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[Podcast] Copyright, Trademarks & Contracts in Branding Explained by Trademark Lawyer Joey Vitale

[Podcast] Copyright, Trademarks & Contracts in Branding Explained by Trademark Lawyer Joey Vitale

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Trademark law is tricky. And unsexy. But not anymore.

Come join trademark lawyer, Joey Vitale, who will teach you the ins and outs of trademark law so you can practice safe branding.

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Joey is a “lawyer with a soul” who works with small businesses, helping them stay safe when it comes to entity formation, trademark registrations, contract drafting and other fundamental legal needs.

In this episode, we break down the legal jargon in a way that actually makes sense, so you can stay safe and keep pumping out great work, without being worried of the consequences. We discuss:

– How can you protect your ideas & work
– What do you do if your work is stolen
– What to put in your contracts
– The differences between ® ™ © symbols
– The trademarking process
– Plus dozens more legal questions for you to get schooled on.

Practice safe branding people. Take a peek inside this episode.

It’s glorious.


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Transcript (Auto Generated)

Hello, and welcome to JUST Branding, the only podcast dedicated to helping designers and entrepreneurs grow brands. Here are your hosts, Jacob Cass and Matt Davies.

Hello, and welcome to JUST Branding. Today we have Joey Vitale on our show. Joey is a trademark lawyer, or as he describes, a lawyer with a soul or a brand legitimizer.

So Joey works with small businesses, helping them stay safe when it comes to entity formation, trademark registrations, contract drafting, and other fundamental legal needs. Today we’re going to be exploring the less sexy side of the branding and design industry, or maybe it’s sexy for Joey, I don’t know. But this is something we all have to be educated on.

So without further ado, welcome to the show, Joey.

Hey guys, I am so excited to be here. Thanks for having me. And I know it’s not very sexy, but one of my goals during this conversation is to make it seem a little bit more fun.

Cause I promise you it’s not as unsexy as you think it is.

Well, we’ll be the judge of that.

Yeah, just before we get into it, folks, I think it’s probably worth saying that in the terms and conditions of the show, section seven, paragraph 8.7.2.1 in the Legal Act of 1872, we reference the fact that when we talk about anything legal, anything legal, you must always get, and this is the serious point, you must always get, you know, personalized legal advice. So although we’re gonna touch on some general principles today and Joey’s, you know, been so kind to come on the show and give us his expert advice from a general perspective, I’m sure you’d probably agree, Joey, you know, if someone’s got a specific incident or a specific issue, it’s probably best that they hire somebody, you know, direct, would you agree with that as a piece of advice?

Yes, I am a lawyer, I’m not your lawyer. And when we say that I can’t give legal advice during this episode, what that means is that I can’t give specific recommendations tailored to your situation. But what I can do is give you something better than legal advice, which is a legal strategy combined with business coaching strategies.

So I’m one of the very few business lawyers that I know that’s been trained as a business coach. And so, you know, a lot of lawyers sometimes they get so caught up on what the right answers are to legal questions. And I’m more about, let’s make sure that we’re asking the right questions and we’re asking good clear follow-up questions, because sometimes those are way more helpful than me just telling you answers to questions.

All right, well, before we get into the nitty gritty of I guess, law, can we just hear a bit about your backstory? Like how and why did you get into trademark law?

Yeah, so when I meet people, usually lawyer is the last profession that they would guess in terms of what I do for a living. I’m one of seven kids and I’m right in the middle. I’ve always been more of a peacemaker.

I went to law school because my dad bribed me with a car.

I actually just want to give our listeners like a painted a picture of what you look like, because you got this like just a V-neck shirt on and like a baseball cap and like real laid back guy.

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So I don’t wear suits and ties. I’m not much of a fighter. I don’t like to argue.

I tried for a couple of years doing courtroom litigation work and learned over and over again that that wasn’t the good fit for me. This is a true story. The law firm that I was at tried to get me to go by Joseph instead of Joey.

And I was like, okay, I’ve had enough. I can’t do this anymore. So I decided to pivot.

Talk about branding, right? So I was like, okay, this is it. I’m done.

I really wanted to work with business owners proactively and help them really stay out of the courtroom in the first place. So that’s what I do now.

So if we want to wind you up during this session, we just have to refer to you as Joseph. Yeah, that’s-

Yeah, if you really want to grind my gears and or have me think you’re talking to someone else, then start talking about Joseph.

Well, on the topic of titles, like I’m not so educated in this area. Are there different disciplines, like lawyers, attorneys and designers, they all have different disciplines? Is it the same thing with lawyers?

Like how specialized are you within like trademark copyright? Like what’s that general bucket?

Yeah, you know, it’s really interesting. Other than going to law school here in the United States and passing the main bar exam, there aren’t really a lot of hard boundaries between the different practice areas. And so it is very possible for one lawyer to say that they have a law firm that covers all different kinds of practice areas.

I have friends who they do intellectual property, they do business setup, they also do family law and estate planning and criminal law. And there’s no real different set of words for that. To me, I would highly recommend when you’re shopping for a lawyer to help you, that you try and find a lawyer or a law firm that really only names your practice area specifically in what it is that they do.

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Otherwise, they’re really more of a jack of all trades and probably don’t have a very deep understanding there. And also business is very broad. And I tell my business attorney friends this all the time, being a business attorney is not a niche.

Your practice area is not your niche. And so ideally, you’ll find not only a law firm that does trademarks or copyrights or whatever it is that you want help with, but they serve the specific type of entrepreneur or business owner community that you fall in.

So let’s get into it now. So it just says the general structure for our listeners. We’re gonna get into protection contracts and agreements and trademarking as well.

But always the first thing that comes to mind is like, how can we protect our design or our ideas from being stolen?

It’s a really good question. The true answer is there’s nothing you can do. In terms of there’s nothing, there’s so much of people stealing your work that is outside of your control.

And if you try and make the vision and goal of your business to be completely theft free, you’re probably not gonna aim very high in your business. And so I like to remind my clients that when people are stealing your stuff, it can be frustrating. I know, but that’s a really good problem to have.

And so the metric really isn’t how can I prevent all copycats from stealing my work? It’s how can my business thrive with a margin of copycats and how can I have an effective strategy of going after those cases where it really matters the most in my business?

So what if I actually do steal your work? What can you do about it then?

So before we talk about stealing your work, I wanna make sure that we tackle this in a kind of order because a lot of business owners, they wanna rush to this question of what do I do to protect myself when I need to? And that makes sense. A lot of business attorneys talk in that language, but before we talk about protecting your business and yourself and your assets, we have to take a step back and we first have to talk about availability and having a business with integrity.

Because before you can start protecting yourself, you have to make sure that you’re not accidentally infringing on anybody else, right? That you’ve picked a brand that’s not infringing on anybody else, that you’re using content and copyrighted works that are original to you. And a lot of people, they rush to the protection side, not knowing that they might be accidentally stepping on other people’s toes.

And it becomes less of a in our heads of someone stealing our stuff, we have to enforce our rights. And it becomes more of a fight between those two people around who were using it first or who owns the stronger rights. So let’s make sure that you’re building those proper foundations, that you’re securing your own trademarks, copyright registrations first and really getting confidence that you’re not accidentally infringing on somebody else.

And then we can talk about protecting your rights against others.

All right, so you’re saying to just take the steps to first make sure you’re not the thief in the beginning, just so.

And I say that hopefully without you feeling bad about things because you guys, half a million trademarks are getting applied for here in the US every single year. And it’s becoming more and more likely that without being a Disney villain, you’re using a business logo or slogan or something that you thought of completely originally, but someone else grabbed it years or months ago.

So I literally just had this happen with a client a few weeks ago. We had the perfect name and everything. And we thought we had it.

And then they went and did a trademark search in the US. And it came back as like, no, there’s some small little company that has this and you’re gonna come into problems in the future. You could get away with it now, but as you wanna expand, this isn’t a good idea.

So they literally said, it’s not recommended. So go back to drawing for it.

Yeah, I call it the microbrewery problem. If you ever walk into a brewery, you’ll notice that a lot of the names of their beers and everything on tap is super crazy names. And that’s not just because all of those people who like beer are super creative.

It’s because so many of the names are taken and they have to get really creative to come up with something that is different than what else is out there.

That kind of comes back into strategy somehow, like the legal side of things. Like how do we actually, like I guess get the right angle, the name that actually suits, like what’s the process, I guess, of uncovering these taken names?

Yeah, so there’s two things that I really recommend in this naming stage. And again, keep in mind that when we talk about people stealing your stuff, usually that pops up in trademarks or copyrights. And we can dive in later into what the difference there is.

But one really important thing to remember is that in the copyright world, you can actually have a completely similar concept as somebody else. But if you thought of it completely originally, like originality is a defense in the copyright world, it’s not a defense in the trademark world. So that’s what makes this really difficult in trademarks.

So one thing that I recommend in terms of trademarks, so logos, your business name, slogan, stuff like that, I highly recommend that you throw everything at the kitchen sink and that you come up with like a hundred or so options for something. And it doesn’t have to be a hundred, but a lot of options for a name before you get super emotionally attached to one or two of them. Then in addition to going through whatever strategy that Jacob and Matt have for you, there’s this really helpful spectrum to think about in the trademark world.

And it’s called the spectrum of distinctiveness because in the trademark world, there’s two things that you have to think about among others. One is how similar is my trademark to somebody else’s, but also how distinctive is this trademark and not generic or descriptive is it? Because in the trademark world, the more descriptive or generic your brand name is, the less likely the trademark office is to accept it.

For example, if I want to run a coffee shop here in Chicago or I’m at, and I create it and I call it the coffee shop, I can do that, but I can’t own a trademark on the phrase, the coffee shop. Like, and that makes sense, right? Like we can’t own trademarks for very descriptive things, but unfortunately there are some bullies out there who have done it, who have made this harder.

Like Entrepreneur Magazine now owns the word entrepreneur as a trademark, and they’re going after all of these brands and podcasts that have the word entrepreneur in it. On the other end of the spectrum though, are totally made up words that don’t mean anything except for the brand reputation that you’ve built. And we see this more in the tech companies like, or just kind of more inventive companies, like Kodak is a completely made up word.

Or if you’re familiar with online courses, there’s a tool called Kajabi. Any like totally made up word gets a really, really strong trademark rights because the word never existed. Next to those totally made up words on the spectrum are words like Apple.

Things that exist in the human language, but there’s really no connection between that and a tech company. And those can be really, really great in the branding world, but there’s a sweet spot that I recommend for most businesses, which is suggestive trademarks. So they’re words that exist, and they don’t really define what your business does.

And this is where you guys come in because I know you can help people with this a lot, but it connects the dots once they hear it between what the brand is about and what they do. And the one example that always comes to mind for me is Jaguar. And if you, once you find out that that’s a car company, then automatically you’re thinking, you know, high end, luxury, fast, and all these other words.

And so the more you can come up with names in that suggestive space, the less likely you’ll deal with some rejections or complications because it’s seen as too descriptive. Without sacrificing those mental dots being connected. Cause like Kodak had to do a lot of work in order to get that name recognition.

I was going through this process recently and what I found interesting was that even if you spelled things differently or like remove vowels or added vowels or like had two words of the same, it still didn’t cover like, they’re still not unique enough.

Right. And this is where trademarks are such a different animal. I mean, as business owners, we’re so used to what I call domain name thinking when it comes to names.

And you’re right. Like if you go to GoDaddy or somewhere else, you change a letter or you remove the vowels or whatever and suddenly you can grab that.com. The thing about trademarks is it’s asking a different kind of question.

The question isn’t, can you tell the difference between these two brands? The question is, can a consumer who is familiar with one brand see the other brand and think that they might be related or the same somehow? And one of my favorite examples of this is, you know the company Blue Apron, like the food subscription box company?

So they’re getting more and more famous now with COVID, but they’re one of the major players like HelloFresh and Daily Harvest and they’ll send food to you. And they’ve got a trademark here in the US for Blue Apron. There was an application for another trademark for Green Apron by a different company and they got denied.

And part of the reason for the denial was there’s already Blue Apron. And we think that if people see Green Apron, they might think that this is the veggies only version of their lineup or it’s more eco-friendly or whatever it is.

I thought it was Starbucks, you know, that Green Apron was there.

Well, and so Green Apron was the owner of that who was trying to get that application was actually Starbucks.

It was, okay.

It was. And so you can see how that can create customer confusion. And that’s really the test.

It’s not, can customers tell the difference between these two brands and spot the fact that they’re spelled differently? It’s can customers potentially get confused and buy from one of these products? Thinking that they’re investing in the other brand.

Joey, can I ask you a quick question? So you know when these checks are done, right? Because I like, like Jacob, I’ve gone through some very recently and I don’t tend to hire attorneys direct.

Usually if I’m consulting with a client, they have their own contacts. And I leverage that rather than get involved myself. But the thing that sort of strikes me is that the attorney seems to do the check.

So are we relying on people like yourself to run that check and give us good counsel? And how do you do it? Like what are the methods involved and what if you get it wrong?

Like what happens then?

Great questions. And I love that you’re asking me about these checks, because again, earlier I said, when you work with an attorney, try and find one who only focuses on your practice area, like trademarks. So many business attorneys who say they do trademarks, when they do their version of a trademark check or search, they will just search for what it is that you want to use.

And if nothing comes up, that’s a specific match, because they don’t really understand trademarks. They’re just saying, hey, we did a check and nothing came through that was the same. Make sure when you yourself or have an attorney go through, it’s less of a just a check and it’s more of a comprehensive search and that they give you a report of that search.

Because usually what I do, I never tell my clients, we ran a search and this is what came up. What we give them is we ran a search and here are the most similar trademarks that we found. We actually don’t give a thumbs up, you’re good or you’re bad.

We give what we call a weather forecast. We say it’s either totally sunny or it’s partly cloudy or there’s a tornado warning or there’s some type of thunderstorm watch. We let them know what that potential, because we can’t speak in guarantees here.

When it comes to whether blue apron is too similar to green apron, ultimately what happens is a reviewing human being at the trademark office takes a look at that application and subjectively says, I think this is similar enough or not. And sometimes whether they reject it or not, boils down to what they ate that morning and how good their stomach feels. And so it can be really, really hard to say, you’re absolutely good or you’re absolutely not good.

And depending on the business, they might wanna take a risk if something’s more similar. And so when we run these reports now, we actually, I can’t speak for what other lawyers have in place, but we have technology that runs these searches for us and does more Boolean term searching, pulls us a very extensive report. And then I have a layered system of team members who review that search report from that kind of third party tech software, which gives us like hundreds, sometimes thousands of similar trademarks.

They identify what, if any of those, are worth including in our own report. And then that gets reviewed several times before ultimately the client sees it. And it comes with a huge, huge grain of salt, which is this, that search that we run for you has an immediate expiration date.

Somebody can apply for a trademark the second after we run the search. And so I say that because so many people, they get the search report, or they work with someone like you guys who has them run a report, and then they continue to take their time to get the filing out the door. Ideally, you don’t want to spend any more than like two weeks between the time that you do that search and the time that you submit your own application.

Otherwise, you’re just taking a huge risk that someone else is going to apply for something that is similar to what you want to search for.

It’s like a junior in your office or the secretary or something, and then they can charge you a lot of money, like domain name searching.

Yeah, unfortunately, we don’t have that domain name level, like people seeing what you’re searching for and applying for things and then making you spend a lot of money to get it back. But again, there are just so many businesses these days that are coming up with cool, innovative, creative sounding names to them. Every month, I talk with some business owner who took too long on this.

We run their search and we find out again that if they just would have acted sooner, then they probably would have been entitled to secure the name that they wanted to use originally.

I actually did have that very similar experience, as you said, there was an initial search, right? Then they came back with the weather forecast, it’s like, we could probably go deeper on this one. That’s when they did like a deep search, and then they came back where it’s like, okay, it’s probably not recommended now.

But at least you can go through like a phased approach, where it’s like a short search, yes or no, let’s move ahead, and then go like an extensive one. So is that the process you do every time?

It is, it is. Yeah, we don’t take on clients that are not willing to take this comprehensive search journey with us. And I will say, just to plug what you guys do, it is, and your listeners, it is a really, really great experience when you’re working with a brand team coupled with a trademark attorney, because in those cases, again, you don’t just have that one name that you’re hoping you can trademark, and if not, you’re going to be frustrated.

This is the ideal situation where you get to say, hey, here’s my short list of names and options, and then you get to send back to the client, you know, we ran comprehensive searches on all of these, and, you know, your favorite one that you really want to use looks pretty good to go. But if you do want to use option B, that is totally good. And if you want to use option C, unfortunately, that’s taken.

And so it really allows them to see all of those options and make a decision versus putting a lot of emotional and financial weight on just one option.

The emotional side is a massive headache. I always, I literally came out of a project last week. I was working with a leadership team, and they were in the Netherlands, right?

In Holland, in Europe. And they were like, I was like, how are we going to make a decision on the name then? And they were like, oh, well, we’re very democratic.

It’s the Dutch way to be very democratic. So I said, okay, great. So we ran a couple of workshops.

We generated, as you say, about a hundred names. We shortlisted it down. I think we did the checks and got it all passed legally.

And then I think we were down to like the last eight or something. And then we did like a democratic scoring system where we got everybody on the leadership team to score them. And we were like, yay, we’ve got our name.

And then basically the leader just came back and went, no, we’re not doing that. We’re doing this because I like this. So my name’s on it.

And we were like, oh, okay, which is fine. So that emotional kind of attachment, but that was the right way around. Whereas if we’d have done the sort of almost the decision making and the prioritization before the legal checks, then it can cause massive consternation because, you know, even in that instance was a bit of a nightmare, but because everyone was like, why?

We think the whole team think this and you’re thinking this. That was between them. But the point is if somebody’s attached themselves or a team have attached themselves even to a short list emotionally and started to think through assets and how creatively it will be replicated, then, and then it comes back and it’s not quite right, then and we’ve got to start again.

It’s, it’s, it’s, oh, it’s, it’s gut wrenching. And, you know, so I think your advice is spot on there. You know, don’t get too emotional, folks, before you’ve got these checks done.

And hey, that is such a difficult but amazing lesson for business owners in general. And I think that that that insight of not getting emotional about things, I mean, branding is a huge spot where this happens, but in general, the least, the less emotional you can get about business, the easier it’s going to be to build the business of your dreams.

Thanks.

I had another quick question for you on these searches, if I may. So we’ve talked about US searches, and I have a few clients that want to, often they’re scale ups or they want to go global. And the pricing that I’ve heard banded around to check in different marketplaces and different parts of the world can go very expensive very quickly.

So I was just interested, obviously there’s the US and they have one sort of system to manage their trademarks and so on. What, I mean, I hope I’m using the right language here, so correct me if I’m wrong. But what are the other systems that are around?

I mean, is there different ones in every single country or is it on a continent by continent basis? How does it tend to work?

So here’s where it gets interesting. And I’m gonna answer your question in a way that you probably weren’t expecting or hoping but I hope that this helps. So there are, every country has their own database and way of searching for trademarks.

And so it can get freaking impossible to try and do a complete global trademark search. But I wanna say this, the way that trademarks work here in the US and in most, if not all other countries is a trademark registration, like what you’re applying for to the trademark office and then you get that certificate. A lot of people think, oh, my business isn’t, the name of my business isn’t trademarked until I file for this paperwork, wait however long it takes and then get the paperwork back in.

And then finally I’m trademarked. That’s not legally how this works. Legally, a trademark registration is kind of like a birth certificate.

It’s just pointing to a fact, which is that you own a trademark or you were born. And your trademark rights are actually created upon being the first to use in the marketplace. And so legally and technically speaking, you are the superior owner of your trademarks if you were the first to use them in your brand.

If you were the first to start selling stuff to have your website off where people could buy things. And if you were the first person to use that business name, logo, slogan, whatever, that was significantly different than what else is out there, regardless of if you were the first to file or get a registration. The reason why so many attorneys focus on the paperwork side is number one, that is the way of trying to document this very messy situation of who owns what first.

And again, you might accidentally be infringing on somebody and not realizing it. And number two, practically speaking, it is very, very hard to enforce your rights against other people when you don’t have that paperwork in your system. So if, like let’s say that again, you go down that harder path of picking a totally made up word or phrase for your business, that you just have, you’re super confident that no one else is using, you’ve run those Google searches, it’s not coming up anywhere.

Well, you can probably rest easy knowing that if push ever came to shove, you know in your heart that you were the first person to use that brand, but filing for those trademarks and getting those pieces of paperwork that show like your birth certificate that your brand was born on a certain date, that can be super helpful. The other thing to keep in mind in terms of trademarks and countries, again, especially thinking about the fact that you get these trademark rights regardless, in terms of what countries you wanna focus on getting the trademark registered and secured first, you really wanna think about two things. Number one, regardless of where your business is based, where is the majority of your client and lead base living?

And number two, out of those pockets where your customers and your leads are, where are people the most lawsuit happy? Usually that’s the US. And so I say that because I work with a lot of business owners outside the US who still decide that they want to prioritize getting that US trademark registration before they try and grab it up within different countries.

Yeah, the US, you lot love it.

All right, so yeah, Australia is getting worse and worse and worse.

Really?

Really, yeah.

Sorry.

But on this topic, like, what’s the difference? Like where’s the line between inspiration and infringement?

Yeah, so I love that question. And it’s a lot easier to talk about this in the trademark world. Because again, in the trademark world, as long as what you’re doing is significantly different than somebody else, you can be as inspired as you want.

As long as you can build a legal argument that when people see what you’re doing, they’re not confusing it with somebody else, then you’re good. And what people sometimes lose sight of is, or they just don’t think about is, it’s totally possible. And it happens all the time where two companies own the same trademark.

It’s just that they have very, very different businesses. So here in the US, we’ve got Delta Airlines and Delta Faucets. And no one thinks that the company that they’re buying their plane tickets from is also making faucets.

And so that’s also something that’s helpful to think about. An attorney can really help with when they’re running those searches. If similar names are popping up, but they sell things totally different, then you know you can take those out of the report that ultimately the client sees.

Well, when you’re talking before, I was wanting to ask about costs for these things, which is, I guess people should be aware of the costs in the US, the States, doing it elsewhere. And how long do these things actually take to process until you actually earn it? I know you mentioned it’s a birth certificate, but in my experience, or at least in Australia, you have to, it takes 12 months, you know?

Yeah, yeah. So I’ll answer that second question first, which is here in the US, it takes anywhere from six months to a year or more. When you’re working with an attorney, it tends to take closer to six months.

But the reason why it takes that long is because again, half a million trademark applications are filed every year. So right now there’s a three month kind of backlog. If you can imagine being an examining attorney at the trademark office and you’ve got your desk, it’s almost like there’s a pile miles high of applications.

And as soon as someone submits an application, it takes three months for that piece of paper in the pile for them finally to flip it over and take a look at it. And so once they look at it, it has to go through two different major checkpoints. The first is the reviewing attorney at the trademark office decides whether or not they see any issues with your application.

And you have to keep in mind the trademark office, one of their goals is to keep the number of registered trademarks to a minimum so that there’s freedom in the marketplace for business owners to name their brands whatever it is they want. And that’s why there are things like maintenance and renewal filing. So if you don’t keep using your brand while that registration goes away, that name opens up, someone else can take it.

So they’re looking for a reason to deny your application. That’s checkpoint number one. Checkpoint number two is, well, does any other owner of any trademarks wanna challenge your rights?

Because regardless of what the trademark office has done, they might think that you’re too similar to theirs. And so there’s a built-in 30-day window where it’s almost like a speak now or forever hold your peace kind of space for other business owners to say, oh no, we have a problem with this application.

Okay, and for costs, what’s the, I guess ballpark ranges for certain, I know there’s different categories, right? Can you just walk us through what the cost would potentially be for putting a trademark in or working with an attorney or whatever? I know there’s variables, like there’s variables, but just some insight would be helpful.

Yeah, yeah. So in general, no matter what, when you apply for a trademark here in the US, you have to pay filing fees to the government. And those actually just increased over the new year.

So now it’s between like 250 and 350.

Per category?

Good question. Per category, although when you work with an attorney who specialized in trademarks, we know of this loophole where we, instead of making you pay for all these categories, and we can talk more about that if you want, but you have multiple categories or classes to choose from when you apply for your trademark. And oftentimes what people do is they fill out the application.

They’re like, oh, well, what I want to use this for, it really falls under these three or four or however many classes. So they pay all the filing fees upfront. Then the trademark office denies the application entirely.

And they’re like, man, I paid all of this money for all of these classes and got nothing. So what we do is we’ve created a workaround where you only pay for one class and we know how to fill in the description for what it is underneath that class where we’re actually describing all three or four or five of those classes, but you’re only paying for one upfront. That way later on the trademark office will say, hey, everything looks good, but you’ve actually listed three different classes here and you’ve only paid for one.

So let’s pay us the remaining 250, 350 per each class and then we’ll move it forward. So that’s a nice way of working with an attorney if you know you’ve got multiple classes to keep the cost down initially.

So that’s in the US, but if people wanted to, let’s say I’m just gonna use myself, like I am Australian business, but I target to the US, right? So my business is registered in Australia. Like what would it cost to, I guess, register in Australia and the US as like an example?

Yeah, so there’s no such thing as like a global trademark. And so what there is, there’s a treaty that a lot of countries have signed on to, so that when you get your trademark secured in one country, instead of going through the entire process, again, in another country, you can just file additional paperwork through this treaty that says, I want my trademark that I have in this country to be acknowledged in this other country. And so if you know that you wanna have protections in Australia and the US you would either apply for a trademark in one of these countries, and then try and have it reciprocated through this treaty, or if time was really of the essence, you might just want to apply for both from the beginning.

I think this kind of leads into the next thing. Like once it’s registered, you know, like logo designers and designers love putting these little like R’s and C’s and T’s, TMs, and the S and all that. So like, what are the differences between all of them, just so we can be clear about that?

And like, when should people be put in the TM or the R and all of that?

Yeah. Okay. Love this question.

So, and it’s, every time people ask me this question, I think of like watching baseball games or whatever, or like being in a sports stadium. Cause you guys, this is like the matrix. You can’t unsee this after you learn this.

And I probably am going to ruin sports for you, but now every time you’re in a stadium, you will see these symbols everywhere. And so here’s how it works. Earlier, I talked about that.

The fact that trademark rights are actually not something that you get when you register, but you have these just free rights. You actually have trademark rights just by being the first to use. That is where these symbols come into play.

So those are called automatic or common law trademark rights. And when, for example, I’ve got a trademark registration for Indie Law, the name of my law firm, and now that it’s registered, I can use that circle R symbol that shows that it’s registered. But even when my trademark application was pending, and before it was pending, I could use that little TM symbol or the little SM symbol.

And those TM and SM symbols, you can use whenever.

So what did SM refer to? It’s probably not as widely used as TM, but.

It’s not as widely used. SM, technically, it stands for service mark. And so if you really wanna go like legal ninja on this, trademarks traditionally was a word that was only used if what you were selling was a good or a product.

So it was a mark of your trade. And then if you were selling more of a service, that was a service mark. And so an SM was short for service mark, and TM was short for trademark.

Over time, trademark became more of an umbrella term for the both of them. And so now if you really wanna be proper and you sell more of a service, you can use SM. But I tell my clients, just feel free to use TM.

And you don’t have to use it everywhere. I always get this question from people who are in the branding space, like, does this mean I have to use a TM or even the circle R in all of my logos everywhere? And the answer is no, but it can be really, really smart, especially if you haven’t yet taken action on your trademarks to use that TM or SM symbol to deter others and to let them know that you understand this trademark stuff and that you do have some rights, even though you haven’t gotten any paperwork filed yet.

So a couple of quick questions. It’d be great if you talked us through the copyright, the little C icon as well. But I had another question.

What happens if somebody puts the TM on something and in fact, it belongs to somebody else? Like could you accidentally or, you know, find yourself facing a terrible lawsuit yourself? You know, what’s the risk involved?

I mean, potentially, and this is where it’s getting so interesting right now, just to watch because I mean, technically speaking, we’re violating laws all the time. Like every time you’re seeing like a GIF anywhere on social media, it’s probably copyright infringement. But what’s seen as fair or unfair or like worth the hassle for businesses is just changing so much.

So yeah, if Disney really, really wanted to be a bully, and they saw that you put a TM after something, something Star Wars, they might be within their rights to say like, hey, you did this, it wasn’t improper, here’s a fine you have to pay or whatever. They’re probably not gonna do anything because regardless it’s like good for their business. But if they did, I’m a huge fan of sending, having as a business owner, having a plan of attack where you get to play good cop and bad cop.

And when it comes to people stealing your stuff or using stuff that looks too much like yours, having a set of like canned responses and messages that you send, that expect the best of intentions and assume those really good intentions. And to the extent that you want them to stop, just say like, hey, we understand that you probably had no idea that this was a problem, but if you could please do X, Y, Z. And if you want a really, really good example, just Google the words Netflix cease and desist letter.

Netflix has gotten so good at trying to protect their rights while also not falling into any PR traps or getting their fans angry. A couple of years ago, it was actually here in Chicago. Someone started a stranger things party, like a multi-day stranger things party, and they were promoting it.

And Netflix sent them a cease and desist letter. And they were like, we love that you’re huge fans of the show, and we’re actually gonna let you continue to do this, because we know that you had a plan for the next couple of days. But moving forward, don’t do this.

If you want to collaborate with us, here’s a way to move forward. And we want to make sure that, to the extent that our fans are participating in things that look like they’re branded by Netflix, that we can trust that they’re getting a good experience out of it.

Yeah, that’s such a great example of protecting your brand without becoming a cross, or coming across as a bully.

Exactly.

So it kind of comes into fair use. You mentioned fair before, but there’s always this talk about fair use. What actually is fair use?

So I’ll answer that in two ways. First, technically, it’s a legal defense where basically it says that even though you are violating someone’s copyrights, in this limited situation or this specific context, it’s deemed okay. And maybe it’s okay because you used such a small portion of it, or you’re using it in an educational context, or for parody or something else.

But the real thing that you need to focus on there is it’s a legal defense. Meaning, if anybody ever accuses you of copyright infringement, and you want to say no fair use, your response has to be, yeah, but. So you’re already kind of putting yourself into a hole saying, I am infringing on your copyrights, but it’s for a good reason.

And anytime you are expecting and assuming that you’re gonna have to use a legal defense to be okay, you’re on pretty shaky territory. So my main recommendation is to steer clear of any situation where you think you might have to use the fair use defense.

Well, I think we’ve covered a lot of trademarking. Can we jump into like contracts and agreements that were just the other side of business that a lot of freelancers and small businesses and agencies need to do to cover their butt really. So like, and I know you’ve brought out some great products that cover this, but can we talk through about like, what has to be in a contract and like, what’s too much for a small business?

Like, where’s the sweet spot? And just like, I guess the essentials of contracts and agreements.

Yeah. So I also want to circle back to Matt’s question about copyrights and the circle C. Oh yes, yep, yep.

Because that really fits into the contracts discussion as well. Unlike trademarks, where you got all these different symbols that mean different things and whether it’s registered or not, in the copyright world, we’ve only got one symbol. And that’s the C with the circle around it.

And so that means that you can use that symbol even though you haven’t registered for a copyright. Which is great because even though it’s easier to register a copyright than it is to register a trademark, we’ve got a lot more copyrighted work than we do trademarks. And it would be a pain in the butt to try and register all of the website, podcast content, social media, stuff that you’re putting everywhere, much less giving your clients.

Having that all filed for as copyrights would be really difficult. And so the follow up question of that usually is then what do I register as copyrighted works? Well, you can only actually have copyrighted copyrights to works of authorship that are in fixed form.

So something like this video or this podcast episode is a form of copyrightable work. But an idea is not copyrighted. A phrase that you like using and you put it everywhere is not something that you can copyright.

The overall kind of set of teaching points in a course that you might create or like the kinds of conversations that we’re having in this, those are like, I can’t tell somebody else, hey, you went on someone else’s podcast and you used points really similar to what we talked about here. That’s copyright infringement. Probably not.

Like I don’t have copyright ownership over the thoughts and ideas that we’ve talked about here. And so copyrights have a more fixed tangible bent to them that I think a lot of people realize.

Are they automatic? Like what do you have to register?

They are automatic, but it is very, very difficult to enforce your rights and start a lawsuit if they’re not registered. So going back to your question of how do you protect yourself against copycats, I would get really clear in your head of what are those things in your business that you think that you might actually go to court over or that you would get really upset if someone took that is a copyright. And those are probably the things that you do want to register so that if you ever needed to, you could cite that registration number in court and they wouldn’t throw it out.

So examples of that would be like a high-end course or an offering or like I guess your original ideas or work that’s I guess in a fixed form.

Yeah, and since we’re talking about just branding as well, a logo is one of those rare examples of something that is a trademark and a copyright. And so if you are, again, if you’re wanting to rely on the trademark world of people not using anything that’s anywhere close as a trademark, well, then that trademark of the logo will help you. But if there are other people who, if you’ve got a really cool logo and you wanna prevent other people from using it regardless, if you don’t want people to use it in a branding context or to put it on their swag or to do anything with it, well, then you probably wanna register your logo as a copyright as well.

Well.

All right, so let’s move into contracts then.

Yeah.

What must be in a contract? What’s the minimum?

That’s a really good question. There’s really not any hard and fast rules I can give you when it comes to contracts, because really nothing needs to be in a contract. Your business isn’t going to magically fall apart because you didn’t include some specific clause in your contract.

But to me, a contract is about two things. One, it’s about keeping your butt safe in case of worst case scenarios, which is what most people think about when it comes to contracts. But number two, and really more importantly, it’s how can I keep my client on that red carpet when we’re working together?

And how can I clarify our expectations on both sides so that we can have a great working relationship, not just a relationship that doesn’t suck? And so for that reason, one thing that I highly, highly recommend you take time to really customize and give thought to in your contract is the services provided in scope of work section. So get really specific on what it is exactly that you’re gonna be providing with your clients and what is beyond the scope of that and then how they might be able to request additions or changes and just what that process is like as well.

And so usually those are the first two clauses that I will put in a service agreement.

Is that probably the most discussed, the most like, I guess what most people use for a contract, right? And like the biggest discrepancies are always about scope of work or like canceling a contract and things like that.

Yeah, and I say that because those, that’s usually the biggest problem that service providers have is people either not paying. So yeah, like failed payments is a big one, or they’re just constantly asking for more or different work, or they’re not really sure of what it was they got in the first place. And so I like to think of the ideal contract situation as yes, having a contract that you feel good about, but also having a process in place of how you’re keeping people on track with that.

So yeah, you might have a section that talks about failed payments and late payments and termination, but you should also have a plan written down of if someone is late on their first payment, what’s the message that I send out? And what’s the message that I send out after that? And before I rush to sounding like a total jerk and terminating the relationship and all this other stuff, what are things that I can say because life happens that allows them to just fix that mistake?

Or when we talk about scope creep, that happens in different ways. And one area of scope creep that I don’t think enough people talk about is communication creep. For example, I run a service-based business with the law firm.

And because as we talked about, it takes sometimes a year for the trademark to get finalized. Instead of communicating with our clients, mostly through email, we have a secure client portal. And when you log in, you can see the entire chat history.

You just log in and scroll up or scroll down and see everything. And so as much as possible, we like to keep our client communication in that portal. And this may or may not be relevant to you.

But if you’re getting texts or they’re calling your cell phone, the fact that you want to be communicated with over email, or maybe you will allow text or whatever, clarify those expectations in the contract and then be prepared to usher them back into that. And so our contract has grown and evolved over time for certain things like that. We’ve actually created not just the contract legal terms, but we’ve added language saying, here’s why this contract provision is in place.

And we’re actually doing it for your benefit.

So how much of that can be plain speak, right? Versus like legal jargon.

Oh, man. So honestly, I’m going back and forth on this in my own head, because when I first started doing contracts for business owners, it was my mission to remove shell from every contract that I would ever write. And I think that there is a huge component of the contract too.

We want both parties to understand this, and we want to clarify these expectations. But when it comes to those clauses that are more like legal savior butt stuff, you have to keep in mind that those, that legalese is worded a certain way. And even though it’s strange to us, courts know exactly what to do with that language.

And I would hate for any of my clients to cut that language, try and recreate it in a more English conversational tone. And then when something bad happens, the court doesn’t really know how to interpret that clause because it’s not using the language that really makes it easier for them to say, here’s the winner and loser here. And so I would say that for those sections in your contract that serve a more legal purpose where it’s like, okay, if we ever go to court, we wanna rely on provision 13.2 or whatever it is, I would keep that legal lease.

All right, so what do you recommend for small business? I’d like to talk about small business then maybe we can talk about larger agencies, for example. If they’re going through like drafting a contract, is this something they can do themselves or is it like highly recommended to go to an attorney or lawyer to actually?

It’s a good question. I think it depends on a couple of things and there are no right answers here.

I think it depends in part on the kind of business that you’re building. Another short story of myself, a couple of years ago, we made the decision to pivot from more of a general practice business law firm to a trademark law firm specifically. And because of that, our contract shortened significantly because now we don’t have to deal with all of these specific points and addressing all of these other possible situations.

I like to call it, we now have as more of a productized service. And so because of that, we have more standard language that we know to rely on. And I think you start to see that in larger businesses as well.

It’s more of an agency, it’s less custom. When you’re in a situation where you really are a jack of all trades, you might need more language to cover yourself in different spaces. The other thing, and I hope that this is really helpful.

It was really helpful to me when I started. I had a legal mentor who told me this advice to pass on to my clients. I call it the 3% rule, which is take 3% of your revenue from last year or projected revenue for this year.

That’s the revenue that’s coming into the business and that becomes your legal budget. So I would find an attorney that you like or trust or ask around and then just instead of saying, how much is this gonna cost? How much is this gonna cost?

Say, in order for me to protect my business, I’ve kind of put together and I’d love to keep the budget to maybe $3,000 for my $100,000 business. And they can then take that budget and work with you. Kind of like the house decoration, fit TV shows and episodes and stuff.

And so it’s more of I had this budget to work with versus I’m looking for XYZ who can do it for the cheapest.

What about all these templates that you can get off the web and you can customize? What’s your opinion on that?

I don’t think that they’re necessarily bad. I think that again, it’s much more common that you’ll run into these legalish problems of failed payments, of scope creep, of other things. Then you’re gonna run into the legal problems and trying to figure out where you’re gonna go for arbitration is not as big of a risk for you.

But honestly, as that happens, the contract becomes more of a customer experience document than a purely legal contract. And so I think that I’m all for moving forward with the template if you’re starting from scratch, but take notes as you see opportunities of improvement, as you see a pattern of clients doing things or behaving in certain ways that you don’t want them to. And then take that to an attorney and maybe even like a business coach and say, hey, what’s a good combination of legal language you can add to the contracts and customer experience touch points that we can do to minimize these problems?

Just a really quick, simple question, which I imagine you might get a lot and I think our listeners would benefit from. You know, like when you’ve drawn up the contract, whether you’ve done it by template or through an attorney, do people literally physically have to sign it nowadays or can they just drop a confirmation via an email? Like what’s the procedure on the sign off aspect?

I love that question. So really at the end of the day, all a contract is is an offer that’s accepted. And for the most part throughout our history, we’ve used that signature to show that we’ve accepted the offer.

And technology now makes it easier to like check boxes or say when you even put in your credit card information, you’re showing that you agree to our terms of use. I’m helping more and more of my clients replace the contract that they’re sending out for signature with just additional language that they’re adding to the terms of use at the bottom of their website. And so that being said, the more advanced you get, the more you may want to send some type of a contract, either for them to sign or for them to initial.

And again, in terms of customer experience and staying on the same page, it can be really helpful for not really for the legal reasons, but for them to really take and say, Hey, we’re making you actually sign your initials below section 2.2 so that you really understand that you can’t text us or whatever it is. So that can be really helpful.

Reminds me of the car rentals, where you have to initial everybody, every box on the page.

Well, and I know we started the conversation out with me saying that I’m not given legal advice here, but this is something that I’m helping a lot of my online coaches and like people in the wellness space. A lot of times they will create an abbreviation space that says, we are not a replacement for a therapist or more of a licensed health professional. And we want to make sure that we all understand that moving forward.

Yeah. Basically, that’s in the T’s and C’s of this show as well. We are not a replacement for your therapist.

Yes.

Although it may seem that sometimes it’s not a thing, just section 32.721. This has been a fascinating conversation. Jacob, I think we’re slowly drawing to the, sadly to the end, because I found it fascinating.

Is there any sort of final question you want to send to Joey to round off our fascinating discussion?

Well, I did have one more, but it may be a pretty big question.

Yeah, go on, let’s do it.

The legal components of your business, I was looking at your product that you have, it separates it down to brand and then how you separate a company, and then your relationships, and then your content, unless you’ve structured into four areas. Is there a reason why you have it into these four legal component areas?

Yeah. People always come to me and they have all of these legal questions. Or they’re like, the legal side is just so complicated.

What I really want people to realize is that, and I get it, people talk about this legal side to your business. You’ve got your branding, you’ve got your Facebook ads, you’ve got your social media marketing, you’ve got your bookkeeping, you’ve got all these different boxes in your business that you have to manage. So people come to me wanting help with their legal box.

What I often have to tell them is, I understand why you think that the legal stuff fits in its own box, but there is no legal box. There are just legal ways of viewing all of your other boxes. And really, there’s just four main boxes.

There’s your brand, there’s that separation between you and your business, there’s all different relationships that you have, and then there’s your content. And when it comes to brand, that’s trademarks. When it comes to separation, that’s in getting an LLC or a corporation.

Relationships are all different kinds of contracts and content as copyrights. But in terms of those four components, I really love starting there when I’m talking with new business owners to get them to just kind of step outside of that thinking that there’s like this legal set of next steps. And it’s more about what can we do to protect and secure those other important elements of your business.

Okay, yeah, I think that’s a great way to end it on, because we’ve covered a lot of ground here, like in terms of protection, contracts, trademarking, and now like just zooming out a little bit and like, okay, this is four buckets you need to cover. And I say just, but yeah, it’s quite a bit. But thank you so much, Joey, it was a real insight.

It really was, Joey, where can folks find you if they were interested in talking to you further?

So before I get to that, I just wanna say that you guys have been great. And I said this before I think we hit the record button, but for anybody who wants trademark help, I’m gonna let you guys in on a little secret, which is that we actually give $300 off to all of our alumni clients. So if any of you guys want trademark help here in the US, I would love to offer you guys that $300 discount, but you have to do something for me.

And Jacob and Matt don’t know what I’m about to say, but you have to do something for me to unlock this, which is you have to either leave a comment review on YouTube or a review on iTunes of the JUST Branding Podcast, take a screenshot of it and then send it to me.

We love you, Joey.

And you can send that to me on Instagram. I’m at joeycvitaly.

So just to clarify, what’s the $300 off actually cover? Like what’s that for?

So that is for our full trademark package. So it’s usually just around $2,000. That includes the filing fee, that $350 to the trademark office.

Again, we just pay for the one class. And then we also include that comprehensive search report. So our goal when you sign up with us is to complete that search and to have your application submitted within two weeks of when you signed up with us.

Awesome. Yep, you heard it. So go give us a review, get around your bucks off and yeah, jerryvitale.com.

Huge thank you, Joey, on behalf of all the listeners, not only for the discount, but also for your time and your patience with thick people like me and Jacob, or like me, Jacob’s a bit more intelligent than me.

You guys are great.

But no, it’s been phenomenal having you on and thanks so much. I love the way that you articulate yourself and carry yourself. I love the fact you’re not wearing a shirt and tie and you’ve really given us a lot to think about.

So thanks so much. And really, as I say, really appreciate it. Thank you.

Thanks for having me. You guys, sometimes I wish that I was a branding professional. I love what you guys do.

And so thanks for letting me in on your world and letting me dress like you guys.

Awesome. No, but really I wanna back up what Matt said because you do really make the complex simple and that can just be so overwhelming, especially like in the branding space, like there’s so much jargon going around and especially in the legal world, you’ve really simplified it. So thank you for sharing your wisdom there.

My pleasure. And thanks again guys for having me.

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