale 4:00
That’s amazing. I had no idea.

Jordan Ostroff 4:01
That’s the- end of Last Crusade, you find that out.

That’s so funny. Yeah, no I, the firm is actually, it’s got kind of a long and windy story in terms of the name but we, we actually launched with our target market being Etsy store owners, and have since widened our demographic from that very specific niche to kind of online business owners in general, kind of solo artists, coaches, thought leaders, but I found this really interesting article called, I forget what it was called, but it coined the term indie creatives. And I really liked that phrase, and so I got IndieCreativeLaw.com, and then the person who owned Indie Law was able to sell it to me for a pretty good deal. So that’s kind of how we fell with that name. So I wish there was a dog but that, that’s not the case.

No, I like it. So, Indie Creative, I mean, that’s going to be, what like a, you know, Mom and Pop online type thing?

Yeah, it, the, the kind of, the way that it started was a lot of, a lot of accidental entrepreneurs were the people that were working with. So, people who sold something on Etsy and it went viral, or people who had been giving kind of great information through a blog available for years and then finally turned it into a bought- a blog or a book or an online course. And that was kind of the first audience that we started working with, and we still continue to serve that community. But the, the, the target has shifted somewhat to, to now, we kind of work with that same group of solo business owners as they transition from a hustling entrepreneur to like a rising CEO of a one man shop.

So I don’t know much, if anything about, you know, patents and trademarks, and we’ll get into that. But from my perspective, I mean, you’ve got to be one of the only people really targeting that market. You know, I think most of your patent attorneys are going to be looking for these, you know, Thomas Edison types who are doing a bunch of, you know, a bunch of different things or these large corporations just buying up patents left and right.

Yeah, yeah, it’s, it’s interesting. There’s not a whole lot of attorneys who do this type of thing, and I don’t do any patent work. But it’s interesting that you say that because I feel like there are kind of different groups of business owners within that kind of umbrella of entrepreneurs. And one is like the tech startups, or the inventors who definitely would need something like patents to protect their inventions, but I work with a lot of thought leaders and makers, where it’s less about patenting their work, and it’s more about making sure that their, their various brand assets that they’re using are protected. So we work with a lot of people who, they come up with a name for their podcast, and they want to make sure that they protect it because they don’t want to receive a cease and desist letter that they’re, they have to change their podcast that has hundreds of thousands of downloads, or same with like an online course or a signature framework that they talk about from the stage.

Okay, so then I guess that brings me to the first question. So what’s the difference between a patent and trademark?

So whenever it comes to intellectual property, you know, you have patents, trademarks and copyrights. You have other stuff, I know you guys as lawyers know that. But-

I honestly, I don’t. This is like real property, rule against perpetuity type stuff for me.

Joey Vitale 7:58
Yeah. It’s all a bundle of sticks, right? I don’t know if you remember hearing that in law school, but my law professor always said that in an intellectual property class. But when it comes to trademarks, patents and copyrights, patents are a trickier thing. Those really protect kind of new ideas. And when you get a patent, then that, that kind of protects your ability to have a monopoly on that type of invention for a number of years. I can’t speak to patents too much beyond that, except for the fact that most business owners, they think that they need a patent much sooner than they really do. So you just want to be careful with it. But when it comes to trademarks and copyrights, those are things that business owners should be thinking about really from the beginning. And I like to think about it in terms of like, whatever it is that you sell, even if it’s a service, think about it as a product and like as a packaged thing that you give to somebody. So if you give your customer this packaged thing, on the outside is the packaging is, you know, the name of your business, all of that stuff and on the inside is the content, that’s the thing that they are using. And that’s a very oversimplified way to kind of start to talk about how copyrights are the inside of that package and trademarks are the packaging.

Jordan Ostroff 9:27
Okay, so a trademark is going to be the name, the brand, the copyright is going to be the internal service system?

Yeah, so the typical things that are copyrighted are books, images, of course, if you put it together, your website and blog can also be copywritten. They, they really protect works of expression and there- it’s, it gets complicated very quickly. But I like to think about it as a copyright is something that it’s protected, because it’s inherently valuable. You putting that work into that thing, it has value automatically. Whereas a trademark is inherently worthless. Trademarks are only supposed to be valuable because you’ve built a reputation that has come to know that brand. So Apple is not an inherently great name for a computer company. Same with Target and Starbucks and all those other big brands, but they’ve become really powerful trademarks, because of what those businesses have done with growing that reputation over time.

Gotcha. So are you doing any of the copyright work or just the trademark stuff?

Just the trademark stuff. We do have some programs available and resources that can help people with copyrights. But the thing that you’ll want to take- that business owners should be taking into consideration more when they start is trademarks because if you don’t protect trademarks, or at least think about them the right way, when you start, you could be infringing on another brand from day one.

So, your ideal client is going to be that “about to be business owner” really on like day zero?

I mean, ideally, but they never come to us that quickly. Usually-

Well, that’s everything.

Joey Vitale 11:27
Yeah, usually we come to business owners because at the end of the day, you know, you, I know you guys know this because you work with business owners, but nothing really legally matters if the business doesn’t become successful. So I always recommend the business owners that I talk to, to just go out there and validate your concept, first. There are some things that you might be able to do on your own legally, just to get some basic foundational stuff started. But if, if the, if you can’t even sell the thing, then a lot legal stuff, you don’t even need to worry about yet. That being said, we work with mostly business owners that are projecting to hit six to multiple six figures in revenue, and have built a following of customers and leads and fans that they can’t afford to lose overnight.

Jordan Ostroff 12:23
So what are the, I guess, biggest problems or issues you’re seeing? I mean, it’s just not thinking about needing to protect your brand at all, or are there more technical mistakes that can be made?

Yeah. So, a lot of people just- trademarks are one of those areas of the law that have gotten mainstream enough to where people, they hear about it, they think that they understand what it means and so they think that they’re okay with whatever it is that they had done already. A lot of people think that a trademark is kind of just like this badge of honor that you can eventually get at some point in your business. Kind of like that, like verified stamp on Instagram and Facebook. But that’s not really how this works. If until you get a federal trademark registration, then you don’t have exclusive rights to your name, your logo, your slogan, which means that you could just be one cease and desist letter away from having to completely redo your brand. And depending on your industry, that risk that there, there could already be somebody out there with a name that’s similar to yours, can be much higher than in others. And so again, we work with a lot of online coaches, where kind of a lot of the good, the good kind of low hanging fruit names for a course are already taken.

So give me an example here. I mean, it- are we talking about the difference between, you know, Joe’s Coaching versus James’ Coaching or are we needing to get more specific than that?

Joey Vitale 14:08
So, interesting examples. You can, a lot of, a lot of people are starting to shift away from using their names in their businesses. And even if you don’t, your- that name is, that name can be trademarked. And we’re actually seeing that with a lot, with like photographers. So let’s say that I had like Stacy’s Photography and I decided not to trademark it, we worked with a photographer a while ago who asked me to run a search on some things and it looked like there are over 200 registered trademarks with like first name photography and so more and more people are choosing to claim that type of a business as a trademark.

Jordan Ostroff 15:00
That’s going to be 200 different names?

200 different names.

Okay.

Joey Vitale 15:05
And so even, like whether it’s a law firm or photography, those- again, those are more typical industries where someone like moves forward with a name. It’s still possible that even though you’re using your name, somebody else could already have claimed it. And there was an interesting law firm example of this not too long ago where a law firm that was, I think it was a guy’s- a law firm and a guy and his son were partnering together at a firm. They had a dispute, the son went out and did his own thing and then the father sent him a cease and desist letter, because he tried to use his own last name with his law firm.

Jordan Ostroff 15:50
Right, yeah, that was in, I want to say like, North Carolina or something.

Joey Vitale 15:55
I don’t know, it’s happened a couple of times, but not with those specific details.

Jordan Ostroff 16:00
Yeah, this was recent. It was, you know, the son was whatever Jr. and he couldn’t use, you know, he was basically copying his dad’s ads.

Yeah. But to give you guys just another perspective on this because this, this can show itself in a lot of different ways. Entrepreneur Magazine owns the word entrepreneur as a trademark in the industry of printed publications and media. And recently, they’ve been sending cease and desist letters to every single podcast owner with the word entrepreneur in its name.

Interesting.

Joey Vitale 16:36
And so whether or not there is actually trademark infringement is kind of a secondary concern to the question of, how likely are you to receive a cease and desist letter with this name?

Jordan Ostroff 16:52
So, I guess that kind of gets us into, how does a business owner know whether or not they need to trademark?

Joey Vitale 17:00
So ideally, trademarks are a part of the naming process. Because when you decide on a name or a slogan, you probably do what most business owners do, you know, you run that Google search and see what pops up, you see if you can get the domain name, maybe you even think to run a search on the trademark database, which is a free database at USPTO.gov. But even that doesn’t show you all of the results that you need, because there might be a similar trademark that exists that would cause your own application to get refused. So, again, ideally, we would, you would work with a trademark lawyer as you’re starting to commit to a business name to make sure that you can claim legitimate rights to it.

Jordan Ostroff 17:47
And that was USPTO. So, USPatentTrademarkOffice.gov?

Joey Vitale 17:52
Yep.

Jordan Ostroff 17:53
Okay, so we’ll make sure we put that in the show notes. So, that’s going to protect you, I guess, across the entire country, right? That’s going to be on a federal level?

Yeah. Right. So until you get that registration, you still do have some trademark rights. As soon as you start using a brand and commerce, you do have what are called automatic common law rights, meaning that you have exclusive rights in your region. So, smaller than the state, you have exclusive rights there. But with so many business owners, you know, relying on social media to help run their companies, that smaller than a state exclusivity is not, not the type of protection that you need to run your business with the peace of mind, knowing that your, your whole brand isn’t at risk of being taken down.

Now, you can also trademark things on a state level though, right?

You technically can, but no one really does anymore.

Because there’s just no benefit to it when you can do it at the federal level?

Yeah, and it, I mean, it costs almost the same too, so.

What is the cost for trademark?

It’s $225 per class. So when you file your trademark, you have to designate which class or classes your goods and services fall under and there are 45 different classes.

Can you give me an example of a couple of those just so we have an idea of how granular those are?

Sure. So one is for clothing, which includes everything from you know, hats to shirts to shoes. There’s one for educational services. There’s one for professional services that would include things like a law firm. There’s one for cosmetics and perfumes. And that, that’s interesting that you say that though, because as, you know, these classes were created a while ago and as technology is changing, it’s, it’s becoming clearer that some of these classes are more outdated. And so, trying to figure out which class is the best fit for you is becoming harder and harder to do, especially for more innovative businesses that are kind of pushing the envelope in terms of what it is that they’re selling.

So that 225, that’s going to be per year or that’s for the trademark for however it exists?

Great question. So once you apply, it’s not like filing for an LLC where you file the thing and you get like a confirmation either like immediately or like within a week. A trademark application process takes anywhere from six months to 12 months or more. And over 50% of trademarks that get applied for, end up getting rejected. So, that being said, once you get the registration then you do have the potential to have like lifetime protection for the registration but there are some renewal fees. So once it becomes registered, then five years after that, you have to file another filing fee. And then there are other filing fees every 10 years after that.

And so that six to 12 month process, I mean, that’s going to be time for other people with the same name to be able to object or is that not an important thing?

Yeah, so the there are two main obstacles when you apply for your trademark. The first is that the trademark office itself tries to find some reason to deny your application. And there are thousands of reviewing attorneys at the trademark office who, they get paid to find some reason to deny your application because the- part of their job is to keep the number of registered trademarks to a minimum, so that there’s more of like a free market when it comes to naming and branding things in your business.

Gotcha. So they’re, they’re set up to be against you to protect anybody else using that name.

Right. And so that’s obstacle one. And then if you make it through that obstacle, then the doors kind of open up for a 30 day window where anybody can challenge your rights.

Gotcha. Okay. That’s got to be like the worst job because you got to be sitting there thinking, you know, I had this idea first, or oh, that’s a great name, I can’t believe that wasn’t taken yet.

Oh, for the, for the reviewing attorneys?

Right.

Yeah, it’s, I don’t, I’m not jealous of what they do.

Like imagine sitting there and being like, oh my god, the Snuggie just came across my desk. How did I not think to flip a blanket the other way?

Joey Vitale 22:59
Right. Right. Yeah, they, it, there- I’ll say this though, a lot of business owners get frustrated with them because they are kind of, they can kind of be seen as bullies because of all of the rejection letters that they send. But the ones that I’ve talked to are, are so, they’re so thoughtful and they’re so, I mean, they’re in a tough position where they are trying to be as happy- like, allow for a good result kind of at large, for everybody, and at the same time respecting people’s trademark rights. And part of the reason why I say that is because there are more and more trademark trolls who are trying to use trademarks to hack the system. So, I mentioned before that I kind of started by working with Etsy store owners, one of the biggest reasons why that became a really great niche for me was because there were so many trademark trolls. What they would do is they would apply for a really common phrase like, I’m struggling to think of one now, but like, like Mama Bear, like we’re kind of in this- we might kind of be ending this phase now but for a while, if you went on Etsy, you would see a lot of like shirts with like cute sayings on them.

Jordan Ostroff 24:33
Right.

Joey Vitale 24:34
And what people started doing was applying for trademarks for those popular phrases. And if they got it, they would shut down every other store on Etsy so that they could be the only one selling that phrase, which is not how trademarks work. And so, a lot of business owners were understandably upset that these fraudulent trademark were working through the cracks. And so the trademark office has become more aware of that problem and has started creating more requirements under that category of clothing, so that it’s harder for business owners to kind of have those fraudulent applications go through.

Jordan Ostroff 25:19
Gotcha. I mean, and that makes total sense. If they approved every trademark, then at some point, there’d be no potential names.

Joey Vitale 25:27
Yeah, well, and we’re- that’s, that’s true. And at the same time, last year alone, half a million applications were filed. So, even though so many of them are being rejected, we are kind of quickly running out of trademarks, which is an interesting problem.

Jordan Ostroff 25:48
Do you foresee that becoming worse every year? Or do you think we’ll just hit a point where there’s nothing left to protect?

Joey Vitale 25:58
Well, I’m not sure exactly what will happen. But I, my team and I looked at the past 10 years of, or 20 years of applications, and the numbers have been kind of steadily rising each year. And so there might be changes in trademark laws. There, I mean, who knows what’ll happen? But the- one of the biggest reasons why it was happening so quickly, was that business owners outside of the US, or applying for coverage within the US.

Jordan Ostroff 26:30
Gotcha.

Joey Vitale 26:31
And this year, the trademark office enacted a new rule, saying that if you’re outside the US, then you cannot file for your own application, you need to work with an attorney to file it. And so we’re expecting that number to decrease after that rule.

Jordan Ostroff 26:48
Well, or at least hopefully, you’ll make more money.

Joey Vitale 26:51
Well, we’ll see.

Jordan Ostroff 26:53
Well, that’s why I thought it was interesting, you know, like Ohio State University, and I phrase it that way specifically because they just applied for a trademark on the word “the” which ended up getting rejected.

Yeah, so it was, it was initially- it received an initial rejection meaning that if they want to, they can try and respond to that rejection. I, I think that it’s interesting because they made some really dumb mistakes on the actual application. And I wonder if they wouldn’t have made those mistakes if it would’ve gone through.

I don’t know I’m not an OSU fan, so I won’t comment.

Yeah, me neither.

But that, to me, I mean, how do you- how could there be a way to get around something like that? Because then, what? Every piece of apparel with the word “the” on it is potentially in violation, no?

No, that’s not really how this works.

Joey Vitale 27:46
So, if they were able to get a trademark registered for the word “the”, that would mean that they would have exclusive rights to the word “the” as a trademark in the apparel space. Meaning that no other companies could have “the” operating as like a brand identifier. That doesn’t mean that people couldn’t use the word “the” on shirts or things like that.

Jordan Ostroff 27:46
Okay.

Oh, okay.

Joey Vitale 28:17
In the apparel space, there’s this distinction between trademark use and ornamental use. And so if a word is just written on the front of a shirt, that’s ornamental use, that’s not seen as a trademark because customers don’t usually look to whatever is written on a shirt as source identification. Unless it’s like, in like the chest pocket area or something like that, where usually a brand is located.

Jordan Ostroff 28:49
Gotcha. So there would still be another, I guess, legal tests for somebody be in violation.

Yeah, I think that they were, I mean, who knows what the actual strategy was, I have a feeling that they were just wanting to kind of have rights to the word “the” for certain branding things, but not necessarily wanting to exclude anybody else from it.

Gotcha. So for our, you know, normal business owner who just started a business, walk me through, you know, the questions they should be asking, or the red flags they should be looking for when they realize, hey, you know, I’ve got to push this trademark forward.

Yeah. So the first thing I would think about is just kind of at the naming stage, are you at a place where you’re committed to your name? And really thinking about kind of, where you are in that process, because we’re, again, like I said earlier, we’re starting to see more and more people choose not to go in the route of like their name with their brand. Mostly because they’re realizing that it, it’s hard to sell a business with your name on it. And also because it’s, it can be really difficult to market a brand that’s personal to a colder audience that doesn’t know who you are.

I’m well aware of that mistake that I made four years ago.

Joey Vitale 30:17
Oh, yeah. So, so when it comes to actually naming the business, that’s kind of where you want to think about trademarks. And really have it be a part of that kind of availability process in the naming. So ideally, you kind of go through a bunch of brainstorming, you have a handful of names, and then before you really commit to anyone, you just will want to do a strong comprehensive trademark search. You can start the process on your own but eventually I would recommend working with an attorney to run a comprehensive trademark search for you because the biggest, like I said, over half of trademark applications get refused. And the biggest reason for refusal is that it’s deemed too similar to another trademark, not the exact same but too similar. And so it’s hard to run that type of a search on your own. And so you can, you can run that search and then just remember that that search that you run has an immediate expiration date. Meaning that somebody could start using or apply for a trademark the day after you run that search. So ideally, you’ll, you know, either on your own or with an attorney’s help, file for a trademark as quickly as you can, once you’ve kind of validated that you do want to use that name moving forward.

Jordan Ostroff 31:43
So are they, can you trademark anything other than the name? I mean, can you trademark the logo? Can you trademark slogans?

Joey Vitale 31:50
Yeah, yeah, you can do all of that stuff. So we typically recommend kind of going in this order of first your name, then your logo in it’s black and white form, then your logo in it’s colored form, then any slogans. And you know, again, this changes depending on kind of where your brand assets lie and what’s, what would be the most expensive if you couldn’t use it anymore. But then things like a slogan, then things like your podcast show, a signature method that maybe you talk about, an online course that you’re selling. We are, and just to give you another example of how this can kind of backfire, I was talking to a group of business owners last week about this. It’s less about a potential lawsuit or just a dispute, but it really is becoming more about not receiving that infringement report through a social media platform. Because the way that everything works is that, you know, let’s just use Instagram as an example. Instagram doesn’t want to get roped into as a, as like a referee, if two business owners are disputing a trademark. So for the most part, if, if, if I report you to Instagram and say that you’re violating my trademarks, but I don’t have any evidence to back me up, they’re just going to let the two of us argue it out. But if I have a registration and you don’t, then they’re automatically going to take my side. And this happened, unfortunately to one of our clients were a competitor filed for a trademark that my client owned and then after they got the registration, filed for an infringement report through Etsy, got the domain, switched the passwords and then blackmailed the client.

Jordan Ostroff 33:53
Wow. And then, I mean, isn’t your client protected by having the trademark beforehand?

So, theoretically, yes, because they were using it first. But because they did not file first for the trademark, they had no evidence of being the first to use. So, the way trademarks work is that your- it’s really the first to use, not the first to have the registration that has the stronger rights. But if you don’t have a registration, then you don’t have strong evidence to show that you are the first to use.

You can’t just pull, you know, historical data on the website to show that it was there beforehand?

You can but to even start to prove that point, you have to get in front of a judge.

Gotcha. Wow. I mean, so that could be millions and millions of dollars and damage to a company.

Joey Vitale 34:46
Yeah, it could or it could be the, the- I mean with, with this particular business, it was an entire week of trying to figure out what to do and all of the sales that they lost that week because it was like, not just losing like a flat tire, but like all four tires going flat in the business. Just trying to deal with the situation.

Jordan Ostroff 35:15
Well, especially if Etsy’s where you’re selling everything from and now that doesn’t exist with you to have access to it anymore.

Exactly, exactly. And so, like I said, the more that we learned about all these issues, the more that we’ve learned that this, at least with our type of online business, is a much more immediate problem than having an LLC so in case you get sued, you have that liability protection or having a strong contract in place so that if there was an issue with the client, you know, if it went to court, you would be taken care of like these really are risks that, because we’re shifting to this more digital space for online business, and with more and more people saturating different industries, this is a very low hanging fruit for you to kind of lose your brand identity if you’re not careful.

Well, so are there, I guess, what’s the most famous example? Or are there famous examples of this stuff, or it’s going to happen mostly to smaller people and just ruin their whole business?

Joey Vitale 36:18
So that’s, that, and that, unfortunately, is kind of what we’re seeing is that a lot of the businesses just don’t have the finances to respond to these types of things. So, yes, maybe if they were able to take their issue to court, they might win, but they don’t have that, that time, that money, really that energy to do so. And so, what, what we, and again, it’s not when you look at it from that, and it’s not the, it’s not the potential rebrand that can be so damaging. But again, with a cease and desist letter, it’s that rebrand that’s under that like 30 day time crunch that can just be super stressful for a business. And that, you know, there are kind of more extreme examples, but that’s the more common one that we see a lot, is business owners getting blindsided by a cease and desist letter, and then freaking out and having to completely re, redo their branding, come up with a new name. And there’s just so much more, so many more steps than they would have thought would have to go into it. And so, you know, sometimes when we work with clients, we are not successful in terms of getting their registration, but at least then we can help them rebrand on their own terms on a timeline that makes sense with them instead of them having it become a huge red flag issue that they’re not planned to respond to.

Jordan Ostroff 37:48
So I mean, that’s not nearly as bad as a situation where the, your Etsy store gets taken down, or at least gets control given to somebody else. But that still can be, what thousand dollars in the change plus lost revenue plus, you know everything else?

Joey Vitale 38:05
Right.

Jordan Ostroff 38:06
Okay, so now that we have properly scared the poop out of everybody, what else does a business owner need to worry about, I guess when it comes to these trademark issues?

So, going back to what we said earlier, in terms of the trademark really being inherently worthless, as opposed to copyrights, this is something that we’re kind of taking our lawyer hat off and putting more of like a business coach hat on and helping our clients with, is realizing that as much as they might be emotionally attached to a name or a logo or a slogan, at the end of the day, there’s no such thing as like a perfect name for them. And so when we, when we can help them with the trademarks that they want to move forward with, again, 90% of the time, they came to us later than they probably should have, hopefully, we can still get them a good, a good result. But if not, you know, this is, this is an opportunity for them to, a lot of times, build a brand that they end up liking even more. The- out of the clients who we haven’t been able to be successful the first time around, the ones who we’ve helped with their, you know, second applications after they’ve kind of gone back to the chalkboard, they’ve actually really liked their new names. And so we try and do what we can to make that whole journey be as positive as it can be because we know it can be frustrating.

And those situations, though, most of the time, is that going to be a 30 day cease and desist or that’s going to be trying for it and then realizing that it was, it’s not going to get cleared?

So in most situations, it is filing for the trademark application, the trademark application getting denied.

Okay.

Joey Vitale 40:17
And then them figuring out how to move forward because at that point, you had been told that you cannot get your business name or whatever it is, registered at the federal level. And once our clients go through this process, and they learn how powerful that registration is, they usually want to make some tweaks to their branding so that they can get that registration.

Jordan Ostroff 40:44
Well, yeah, you know, it’s only a mistake if you don’t learn anything from it.

Joey Vitale 40:47
Right.

Jordan Ostroff 40:49
It’s very interesting. Any- anything else that we need to cover? I mean, obviously, these are going to be very case by case specific needs and, and, you know, trademarks and everything.

Yeah. So one thing that might be helpful to your listeners is talking about the little symbols that you see, those trademark symbols. So that circle R that you might see after a business name, that stands for a trademark that is registered. So like we’ve been talking about, once you get that trademark registration, then you can start using that circle R symbol. But you might see a little TM or sometimes a little SM after a name or a phrase And that little TM or SM, you don’t need to have a registered trademark for and you don’t even have to apply or do anything. So if you haven’t yet registered your trademarks or even applied, you can still go ahead and start using those symbols. If you want to just kind of put everybody on notice, and practically, just kind of start to turn people from copying what you’re doing because they see that to some degree, you’re claiming trademark rights over your brand.

And what’s the SM?

So the SM actually stands for service mark.

Oh, okay.

Joey Vitale 42:12
And so, technically, if you’re selling a service as opposed to a product, then you would use the SM but trademarks also exist as just like an umbrella term to cover both the trade and trademarks and service marks.

Jordan Ostroff 42:28
So is there any downside to somebody just doing the circle TM or circle SM?

So just to clarify, it’s not the, if you’re using the TM or the SM, then you don’t put a circle around it.

Oh, okay, sorry. So it’s not circle.

Joey Vitale 42:42
I’ve looked at these forever. So- the, is there any downside to not using them?

Jordan Ostroff 42:49
I mean, versus doing nothing. Obviously, a registered trademark is going to be a lot better than just writing TM.

Joey Vitale 42:55
Yeah, so the only downside, and this becomes kind of strategic, is if you are, for whatever reason, applying for a trademark maybe, or seeing something that’s happening, but you don’t, you don’t want the wrong person to see that you’re claiming this as a trademark, then you might want to shy away from it. So this happens very, very rarely. But sometimes we’ll, we’ll have a client who is starting something new. And they, they won’t use the TM symbols or anything until they get past that opposition period. Just so that they don’t kind of raise any ears of people who might be seeing what they’re doing, and thinking to issue a challenge on their application.

Jordan Ostroff 43:51
So you mean like after that 30 day window?

Joey Vitale 43:55
Yeah.

Jordan Ostroff 43:56
Okay. And so then they would throw up the TM until, you know, five to 11 months later, it gets cleared, hopefully, and then just make it the registered trademark?

Yeah. And again, that’s not really something that we recommend. But sometimes there are very risk averse business owners who just want to, they think that they’re being watched. And so-

I mean, I have paranoid clients as well, but usually it’s the, usually it’s not the business clients, it’s the criminal clients.

Joey Vitale 44:23
Sure, sure.

Jordan Ostroff 44:26
All right. I mean, so that, have we covered a, you know, basic 101 trademark here or is there anything else?

Joey Vitale 44:34
I think that’s about it. The, the main kind of lesson that I have for people is that everybody has some type of a trademark. The real questions are, you know, how at risk is your brand of somebody, also claiming it and filing it against you? And then, if, if there is some type of a risk, then it’s probably a question of when, not if, in terms of you seeking your own registration.

Jordan Ostroff 45:09
All right, that, I feel a little bit better then, right? That’s our ending it on a high note or a good note.

Joey Vitale 45:16
Yeah.

Jordan Ostroff 45:18
Okay, so now that we’ve gone through this, now that we’ve convinced that listener that they have to get their trademark stuff started now, can we have your contact information one more time?

Sure. You can just go to IndieLaw.com.

All right, and that’s I-N-D-I-E?

Joey Vitale 45:37
That’s correct. Yep.

Jordan Ostroff 45:39
Alright, so then, let me do our little pitch and then we’ll wrap up the way that we wrap up all these podcasts. Relatively new podcast, I think this will probably end up being Episode 25. We’re available on iTunes, Stitcher, Last FM and anywhere else they’ll let you post a podcast. So if you’ve listened and you enjoyed it. You know, if you didn’t enjoy me, but you enjoyed Joey, we’d still love a wonderful, honest review. And then that brings us to the end, the way we end all of these. If somebody has listened to this podcast and they take nothing else from it, what’s that one piece of advice you want as many business owners as possible to know?

You don’t own your brand, unless you register your trademarks.

All right, you don’t own your brand unless you register. I like it. It’s that business personal empowerment type thing.

Joey Vitale 46:28
Yeah.

Jordan Ostroff 46:29
All right. Thank you so much for joining us.

Thanks for having me.

Narrator 46:34
You’ve been listening to “Let’s Get Up to Business” from Jordan Law. We hope you’ve enjoyed the podcast and would consider sharing the show. We would also love an honest, five-star review through iTunes, Spotify, Stitcher, or whatever podcatcher you use. If you are interested in being a guest on the podcast, please contact Producer Mark through email at [email protected] Use the subject line “Podcast Guest” in your email. Thank you. We look forward to speaking to you again soon.

Transcribed by https://otter.ai

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