121 – Should You Trademark, Copyright or Patent with Todd Timmerman of Shumaker, Loop & Kendrick
Todd Timmerman is a business lawyer specializing in intellectual property protection.
His practice spans a wide range of intellectual property and technology-related litigation and transactional matters.
Todd assists clients in crafting sound intellectual property protection and enforcement strategies. This secures and maximizes the value of their critical intellectual property assets. He also handles trademark and copyright registration matters as well as licensing, transfer, and other business transactions.
Todd co-chairs the firm’s Intellectual Property Law Practice Group. He is AV® Peer Review Rated by Martindale-Hubbell and certified as an Intellectual Property Law Specialist by the Florida Bar Board of Legal Specialization and Education. Certification is the highest level of recognition by The Florida Bar of the competency and experience of attorneys in the area of Intellectual Property Law. Todd has been recognized by Best Lawyers, Florida Super Lawyers, Florida Legal Elite, and was named by Best Lawyers as “Tampa Litigation – Intellectual Property Law Lawyer of the Year” in 2017.
Todd’s Story
How Todd started and became interested in law. [2:40]
Definitions
What is a trademark? [4:30]
What is a patent? [5:14]
What are trade secrets? [5:58]
What is a copyright? [6:49]
Business Building Insights
How to protect yourself with employees and trade secrets. [9:21]
Understand when your copyright protection begins. [10:01]
Should you file for a formal copyright? [11:55]
Protecting your company name. [15:18]
Selecting your company name. [17:34]
Next steps as a new business. [20:30]
How to find a lawyer. [25:08]
Understanding the significance of your intellectual property. [25:52]
Productivity/Lifestyle Tool
Q&A Desk Reference Sheet [28:19]
Recommended Reading and Listening
Contact Links
If you found value in this podcast, make sure to subscribe and leave a review in Apple Podcasts or Google Podcasts. That helps us spread the word to more makers just like you. Thanks! Sue
Transcript
Hi there.
Speaker:You're listening to gift biz unwrapped episode 121.
Speaker:A trade secret can last forever.
Speaker:As long as you can keep something secret,
Speaker:you can own it sort of like the Coca Cola forum.
Speaker:Hi, this is John Lee Dumas of entrepreneur on fire,
Speaker:and you're listening to gifted biz unwrapped,
Speaker:and now it's time to light it.
Speaker:Welcome Nick gift bears ad wrapped your source for industry specific
Speaker:insights and advice to develop and grow your business.
Speaker:And now here's your host Sue Mona height.
Speaker:Hi there.
Speaker:It's Sue and welcome to the gift biz unwrapped podcast.
Speaker:Whether you own a brick and mortar shop sell online or
Speaker:are just getting started,
Speaker:you'll discover new insight to gain traction and to grow your
Speaker:business. And today I have the pleasure of introducing you to
Speaker:Todd Timmerman with Shoemaker and Kendra.
Speaker:Todd is a business lawyer specializing in intellectual property protection.
Speaker:His practice spans a wide range of intellectual property and technology
Speaker:related litigation and transactional matters for the firm's clients.
Speaker:Today. We're going to focus specifically on trademark and copyright registration
Speaker:matters since these are the questions that frequently come up within
Speaker:our industry,
Speaker:Todd's been recognized by Florida,
Speaker:super lawyers,
Speaker:Florida, legally lead,
Speaker:and was named by best lawyers as Tampa litigation,
Speaker:intellectual property law,
Speaker:lawyer of the year in 2017.
Speaker:Right now this year,
Speaker:you guys.
Speaker:So we can be assured that we are getting top notch
Speaker:advice. Todd,
Speaker:thank you so much for joining me this morning.
Speaker:So this is going to be super crazy for you,
Speaker:but since we're all creatives,
Speaker:everyone who's listening into the show.
Speaker:I like to begin by having you describe yourself in a
Speaker:creative way,
Speaker:and that is through a motivational candle.
Speaker:So if you were to give me a color and a
Speaker:quote that would resonate and tell us what you're all about,
Speaker:what would your motivational candle look like?
Speaker:Well, I guess if you're asking what color it would be
Speaker:multiple colors,
Speaker:it would be yellow,
Speaker:orange, red.
Speaker:And the reason I say that is that's the colors I
Speaker:see every morning when I go out for my morning walks
Speaker:and it just reminds me that,
Speaker:you know,
Speaker:I got to start when the sun comes up,
Speaker:work till the sun goes down,
Speaker:but I don't want to miss any minute.
Speaker:And you're also going to make us all totally jealous.
Speaker:Cause you're sitting in Florida in a beautiful area and you
Speaker:had just had to bring that into the conversation,
Speaker:right, as one coming from Chicago,
Speaker:but we have listeners all over.
Speaker:So I know everybody has nice environments that they can also
Speaker:tag into here,
Speaker:but why did you get into law in the first place?
Speaker:I didn't really want to be a lawyer.
Speaker:I kind of had a different picture of what law is
Speaker:all about when I was growing up,
Speaker:my dad was a lawyer,
Speaker:but he was in a completely different area.
Speaker:And when I discovered that there was this whole area of
Speaker:business law,
Speaker:it was pretty attractive.
Speaker:My son asked me one time,
Speaker:what I did for a living when he was about Oh
Speaker:four years old and was probably disappointed to find out I
Speaker:didn't drive tractors all day,
Speaker:but he asked me what I really did do.
Speaker:And I had to stop and think for a minute.
Speaker:And I told him,
Speaker:I help people solve their problems.
Speaker:Best parts about this profession.
Speaker:That is,
Speaker:are things that,
Speaker:you know,
Speaker:we train and we study and we read and I can
Speaker:help people move their businesses forward with that experience and knowledge
Speaker:that I've gained from what I've done for other clients.
Speaker:All right,
Speaker:well, let's dive right into this.
Speaker:Now. This is going to be really interesting because a lot
Speaker:of people are just starting out.
Speaker:They make jewelry or candles or they're opening a gift shop.
Speaker:The business is all new.
Speaker:And at that point there are so many places where you
Speaker:have to spend your money.
Speaker:And the question comes up.
Speaker:You know,
Speaker:people will search for a name of a business and all
Speaker:the other elements that go into starting the business.
Speaker:And they obviously don't want someone to take it,
Speaker:but money's tight.
Speaker:So the question comes up,
Speaker:do I copyright?
Speaker:Do I trademark?
Speaker:What are all these things?
Speaker:Do I need to do it now?
Speaker:Should I do it later?
Speaker:And so I think all of these are things that we
Speaker:want to talk about and kind of provide some direction today.
Speaker:The best way I'm thinking we should start is just by
Speaker:defining what some of these are.
Speaker:So I know we have trademarks,
Speaker:we have copyrights trade secrets and patents where the four things
Speaker:we talked about pre-interview so let's just go through a little
Speaker:bit of these and explain to us what they are.
Speaker:Let's start there.
Speaker:Sure. Trademark is what you mentioned.
Speaker:And that's what most people think of when they're thinking of,
Speaker:of IP law,
Speaker:either that or a patent,
Speaker:but a trademark is a name.
Speaker:It can be a symbol.
Speaker:It can be a slogan.
Speaker:It can be anything that is used to identify your business
Speaker:as a source of the products or services that you're selling.
Speaker:So for instance,
Speaker:it could be the name of your flower shop.
Speaker:Jenny's flower shop.
Speaker:It could be a design like the Microsoft flag is a
Speaker:real good one to think of.
Speaker:And when people see that little icon,
Speaker:they know that's Microsoft,
Speaker:it can be a slogan or flowers are the best in
Speaker:the world.
Speaker:It can be a color by its familiar with the pink
Speaker:insulation and pink is a color.
Speaker:It can be a sound or smell.
Speaker:There's really anything that identifies the source of your business.
Speaker:And that's really what most people think of.
Speaker:When they're thinking about IP law.
Speaker:A patent is another thing that's pretty well known and the
Speaker:differences a patent protects an invention.
Speaker:So if you've come up with an invention,
Speaker:you can file for a patent,
Speaker:probably the most expensive form of protection to get,
Speaker:but it can be very valuable.
Speaker:It gives you a monopoly to make the thing you've invented,
Speaker:and that can be a device.
Speaker:It can be a process.
Speaker:There are plant patents and their design patents were sort of
Speaker:overlap with trademark sometimes.
Speaker:So if someone,
Speaker:for example,
Speaker:was a jewelry maker and they created a new way of
Speaker:putting together metals or something like that,
Speaker:would that then be qualified as a patent.
Speaker:It could possibly okay.
Speaker:A very valuable,
Speaker:but that's exactly the kind of thing that would patentable.
Speaker:And then there's trade secrets,
Speaker:which is sort of the backside of the coin to a
Speaker:patent. In order to get one,
Speaker:you have to disclose to the patent office exactly how to
Speaker:practice your invention,
Speaker:a trade secret.
Speaker:You keep secret.
Speaker:And if there is something to keep secret,
Speaker:if you're able to keep it secret,
Speaker:it can be extremely valuable.
Speaker:So think of it this way with a pen and you
Speaker:have 20 years from the date,
Speaker:you file your patent application as your monopoly on the patentable
Speaker:invention. At that point into the 20 years,
Speaker:it goes into the public domain and anybody can practice it,
Speaker:but a trade secret can last forever.
Speaker:As long as you can keep something secret,
Speaker:you can own it sort of like the Coca-Cola formula.
Speaker:And the nice thing about a trade secret is it's free.
Speaker:All you have to do is keep a secret and that
Speaker:can be even more valuable than a patent in some ways,
Speaker:but in order to keep something shaker,
Speaker:do you have to take measures to keep the secret?
Speaker:And then there are copyrights.
Speaker:Copyrights are things in forms of expression.
Speaker:So if you write a book,
Speaker:you paint a painting,
Speaker:you take a photograph from the moment you create that work.
Speaker:The copyright act gives you protection.
Speaker:You can register your copyrights in order to get further protection.
Speaker:For them enable you to pursue an infringer of your copyrights,
Speaker:the copyrights protect those forms of expression.
Speaker:So creative expression of one way or another,
Speaker:I guess,
Speaker:Exactly something artistic or something that is an expression of a
Speaker:concept. Okay.
Speaker:A couple of questions for you here.
Speaker:Let me go back to the trade secrets for a minute.
Speaker:If it's secret,
Speaker:how do you formally protect it?
Speaker:The way to protect it is to keep it secret.
Speaker:So in other words,
Speaker:if you have a shop and there's some secret formula there,
Speaker:some secret process that you can't figure out just by looking
Speaker:at your product,
Speaker:even you did make sure that if you have employees who
Speaker:know that secret,
Speaker:they have a nondisclosure agreement with you as part of their
Speaker:employment agreement.
Speaker:You don't leave it in a place where somebody who walks
Speaker:into your office can see it or find it may keep
Speaker:it in a locked cabinet,
Speaker:or maybe you have a security areas in your office or
Speaker:your building where people can't go,
Speaker:unless they have a card,
Speaker:things of that nature.
Speaker:You just do whatever it's reasonable to keep it from falling
Speaker:into other people's hands who don't have any obligation to keep
Speaker:it. Okay.
Speaker:So the first thing that comes to mind for me with
Speaker:our audience might be bakers who have special recipes,
Speaker:maybe they're family recipes,
Speaker:or there's a secret ingredient that they're using.
Speaker:That makes a different flavor that nobody really knows about.
Speaker:So the protection there,
Speaker:as you're saying is obviously you do everything you can to
Speaker:keep it secret.
Speaker:And then additionally its employees and the nondisclosure.
Speaker:So that's more of the formal aspect,
Speaker:the legal aspect,
Speaker:having people sign and non-disclose That's right.
Speaker:And it can be,
Speaker:you know,
Speaker:part of your,
Speaker:if you have an employee handbook that you give your employees,
Speaker:when they start working,
Speaker:that they acknowledge that can be their agreement,
Speaker:but yeah,
Speaker:recipe, it is a perfect example.
Speaker:Somebody might know,
Speaker:generally what's in the recipe by tasting something.
Speaker:If they that talent,
Speaker:or maybe they could try to reverse engineer it through chemical
Speaker:testing, but discovering the exact proportions is extremely difficult.
Speaker:And if you know those you're baking taste better than anybody
Speaker:else's because of that secret Formula.
Speaker:All right.
Speaker:So if anyone's in that situation,
Speaker:make sure,
Speaker:and even,
Speaker:I guess you could say today,
Speaker:Todd, if someone hadn't been covered in that way,
Speaker:just to now make sure all of your current employees are
Speaker:signing that agreement.
Speaker:That's right.
Speaker:I mean,
Speaker:your employees do have sort of a inherent obligation not to
Speaker:share things,
Speaker:but you need to make sure they understand and they've agreed
Speaker:to keep it secret.
Speaker:Don't tell their wives,
Speaker:don't take it home and share with their friends that,
Speaker:Hey, we have this great recipe that we use at the
Speaker:shop. I'm going to make it a home,
Speaker:right. Things of that nature.
Speaker:So they need to understand,
Speaker:alright, Move on to copyrights,
Speaker:which I think because we're creatives here,
Speaker:this would be a big one for people because we have
Speaker:artists who are doing paintings or people who are making,
Speaker:let's say greeting cards,
Speaker:you know,
Speaker:all different types of things.
Speaker:Do you have to copyright each and every creation that you
Speaker:make, or how does that work Was thinking about copyrights is
Speaker:they arise just by operation of law when you create something.
Speaker:So you already have protection.
Speaker:The moment you create something.
Speaker:And if it's created by your employee,
Speaker:who's working within the scope of their employment.
Speaker:You own that as well.
Speaker:That area people run into trouble is when they hire a
Speaker:contractor, an outside party to make something for her,
Speaker:the most common example is a website you've paid for it.
Speaker:You think you own the website,
Speaker:but you have no written agreement with the website creator,
Speaker:guess who owns the copyright,
Speaker:the website creator.
Speaker:And I've seen people,
Speaker:it stuck up over that where they,
Speaker:they think they're in the website.
Speaker:They want to go make some changes to it.
Speaker:And then they get a letter from the website designers,
Speaker:lawyers saying,
Speaker:Oh no,
Speaker:you have to come back to us if you want changes
Speaker:because we own the copyrights.
Speaker:But back to what copywriters did it arises.
Speaker:When you create something,
Speaker:you don't have to register your copyrights immediately and you need
Speaker:to be judicious because there's only so many dollars to go
Speaker:around. Copyright registrations are pretty inexpensive.
Speaker:These days are about,
Speaker:I think $30 is the online filing fee.
Speaker:If you do it electronically.
Speaker:But imagine all the things you create,
Speaker:create brochures.
Speaker:You create a website,
Speaker:you have trade pieces that you pass out at trade shows,
Speaker:you have copyrights.
Speaker:And every one of those things and where a lot of
Speaker:people get upset is when their advertising gets ripped off by
Speaker:a competitor who takes a photograph that you had,
Speaker:and it takes it.
Speaker:Some texts that you had in your brochure happens all the
Speaker:time. Very frustrating,
Speaker:because you put a lot of effort into it.
Speaker:But the nice part is you can even register your copyrights
Speaker:after an infringement takes place.
Speaker:And the reason you need to register the copyrights is because
Speaker:you can't file a copyright lawsuit without registered copyrights.
Speaker:But the downside to registering your copyrights after infringement is you
Speaker:don't have right to statutory damages,
Speaker:which are presumed for performa damages.
Speaker:You don't have to prove or attorney's fees and that can
Speaker:make it very difficult and maybe overly to protect your copyrights.
Speaker:So you want to think about,
Speaker:as you create things,
Speaker:what would I be upset if a competitor took it?
Speaker:There are things that are more minor and I'd be upset,
Speaker:but I really wouldn't be that upset.
Speaker:And nobody's really going to take it anyway.
Speaker:But there may be bigger things that you use in your
Speaker:business pieces of art or in exactly a painter.
Speaker:You know,
Speaker:obviously they would want to protect those rights,
Speaker:Right? Let's lay it out here.
Speaker:Let's talk about what happened to me.
Speaker:Todd, give biz listeners.
Speaker:Todd is my lawyer and has helped me with copyrights,
Speaker:trademarks, you know,
Speaker:all of that.
Speaker:And we copyrighted the software that we use over on the
Speaker:ribbon print company side.
Speaker:And sure enough,
Speaker:we found it out in the public and not through me,
Speaker:someone, you know,
Speaker:a competitor had decided that they were going to start selling
Speaker:my software.
Speaker:And so let's talk through what we did with that.
Speaker:Todd. I mean,
Speaker:I, of course was hysterical.
Speaker:I was coming home from a trade show.
Speaker:I saw it in the airport and I was like,
Speaker:Oh no,
Speaker:I can't believe this is happening.
Speaker:And so we got right on it.
Speaker:Didn't we Todd,
Speaker:We did.
Speaker:And you know,
Speaker:one of the things that a copyright infringer once I talked
Speaker:to the lawyer's going to find out is that the damages
Speaker:could be tremendous if they're not careful.
Speaker:And so,
Speaker:you know,
Speaker:you can't let it slide.
Speaker:You have to do something about it.
Speaker:But again,
Speaker:I always appreciate,
Speaker:particularly with the startups and smaller businesses that the money you
Speaker:have to put into this is sometimes scarce.
Speaker:And you have to decide where you're going to spend it.
Speaker:But I think in that case,
Speaker:you know,
Speaker:a stern letter or actually I think maybe took a couple
Speaker:of letters,
Speaker:really got the point across and they backed off.
Speaker:But that's a perfect example is software.
Speaker:You write,
Speaker:you have copyrights in the code or at least the parts
Speaker:that aren't just stored of standard modules you can get from
Speaker:providers. But the things that you write to make your software
Speaker:unique, you own copyrights so that you can protect it.
Speaker:Right? So in this case,
Speaker:you know,
Speaker:the end of this story was we agreed that the expense
Speaker:to try and litigate just wasn't worth it,
Speaker:but we're able to shut it down right away.
Speaker:Plus just,
Speaker:I don't like that karma.
Speaker:I don't like that negative Carmen having that held over.
Speaker:So as long as we could shut it down because everything
Speaker:was in place,
Speaker:we were able to just be done with it and then
Speaker:move on.
Speaker:So, you know,
Speaker:a good reason to think about it earlier versus later,
Speaker:I'd say,
Speaker:would you agree,
Speaker:Todd Right.
Speaker:And you know,
Speaker:luckily we were able to resolve that without litigation and copyright
Speaker:cases can run into the hundreds of thousands of dollars.
Speaker:In fact,
Speaker:any IP case can easily,
Speaker:if you have somebody on the other end who wants to
Speaker:fight it and has the resources to do it.
Speaker:And a lot of times bigger competitors will feel like this
Speaker:little competitor is just not going to have the funds to
Speaker:stay with it.
Speaker:Right. They're not going to come at it from,
Speaker:or if they do it,
Speaker:won't last very long.
Speaker:You have to get right on it and address it before
Speaker:it gets out of hand.
Speaker:So we were copyrighted and we just were able to send
Speaker:the letter and say,
Speaker:Hey, look,
Speaker:this is,
Speaker:you know,
Speaker:back it off.
Speaker:And luckily that's what happened.
Speaker:They did.
Speaker:Yeah. So now let's go back to trademarks,
Speaker:which I think everybody has questions about because we all have
Speaker:company names.
Speaker:We all have symbols or logos.
Speaker:And so this would be something that everyone could think about
Speaker:and consider.
Speaker:So again,
Speaker:trademarks are all of that.
Speaker:The name,
Speaker:the logo colors,
Speaker:you said,
Speaker:if you have a tagline or a slogan,
Speaker:so how does all of that work?
Speaker:If someone has all that,
Speaker:what would be your advice to someone?
Speaker:Again, let's start with someone just starting out and then maybe
Speaker:go forward with someone who's been in business for a while.
Speaker:Cause maybe there'd be two separate things.
Speaker:You'd say,
Speaker:Well, there are multiple ways to protect trademarks.
Speaker:Everything can be in a name.
Speaker:I mean some names like you can imagine the Coca-Cola name
Speaker:is worth hundreds of billions of dollars.
Speaker:At this point,
Speaker:a smaller business may not be worth a hundred billion dollars,
Speaker:but it's worth a lot to you because it tells the
Speaker:public when they see that name,
Speaker:that this is your product.
Speaker:In fact,
Speaker:the reason we have trademark rights is trademark is a valuable
Speaker:thing to a company.
Speaker:But I think from the law's perspective,
Speaker:it protects the consumer because the consumer knows when I see
Speaker:this name,
Speaker:right, I see this loader and see this design.
Speaker:I know where it's coming from.
Speaker:And I know what the quality is.
Speaker:And that's where you run into problems is somebody who's a
Speaker:competitor wants to sell a lower quality product using your Mark
Speaker:and it tarnishes your reputation.
Speaker:And so that's where you start to get upset.
Speaker:Let's face it.
Speaker:We all like the names of our businesses that we come
Speaker:up with and we don't want somebody else to take them
Speaker:away from us.
Speaker:So as I started,
Speaker:there are several levels of protection,
Speaker:all trademark rights in the United States.
Speaker:Now this doesn't go for most foreign countries,
Speaker:Right. And you have to trademark by country,
Speaker:right? Todd,
Speaker:you do so for most of us,
Speaker:it's the country in which we reside for the most part,
Speaker:wherever we are.
Speaker:Right. Okay.
Speaker:And I'm just going to talk about the United States because
Speaker:that's what most of your listeners are probably thinking about.
Speaker:Sure. But in the United States,
Speaker:all trademark rights come from use the moment you are using
Speaker:a trademark,
Speaker:you start to generate intellectual property rights,
Speaker:trademark rights in that trademark,
Speaker:in your geographic location.
Speaker:So you don't have to register a trademark to have protection.
Speaker:You have protection already under both state and federal law by
Speaker:purely using a Mark in the area where you may be.
Speaker:Now, some of us have heard of state trademark registrations as
Speaker:well as federal trademark registrations.
Speaker:What trademark registrations do is enhance or expand your rights and
Speaker:a state trademark registration in most States give you rights out
Speaker:to the boundary of your state.
Speaker:The federal registration give you a presumptive right throughout the entire
Speaker:United States.
Speaker:You do get a valuable right by registering a trademark.
Speaker:It expands those rights,
Speaker:but sort of going in all of those,
Speaker:the combo called common law,
Speaker:use rights,
Speaker:state, registered trademark rights and federal trademark rights all quarter to
Speaker:work together.
Speaker:But going back to sort of the beginning,
Speaker:when you're a new business and you're naming your company,
Speaker:you need to think about two things.
Speaker:One is,
Speaker:can I protect this farm?
Speaker:So in other words,
Speaker:is there somebody who already has it more is this Mark
Speaker:and you use throughout the United States where I'm going to
Speaker:have some very limited rights,
Speaker:but the other bigger thing,
Speaker:I think first businesses deal with this a lot is if
Speaker:I start using this Mark,
Speaker:am I going to be infringing some other company's rights who
Speaker:may have federally registered this Mark already?
Speaker:Oh, good point.
Speaker:And now you start using a name that you think your
Speaker:claim, because you don't want to move anybody in your area.
Speaker:That's using the Mark and you get a nasty letter from
Speaker:a nasty lawyer.
Speaker:Who's telling you,
Speaker:you have to stop and you have to change your name
Speaker:now, but now you've got marketing collateral that you've created.
Speaker:You've got signage.
Speaker:You have business cards.
Speaker:You've been to trade shows.
Speaker:And you know,
Speaker:that expense had you known what you were doing at the
Speaker:beginning could have been avoided.
Speaker:Now I won't beat around the Bush and tell you that
Speaker:it doesn't cost money to beginning undertake certain forms of protection,
Speaker:but they're already inexpensive things you can do.
Speaker:The us patent and trademark office has a public register of
Speaker:all registered marks.
Speaker:And you can do searches on that to see,
Speaker:is there anything there you can do Google searches to find
Speaker:out, are there other companies in my field using this name
Speaker:or this design,
Speaker:or what have you just to get an idea,
Speaker:not everybody who wants to go do the shorter,
Speaker:more comprehensive searches we do to get a search.
Speaker:That opinion generally runs a thousand dollars or so,
Speaker:and that's expensive,
Speaker:but there are things that you can do on your own
Speaker:at the beginning when you're starting up and just determine until
Speaker:you get to the point where you're ready to spend that
Speaker:kind of money and maybe try to go out and federally
Speaker:registered. You're afraid Mark So much sense,
Speaker:Todd. And so what you're talking about really is something that
Speaker:you can just do right online yourself and super important to
Speaker:before you start thinking of what your domain name is going
Speaker:to be too,
Speaker:because you know,
Speaker:you're going to be purchasing that as well.
Speaker:So right at the time,
Speaker:when you're thinking about business names,
Speaker:domain names,
Speaker:and you're searching and GoDaddy or wherever to see if it's
Speaker:available, you should put in just overall what Todd's talking about
Speaker:in terms of the U S patent and trademark office.
Speaker:And I will connect up links to that site on the
Speaker:show notes page.
Speaker:So everyone can go ahead and take care of that.
Speaker:And as you're saying,
Speaker:Todd, sooner versus later,
Speaker:because you want to start establishing a business that is different
Speaker:is unique and is your own.
Speaker:You're going to have to take a step back.
Speaker:If you find that someone else already has that name,
Speaker:great information.
Speaker:Okay. So the first thing to do is do the search
Speaker:right then where do we go from there?
Speaker:Todd? Let's say everything looks fine.
Speaker:Okay. The company name that I'm thinking about looks fine.
Speaker:The domain's available.
Speaker:I've Google search doesn't look like anyone has any claim to
Speaker:anything. Then what should someone do?
Speaker:Well, if your business is going to be purely localized,
Speaker:if you're not going to expand bigger in your state or
Speaker:around the country,
Speaker:there may not be anything more you need to do because
Speaker:you're, as I said,
Speaker:you're gaining use rights.
Speaker:You space common law,
Speaker:trademark rights by virtue of using a Mark.
Speaker:So if you're just doing business in your particular city,
Speaker:that may be enough,
Speaker:but there are other things you can do.
Speaker:You can do a state,
Speaker:trademark registration.
Speaker:As I said,
Speaker:we'll expand your rights to the boundaries of your state.
Speaker:Or you could do a federal trademark registration,
Speaker:which gives you a presumptive right throughout the country,
Speaker:filling those forms out.
Speaker:They seem very simple,
Speaker:but I would encourage you probably to have a lawyer do
Speaker:it again,
Speaker:you know,
Speaker:cost some money over the period of a year or so
Speaker:with the federal trademark registration that it takes to get one.
Speaker:But I have had to clean up number of applications that
Speaker:folks have done on their own.
Speaker:They get an office action for the patent and trademark office.
Speaker:We go to look at it.
Speaker:Sometimes there are things we can't fix.
Speaker:The forms are deceptively simple,
Speaker:yet complex at the same time,
Speaker:because there are certain rules on the patent and trademark office
Speaker:publishes on how you have to do it.
Speaker:So you're talking about like a form that someone might get
Speaker:online and fill out and just submit that in that way,
Speaker:The state trademark forms are available through your state secretary of
Speaker:state's website.
Speaker:And the federal forms are online at the U S patent
Speaker:and trademark office website,
Speaker:which is us pto.gov
Speaker:Thinking someone could use those forms,
Speaker:but then run them by a legal person just to,
Speaker:It would be a good idea.
Speaker:And I don't encourage everybody to do undertake,
Speaker:you know,
Speaker:expensive trademark searches all the time.
Speaker:If you've been using a name for some period of time,
Speaker:you probably know by now whether you're infringing somebody else's rights
Speaker:because you would have got a letter.
Speaker:And if they didn't send you one,
Speaker:it may be too late.
Speaker:Because if it's set on your rights,
Speaker:you can lose them in certain instances.
Speaker:So you probably have an idea already.
Speaker:And I don't encourage people.
Speaker:Who've been using a name for a long period of time
Speaker:and have no intention of changing it at this point to
Speaker:go spend that money,
Speaker:unless I just want to take a belt and suspenders approach
Speaker:and makes them more comfortable.
Speaker:Or if we're going to do a federal trademark registration to
Speaker:try to expand their rights,
Speaker:we might do a search to find out if there are
Speaker:people in other parts of the country.
Speaker:Because as I said,
Speaker:you space rights are only in the area where you do
Speaker:business. So for instance,
Speaker:if you're down here in Florida using a name and there's
Speaker:a company out of Washington state using the same name for
Speaker:the exact same thing,
Speaker:you might both have concurrent rights.
Speaker:They have the exclusive right up in Washington.
Speaker:You've got the exclusive right in Florida and enabled to coexist.
Speaker:So that may be a reason if you've been using a
Speaker:name for a while and go ahead and do a search
Speaker:and find out what's out there before you spend your money
Speaker:on a colony,
Speaker:federal trademark.
Speaker:So great news,
Speaker:everybody, you may not have to be spending any money and
Speaker:you're still covered.
Speaker:So if this is your situation,
Speaker:that's fabulous news,
Speaker:right? Very quickly low.
Speaker:That's talk about somebody who is,
Speaker:you know,
Speaker:now in a situation where they are going to add new
Speaker:locations, let's say they were a retail shop or they sell
Speaker:online, which could mean they have customers all over the country,
Speaker:possibly even,
Speaker:but let's just keep it in this state.
Speaker:What would those next couple of steps be that someone has
Speaker:to do?
Speaker:You're just mentioning the search.
Speaker:You can do some online searches or we order more comprehensive
Speaker:searches from a company up in New York city that we
Speaker:work with.
Speaker:They give you a lot of information.
Speaker:It can be an overload of information sometimes,
Speaker:but it tells you all kinds of things about other federal
Speaker:trademark registration,
Speaker:state, trademark registrations,
Speaker:industry databases online.
Speaker:So you can get a real idea of what all is
Speaker:out there.
Speaker:Once you decide,
Speaker:though, that it looks clear,
Speaker:maybe you've gotten a legal opinion on that.
Speaker:Maybe you've just decided on your own.
Speaker:Then the next step would be to file a trademark application
Speaker:with the us patent and trademark office,
Speaker:which is an online form and something that will expand your
Speaker:rights. Once your registration is granted the boundaries of the country.
Speaker:Now it's a slow process from the date you file your
Speaker:trademark application.
Speaker:I generally tell clients,
Speaker:it'll take about a year to finish,
Speaker:to get a registration.
Speaker:Presuming it all goes smoothly,
Speaker:but the good news is your protection dates back to the
Speaker:date you filed.
Speaker:So while it's frustrating that your tax dollars are working slowly,
Speaker:you'll have protection that dates all the way back to the
Speaker:date that you filed.
Speaker:Do you recommend them to find someone who specializes or could
Speaker:someone use a lawyer from their chamber?
Speaker:Or where would you find somebody?
Speaker:If they're not near you,
Speaker:You can use a lawyer from your chamber.
Speaker:You're going to find folks in every community who do what
Speaker:I do,
Speaker:who are familiar with how these forms work and they can
Speaker:do them.
Speaker:If they're experienced,
Speaker:they can do it relatively quickly.
Speaker:You get the benefit of the fact that they've done this
Speaker:before. I don't encourage using online services that are not lawyers.
Speaker:They may not ask you the right questions.
Speaker:You may end up with a trademark registration that doesn't really
Speaker:protect what you want to protect.
Speaker:I think your money is well spent and it's not terribly
Speaker:expensive to get a trademark registration,
Speaker:but it can be well worth the money in the long
Speaker:run once you've done it.
Speaker:Right? Any other comments that you would want to give all
Speaker:of our listeners right now,
Speaker:just to kind of circle and close this conversation up.
Speaker:I think realizing that intellectual property can,
Speaker:sometimes it's an intangible form of property.
Speaker:It's not something you can pick up and move and you
Speaker:can't put it in storage,
Speaker:but it can be sometimes the most valuable thing in your
Speaker:business. And if you don't protect it the right way,
Speaker:or if you don't clear it the right way,
Speaker:it could end up costing your business.
Speaker:A lot of money.
Speaker:I'd try to encourage my clients to understand that.
Speaker:Although it may cost a little bit of money on the
Speaker:front end,
Speaker:it'll cost a lot less than litigation against some company on
Speaker:the back end when they come and they ask you to
Speaker:change your name and pay them,
Speaker:you know,
Speaker:so many dollars for having infringed their trademark rights.
Speaker:That can be something that's really debilitating to your business.
Speaker:I can set you back here.
Speaker:Sure. And give biz listeners,
Speaker:you know,
Speaker:we talk a lot about how are you different?
Speaker:How are you unique and stand apart?
Speaker:And part of that can be your name,
Speaker:your logo,
Speaker:your color combinations,
Speaker:trade secrets,
Speaker:like we were just talking about.
Speaker:So all of this is really smart to just think through
Speaker:consider, make decisions.
Speaker:Good news is from Todd.
Speaker:You know,
Speaker:that you don't necessarily have to spend the money.
Speaker:Now, maybe you should,
Speaker:maybe you shouldn't,
Speaker:but it's clearly something that you should look at analyze and
Speaker:consciously make a decision of what you want to do about
Speaker:it today.
Speaker:Knowing the pros and cons of each decision that you make.
Speaker:And I would add to that,
Speaker:you know,
Speaker:one of the things that most people in my field will
Speaker:do is when I get a call from somebody with a
Speaker:new business,
Speaker:we'll talk a little bit.
Speaker:I don't generally charge people for talking for 10 or 15,
Speaker:20 minutes just about what they're doing,
Speaker:what they might think,
Speaker:because everybody's situation is going to be a little different.
Speaker:And I think if you find a good lawyer,
Speaker:they're probably going to be willing to just talk about what,
Speaker:you know,
Speaker:here's the things you need to think about.
Speaker:Here's the things that you may not want to spend money
Speaker:on right now.
Speaker:And we could put those off for some time.
Speaker:So I think searching out and you can find people online
Speaker:pretty easily in your community,
Speaker:or maybe it's in your chamber of commerce,
Speaker:but just talking to them for a few minutes,
Speaker:just to get an idea might go in the right direction
Speaker:here because somebody who's going to be have some experience in
Speaker:that field is going to be able to give you at
Speaker:least good off the cuff advice.
Speaker:Sure. Wonderful.
Speaker:Okay. And give his listeners,
Speaker:you know,
Speaker:there's going to be a show notes page,
Speaker:Todd, you and I were talking earlier on your website,
Speaker:you had at least one location that you were directing me
Speaker:to. Can you mention that for our listeners,
Speaker:if they want to have a little more information about everything
Speaker:we've talked about today?
Speaker:Sure. We created a number of years ago,
Speaker:sort of a desk reference.
Speaker:It was on paper at the time.
Speaker:Now it's available electronically.
Speaker:That sort of answers some of the more basic questions that
Speaker:we get asked a lot.
Speaker:For instance,
Speaker:when do I use the R in the circle?
Speaker:When do I use a TM?
Speaker:And how do I note that I have a patent application
Speaker:pending? How long has the trademark registration good for?
Speaker:And there is sort of an online desk reference available through
Speaker:a link on our website that you're more than welcome to
Speaker:look at anytime you want.
Speaker:Perfect. And I'll link that up over in the show notes
Speaker:page. So all of you can access that information.
Speaker:Okay, Todd,
Speaker:at this point,
Speaker:I want to challenge you to dare to dream.
Speaker:I'd like to present you with a virtual gift.
Speaker:It's a magical box containing unlimited possibilities for your future.
Speaker:So this is your dream or your goal of almost unreachable
Speaker:Heights that you would wish to obtain.
Speaker:Please accept this gift and open it in our presence.
Speaker:What is inside your box?
Speaker:If you were going to give me the best gift I
Speaker:could get you give me the ability to be three places
Speaker:at the same time.
Speaker:Not just to,
Speaker:Yeah. I say that because particularly with some of your small
Speaker:business owners who are just starting up,
Speaker:you know,
Speaker:you're doing so much,
Speaker:you're spending so much time,
Speaker:you're investing time in your business.
Speaker:You have your family,
Speaker:you may,
Speaker:you know,
Speaker:exercise health,
Speaker:all these things and you have to squeeze it all in
Speaker:some way.
Speaker:And I faced the same challenges all of you face and
Speaker:just have to find a way to do it.
Speaker:Find a way to prioritize no business didn't ever succeed because
Speaker:somebody put too much work into it.
Speaker:And so when you're putting that work into it,
Speaker:it's well worth it.
Speaker:But don't forget to balance your life and think about what
Speaker:your priorities are.
Speaker:Totally agree with you.
Speaker:And that goes all the way back to your candle in
Speaker:the multicolors and you're going out and walking and just being
Speaker:one with nature in the morning,
Speaker:right? It's a good time to clear your head,
Speaker:get your blood flow and get your energy level up so
Speaker:that you can make it through the day at your job.
Speaker:Or maybe you've got to leave in the middle of the
Speaker:day to go get your kids from school.
Speaker:But there are a lot of things you can do.
Speaker:And making them all work,
Speaker:being able to multitask is something that you just have to
Speaker:learn and you have to do it.
Speaker:I thought for sure,
Speaker:Todd, you'd be talking about your boat.
Speaker:What happened to the boat?
Speaker:That's one of my priorities.
Speaker:That's one of the three places you'd be right.
Speaker:That's one Of three places.
Speaker:That'd be just about every day.
Speaker:There you Go.
Speaker:Well, thank you so much.
Speaker:I really appreciate you taking the time,
Speaker:breaking this all down for us.
Speaker:I've become,
Speaker:you know,
Speaker:we, you and I have talked a lot and I really
Speaker:like how you've broken it down into these four different sections
Speaker:to really help us all understand what we need right away,
Speaker:what we might need in the future and what action we
Speaker:should take.
Speaker:So super appreciate your being here.
Speaker:And may your candle always burn bright tad?
Speaker:Where are you in your business building journey,
Speaker:whether you're just starting out or already running a business and
Speaker:you want to know your setup for success,
Speaker:find out why taking the gift biz quiz,
Speaker:access the quiz from your computer at Vic dot L Y
Speaker:slash gift biz quiz or from your phone by texting gift
Speaker:biz quiz to four four two,
Speaker:two, two.
Speaker:Thanks for listening and be sure to join us for the
Speaker:next episode.
Speaker:Today's show is sponsored by the ribbon print company,
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Speaker:It's a great way to pay it forward,