The Business of Doing Business Podcast Episode 7: WTF is a TM?

Confused about trademarks & what it means for you as a business owner?

In this episode, Yasmine discusses the importance of trademarks for businesses and entrepreneurs building brands and selling products or services. She explains the difference between trademarks and copyrights and provides answers to commonly asked questions about trademarks.

Yasmine also covers the categories of trademark distinctiveness and offers tips for selecting a trademark, conducting a clearance search, and using the correct trademark symbols in your brand and marketing materials. She emphasizes the benefits of trademark registration and working with an attorney throughout the process.

Additionally, Yasmine discusses trademarking personal names and brands, the use of trademark symbols, and the need for thorough trademark clearance searches to avoid infringement or forced rebrandings.

Key Takeaways:

  • Trademarks are valuable assets that businesses should protect.
  • A trademark is a distinct source identifier used commercially in connection with the sale of goods or services.
  • Trademark distinctiveness categories include generic, descriptive, suggestive, arbitrary, and fanciful.
  • Before selecting a trademark, conduct a clearance search to avoid infringement.
  • Trademark registration provides exclusive rights and protection across the country.
  • Working with an attorney for trademark registration is recommended.
  • Personal names and brands can be trademarked.
  • Use the appropriate trademark symbols and regularly conduct clearance searches to protect your trademarks.

Episode Timestamps:

00:00 Introduction 

02:22 What is a Trademark?

05:09 Categories of Trademark Distinctiveness

10:56 Trademark Selection and Clearance Search

14:05 Benefits of Trademark Registration

16:21 Working with an Attorney for Trademark Registration

19:01 Trademark Symbols and Rights

21:41 Importance of Protecting Trademarks

22:46 Regular Trademark Clearance Searches

23:20 Conclusion

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Episode Transcript

Introduction (00:00) But these are assets. Every single time you promote your business, every single time you share about your company, every single time you invest in awareness and recognition of your brand, you are investing in the value of this trademark asset. It makes sense to protect this.

Welcome to the Business of Doing Business podcast with Yasmine Salem Hamdan. Hey, y ‘all. Welcome back to another episode of the Business of Doing Business podcast. Today’s episode, we are diving into the topic of… intellectual property, specifically trademarks.

I know that a lot of people when they hear trademarks, they’re like, I’m not entirely sure what that is. What is the difference between a trademark and a copyright? I know people use the symbols interchangeably. We’ve talked about that a little bit on this podcast.

Today, we’re going to talk about trademarks and what that means for you as a creator, as an entrepreneur, as a business owner, as somebody who is building a brand and investing in your brand, the recognition of your brand, spreading awareness of your brand increasing the enterprise value of your business and your brand and how trademarks relate to that. I’m going to be answering some commonly asked questions like what is a trademark, first of all? How should I go about selecting my trademark?

Should I register my trademark? Should I register in my state? Should I register nationally or federally? Can I trademark my name or personal brand? How do I make sure that I’m not infringing on another brand when I pick the name of my company or my podcast or my course or any brand or slogan or logo that I’m selecting.

What symbols do I use and what is the difference exactly between trademarks and copyrights so that you walk away from this episode totally clear on what a trademark is and are able to take stock of the trademarks that already exist in your business because I would be willing to bet.

I’m not a betting woman, but if I was I would be willing to bet that you already have a trademark in your business and you may or may not have taken steps to protect it and may or may not have done some initial due diligence prior to selecting that trademark.

So I believe that today’s episode is going to be really helpful for you if you are somebody who has a company, has a brand. Really, if you have a brand online and you’re selling a product or a service in connection with that brand name, this episode is going to be really good for you.

What is a Trademark? (02:22) Now, what is a trademark? A trademark is a distinct source identifier that you are using commercially in connection with the sale of goods or services. This is a consumer facing identifier. So this isn’t the name of your LLC or your corporation.

This is the name that you use in your marketing materials. It’s on your website, it’s your social media handles, it can be the name of your company or your brand. It can be a slogan or a tagline that you use. It can be your logo, if you use that to identify the source of products or services that you sell. It could be your podcast name.

So for example, The business of doing Business is a trademark of my company. It can be your course name or your program name. It could be a hashtag that you use to promote your product or your services or your company in general.

And really the keys here are that it’s being used commercially. So if you’re just using it as a hobby or to just publish online and you’re not providing a service or a product commercially, then it’s probably not a trademark.

It has to be distinct. So if it’s not distinct and it’s something that is deemed generic or descriptive of the products or services sold, and I’m gonna go into that a bit more throughout this episode, then it might not be considered a valid trademark.

And by way of you using it commercially, your consumers or your target market and consumers in general are interacting with this trademark. They come across it in advertisements, in marketing materials, on your website, et cetera.

When it comes to selecting your trademark, as I mentioned, you want to pick something that is distinct. So you don’t want to pick something that’s generic or descriptive of the products or services that you’re selling.

A good test, sort of like your own test that you can run when you’re brainstorming different names or slogans or design components of a logo that you want to decide on, is to ask yourself, do other companies who are selling a similar product or service need to use this word or phrase or design component in order to describe their products or services? If the answer is yes, then… your trademark might be generic or descriptive.

If the answer is no, and they don’t necessarily have to use that word or phrase to describe their products or services, it might be a distinct trademark. You’ll want to do a clearance search before you go all in on a trademark. Once you decide on a name, and we’re going to talk about some specifics around, I’ll give you a short checklist in terms of doing your own clearance search.

Categories of Trademark Distinctiveness (05:09) But let’s talk about what the scale looks like in terms of from a generic trademark all the way to a very distinct trademark. So there are five categories of trademark distinctiveness. I mentioned generic and descriptive trademarks.

So generic trademarks and descriptive trademarks are just as they sound. They’re generic and descriptive of the products or services being sold. So an example of this would be if you were launching an agency or a freelance business selling web design services, and you called your business the website shop.

That would be considered generic or descriptive. If you were launching a course on copywriting and you called it compelling copy, that would be considered descriptive because you’re literally describing a feature of the course, the product, and the service that you’re providing.

In the more general commercial space, American Airlines is another descriptive trademark for an American airline service. So you want to stay away from generic and descriptive trademarks, generally speaking, because you can’t claim exclusive rights to the use of that because other people need to be able to use those words to describe similar products or services.

So the US Patent and Trademark Office, if you’re in the US, is not going to grant you exclusive rights to the use of it. And it’s going to be really difficult for you to argue that you have exclusivity when it comes to using descriptive terms as a trademark. Now, the sweet spot is in suggestive and arbitrary marks. So those are the next categories.

So those are less descriptive. Suggestive trademarks are words that suggest some quality of the goods or services, but don’t state that quality of the goods or services outright. So it doesn’t spell it out or directly describe the products or services, but it kind of gives you an idea and requires a leap of the imagination in order to really understand what it is exactly that trademark is being used in connection with.

So in the general commercial space, Microsoft for computers and software is what I would say is a suggestive trademark. Netflix for online movie streaming is a suggestive trademark. Coppertone for sun tanning products is… I would say a suggestive trademark.

If you were launching a business coaching membership of some kind that was focused on entrepreneurial strategy and mindset, and you called it mind fuel as one word, I would argue that that’s a suggestive trademark. Suggestive trademarks can be registered and you can claim exclusive rights to the use of it because other companies who are selling similar products or services don’t necessarily have to use those words to describe similar products or services being sold.

Now the next level is arbitrary. Arbitrary trademarks are words that exist in the English language but have absolutely nothing to do with the products or services being sold. Here you can think about Apple for technology, including phones and computers, or Amazon for an online shopping platform. So Apple and Amazon are both words, they exist, but they are totally irrelevant and unrelated when it comes to the products or services being sold.

So of course, competitors would not have to use the word Apple in order to describe similar products or Amazon in order to describe a similar service. If you had an accounting and bookkeeping firm and you provided services in that firm would be Zen accounting. The word Zen exists in the English language, but it has absolutely nothing to do with finance, accounting or bookkeeping. And then finally, the last category we have is the most distinct category, and that is fanciful.

Fanciful trademarks are words that are totally made up. They do not exist in the English language. Therefore, competitors, of course, would not have to use those words to describe their products or services. So some examples of this would be Google for a search and technology platform, Exxon for oil and gas, Clorox for cleaning products, Xerox for copy machines, and Kodak for photography products.

These are totally made up words. They don’t have any meaning in the English language and that makes them very distinct. So we’ve got generic and descriptive, which we want to steer clear from if we can help it when it comes to naming our company because that means we won’t be able to claim exclusive rights to the use of that.

Suggestive and arbitrary, so suggestive meaning it’s somewhat related but it’s not right on the nose. It sort of beats around the bush and gives you an idea of what it might be related to, but not exactly, and requires a little bit more context in order to be totally clear as to what the products or services are that are being sold in connection with the trademark.

And then arbitrary, an existing word, but it has absolutely nothing to do with the products or services being sold. And then fanciful, which is a made -up word that, of course, has nothing to do with the products or services being sold. So if you are a business owner who is selling a product or service, I would encourage you to aim for a trademark that is suggestive or arbitrary, meaning it might sort of suggest the nature of the products or services, but it’s not totally explicit, or it’s a word that exists, but it’s totally unrelated.

And so you’ll be able to claim exclusive rights to the use of that and register that and maintain exclusivity in your industry so that others are not creating confusion for consumers or causing your trademark to become generic to where tons of other people are using the same one to describe similar products or services.

Trademark Selection and Clearance Search (10:56) Now, once you land on a trademark, I encourage you to do a clearance search. And that means you’ll want to search online for other uses of trademarks that are similar to yours. And so you’re not looking for exact matches. You’re looking for exact matches, yes, but you’re not just looking for exact matches.

You’re looking for things that might be considered confusingly similar, meaning even if there is a slight difference in spelling or a word added to the end, if you have some punctuation, added or missing depending on how you formatted or spelled your version of the trademark. You’ll want to do your own clearance search.

It can be helpful to hire a lawyer to help you do a thorough clearance search and analysis to make sure that you’re not going to run into any infringement issues in deciding to use this name. But you can also certainly do your own trademark clearance search. And I encourage you to do that before you hire a lawyer because if there is a trademark that exists out there that can be found in 10 minutes,

I would prefer you do that on your own instead of hiring a lawyer and paying a lawyer to do that for you. If I were to decide on the name of my company or the name of my program or course or podcast, then I would do a search on Google, of course, or any search platform that you use. And then I would search on all of the social platforms.

So you will search for the trademark that you have in mind and maybe add, if it’s a short trademark, if it’s like one word, add another industry term after it if you’re searching on Google or if you’re searching on YouTube. Search on all the platforms and see if there’s anybody already using it. If somebody’s already using it or something highly similar to it, take that as a red flag and go in a different direction.

Cut your losses right now before you’ve invested in branding, your marketing materials, your website, you’ve made the announcement. Before you do all of that, do this clearance search and if you do find something highly similar, just go in a different direction. I would also search on podcast players. Even if you’re not planning to launch a podcast, sometimes people launch podcasts alongside an existing business and you might decide at some point to also launch a podcast.

So I would search on podcast players and on YouTube as well. And then finally, after you do your initial search online and confirm that there isn’t anything on the internet, that is similar to your trademark, I would then go to the USPTO website, that’s the US Patent and Trademark Office’s website, USPTO.gov, and then do a basic trademark clearance search.

Just search for trademark search, and it should take you to a search bar, and you can type in your trademark. And then I would also go one extra step and type in some variations of your trademark. So think about some alternative spellings of your trademark and type those in and see what comes up.

What you’re looking for here, are trademarks that are similar to yours and are being used in connection with the sale of similar products or services. Again, if you find something similar or related to yours, even if it’s not identical, I would go in a different direction and take that as a sign that somebody already has rights to it. Now, how should I register my trademark?

Benefits of Trademark Registration (14:05) So what are the benefits of trademark registration? There are a number of trademark registration benefits. Number one, in my opinion, is that when you secure registration with the U.S. Patent and Trademark Office, so that’s a federal registration, that means you are granted the exclusive rights to the use of that trademark commercially in connection with your products or services across the country.

So back in the day, pre-internet, you probably could only work with people who were local to you. So you didn’t really need a federal registration if you were just selling products or services locally to people in your town or within your state, a state registration might have been just fine. But today, in my opinion, a federal registration is superior to the state registration if you have a business that’s operating online and that you are marketing online because it sort of goes without saying, but I’m going to say it anyways, is that you’re able to reach people all around the world.

So of course, people across the country are able to purchase from you, whether that’s products or services. So securing exclusive rights to the use of your trademark in your country, especially if you’re in the US. Let’s say your business is based in Texas. If somebody in the state of New York begins to use your trademark, you would have grounds for claiming infringement on your IP rights if you have the federal trademark registration.

Trademark law, yes, it does stand to protect the interests of business owners, but it’s really here to protect consumers and help consumers identify the source of products or services and not be led to believe that the source of a product or a service that they are being offered is something that it’s not. So if I decided I wanted to start a shoe line or an athletic wear line, I couldn’t name it Nike because there’s already an athletic wear and a shoe company called Nike.

If I were to start selling products like that, with the name Nike or with a checkmark logo, that could lead consumers to be confused. And that is what the law is there to prevent, to prevent consumer confusion, deception of consumers, and to protect the goodwill of these commercial brands.

Working with an Attorney for Trademark Registration (16:21) Should you work with an attorney to register your trademark? If you have a budget for it, I would encourage you to do so because this is a process that can take potentially years depending on how complicated it might get. Some situations are more complex than others, of course, but it is a legal proceeding.

So I encourage you to stay away from the online filing platforms like LegalZoom and there are so many others. I’ve cleaned up when I was practicing law and offering this as a service, I no longer offer this anymore, but when I did in my law firm years ago, I cleaned up so many messes that were due to filing by these platforms.

These platforms are not attorneys. They don’t provide personalized legal services. It’s really just providing you with a prettier, more user-friendly online experience because the USPTO website is not that user-friendly. So stay away from that if you can. And if you’re able to go with an attorney to help you complete your filing, I encourage you to do that.

And they will represent you as your attorney of record and complete from the very beginning, your initial clearance search, a legal analysis, advise you as it relates to the use of this trademark and if there is any risk of infringement because if you are applying for a trademark and somebody already owns the registration and if you begin using the trademark commercially, so if it’s on your marketing materials, website, on your social platforms, all over the place, on all the things, you could find yourself facing an infringement allegation, potentially a lawsuit.

Potentially a demand for damages if you were using it commercially. And we want to avoid that if we can. A common question I receive is whether or not a person can trademark their name or personal brand. And the answer is yes. If you have a company name that is based on your personal name, you can use that as a trademark. And it’s possible for you to register your trademark federally as well.

Is it always a good idea to use your personal name as your company name? That’s up for debate. I feel like we could do an episode on that in the future and maybe we will. Let me know if that’s something that you’re interested in. I will certainly add that to our lineup.

But you know, it’s a question that I’ve asked myself over the years that friends of mine have also asked and had to make that decision. Would love to hear your thoughts on that and if that’s something that you have consciously decided as an entrepreneur. Maybe we’ll do an episode on that in the future.

Trademark Symbols and Rights (19:01) When it comes to using trademark symbols, there are two symbols that you want to be aware of, and that’s that small tm and the circled r. If you pick up any commercial product that’s within a few feet of you, you’re probably going to find that small circled r or the small tm somewhere on there.

And it’s probably going to be after the logo and or after the company name, the company that produced the product. Now these symbols, you should only use the circled R if you have a registered trademark. Do not use the circled R if you do not have a registered trademark.

Do not use the circled C at all because if you remember and if you listen to our episode about protecting your content, the circled C is for copyright assets and those are your original works of art or authorship like your written works, your visual works, your audio works, et cetera. So only use the circled R if you have a registered trademark.

Now the small tm, you can use it even if you haven’t registered your trademark. And that’s a good way to put others on notice that this is not a generic term that anybody can use. This is a term that I’m claiming exclusive rights to as a trademark and that I’m using in connection with the sale of products or services. Now that brings up a question of do I have rights to the use of my trademark if I haven’t registered it yet?

Maybe you haven’t applied for the registration yet, or maybe you have applied for registration, but you’re in that six-month to two-year period of waiting to receive registration from the USPTO. And the answer is yes, you have common law trademark rights. And common law trademark rights are a bit more limited than federally granted registered trademark rights. However, you still have rights in that trademark.

I’m not going to get into the details of that on this episode, but maybe in the future we can talk about what options you have as a trademark owner. If you’re facing an infringement situation, somebody infringes on your trademark and you haven’t registered your trademark yet, what are your rights?

So we might talk about that in the future, but right now, even if you haven’t registered your trademark, you can begin using the small TM and I encourage you to use it on your website. If you’re being featured in any type of press or publication, I would include that small tm after mention of your company name or if you have any sort of trademark phrase, word, logo, etc.

In summary, trademarks are very important. You’re probably clear at this point whether or not you have existing trademarks in your business. Maybe you have trademarks that you didn’t realize were trademarks, but these are assets.

Importance of Protecting Trademarks (21:41) Every single time you promote your business, every single time you share about your company, every single time you invest in awareness and recognition of your brand, you are investing in the value of this trademark asset.

It makes sense to protect this. It makes sense to ensure that you are the only one using this trademark so that when people search for your company, you’re the only one showing up. It’s another reason why you want to make sure you’re using something distinct and not generic or descriptive because…

If somebody Googles the name of your company, you want to make sure you’re the one showing up. It’s also important to do that due diligence upfront and conduct a clearance search so that you can avoid the headache and the heartache, if I’m being honest.

And this is something that I witnessed many times over the years of investing in your branding and your marketing and developing your website and making the public announcements and beginning to market your brand and spread awareness of your brand only to be hit with that cease and desist with somebody demanding that you stop using the trademark because they have exclusive rights to that trademark.

Regular Trademark Clearance Searches (22:46) Thankfully, it’s avoidable for the most part if you do that due diligence. So I want to encourage you to do that clearance search. And this is also a good practice to do on a quarterly basis or a semi -annual basis. Do a search for your trademarks just to make sure there isn’t anybody who just started using it.

That way, if they started using it after you, you can call them out on that demand that they stop, whether that’s you personally sending them a message and notifying them of your rights or through an attorney representing you making a formal demand for them to stop.

Conclusion (23:20) I hope this episode was helpful for you as a business owner. Anybody who is publishing content online has a trademark. That might be your name personally, that might be the name of your company, that might be the name of your brand.

Either way, it makes sense for us as business owners to take the steps needed to create a distinct trademark asset, protect that asset accordingly so that we can be preventative and be proactive when it comes to potential legal situations and sticky situations that can arise by nature of doing business online.

If you have questions, I would love to hear from you. Please feel free to submit your question via the Ask Yaz form in the show notes. If you enjoyed this episode, I would so appreciate your honest review and feedback. And if you really, really enjoyed this episode, I would appreciate you sharing this with a friend who is also building a brand and business online. Until next time, I’ll talk to you all soon. Peace.

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