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So much of what we creative souls do in our work comes relatively naturally because it's our passion – we're called to do it.

And, then there's the more traditional business side of coaching, speaking and thought leadership…which can be challenging for many of us.

I have a treasure to share with you. Someone who can help you with one key aspect of the business side of what we coaches and wellness experts do.

Elizabeth Potts Weinstein has been my legal counsel for many years, but she's so much more. She is not your typical attorney as you'll come to understand when you hear her story. Her background positions her to help those in the coaching and wellness industry in a very special way. She totally gets us.

In our role as coaches and wellness experts, we invest a lot of heart, expertise, time and money into creating services and products centered around our personal story and ideas. It's clear how valuable our intellectual property is, but it's not very clear how to go about legally protecting your ideas.

In this invaluable episode, Elizabeth and I talk about the trademark and copywriting processes—how they are different, when is the right time to start trademarking, the tricky parts to watch out for, and more. You'll finish this episode with a better sense as to whether you can handle this yourself or if you're better served with an attorney helping you navigate your way through the process.

Elizabeth's personal journey is similar to so many of us who have found our way to coaching and wellness. After beginning her career as a very traditional lawyer, her pendulum swung to total rejection of the industry, then eventually settled into beautiful equilibrium. If you've heard me talk about my own coaching story, you'll understand why I connect so deeply with her!

This conversation is rich on so many levels and I'm just delighted that I get to share it with you. Elizabeth is a thought leader in the small business legal world. She's been an online entrepreneur since 2004, and a licensed attorney since 2000. She's been interviewed and published and has a very active voice on Twitter. I have personal experience knowing how helpful she is to me and I'm thrilled to share her with you in this episode of the Brilliance at Work podcast!

About Elizabeth Potts Weinstein:

Elizabeth Potts Weinstein founded EPW Small Business Law in 2012, to help her fellow small business owners find ease and simplicity in all of the legal requirements of owning a small business. She has been an online entrepreneur since 2004, and enjoys researching her family tree, hiking, and exploring empty roads on the edge of the wilderness. Elizabeth has been a licensed attorney since 2000, has a Master’s Degree in Human Behavior, and has a Bachelor’s degree in Chemistry, Biology, and Environmental Studies. She has appeared on Fox-KTVU, in many publications such as the Wall Street Journal and the Washington Post, and on various podcasts/radio shows such as Introvert Dear, Nomadtopia, Side Hustle Nation, and Business Insanity Talk Radio.

What You’ll Learn from this Episode:

  • Hear Elizabeth’s evolution from traditional to authentic and balanced attorney serving small businesses of all kinds, with a lot of experience with coaches and consultants
  • The power of specialization in your work
  • The importance of finding an attorney (or any member of your professional team) who fits YOU
  • The difference between copyrighting and trademarking
  • Ins and outs of legally protecting your ideas with the trademark and copyright process on your own vs with the help of an attorney

Listen to the Full Episode on “Legally Protecting Your Ideas”:

Featured On The Show:


PREVIOUS EPISODE | Ep #91: Simplicity Is the Way Back to Love – and Great Work – with Courtney Carver


NEXT EPISODE | Ep #93: Drop Your Invisibility Cloak So You Can Thrive


 

Full Episode Transcript:

Michele Barry Franco:

Welcome to the Brilliance at Work Podcast where we shine a light on where great work, charisma and growing a thriving business you love really comes from. I'm Michelle Barry Franco. I've been speaking of thought leadership and an executive coach for more than a decade, from TEDx stages to world famous conferences. I've helped some of the most beloved business leaders grow their businesses and serve in the biggest way possible through their business and through their thought leadership. I love that. I get to share the best of what I've learned with you here on the Brilliance at Work Podcast.

Hello, hello my beautiful friends. I am so excited to share with you the conversation that I had with Elizabeth Potts Weinstein on legally protecting your ideas. Elizabeth has been my lawyer and legal counsel for many years. And she has a lot of expertise in the coaching, wellness, and online business world. So, she really comes to this conversation with vast experience with lots of different topic areas, but also a lot of expertise working with people who are sharing their own intellectual property; their own stories and expertise that they've packaged into services and products. So, we talk about the trademark process and copywriting and what's the difference, and when's the right time to start trademarking, and can you trademark yourself? And if so, what are some of the tricky parts of that to watch out for? And then how can a lawyer be helpful to you in that process as well?

We also talk about Elizabeth’s story going from a very traditional lawyer to swinging all the way away from law and rejecting it entirely and then finding her equilibrium, which is the story of so many of the people that I work with. I know it's my own story too. If you've heard me talk about my own speaking- coaching story. So this conversation is rich on so many levels, and I'm just delighted that I get to share it with you. Elizabeth is a thought leader in the small business legal world. She's been an online entrepreneur since 2004. She's been a licensed attorney since 2000. She's been interviewed on Fox KTU. She's been in many publications like the Wall Street Journal and Washington Post, lots of podcast interviews, and she has a very active voice on Twitter as well. So, you'll see that she is a recognized thought leader in this arena. I have personal experience knowing how helpful she is to me, but I just also want you to see, she's an amazing example of thought leadership out in the world as well. So let me just share with you now my wonderful conversation with Elizabeth Potts Weinstein.

I am so excited to have this conversation with you and get to share it with my audience. Elizabeth, thank you so much for being here. I'm happy to be here. So I have so many directions. As you know from our conversation just a few minutes ago before I hit record, I have all these things I feel like I want to share with my audience, because I know there are a lot of questions, and they're questions that swirl around in the back of our minds as people who are stepping into thought leadership and sharing our ideas more broadly and widely. You know, there's questions about when you should protect your ideas, and can you really protect your ideas? So, I definitely want to go there. Part of the reason that I love working with you and why you have felt like such a, I don't know, a genuine resource for me in many ways is because I feel like you understand the business that I'm in, in a special way. And I think that's partly because of your own path. So would you share a little bit about how you got to be the lawyer that you are right now? Right. Yeah.

Elizabeth Potts Weinstein:

I didn't start out this way. So, I've been practicing law. I graduated from law school 20 years ago. So, it was a windy road to get here when I first started. It a big giant law firm, and I did the whole big giant law firm thing for a while. And I realized that I hated it, but I didn't know what to do. And I'm sure there's a lot of people who had that experience in the corporate world where you're like, “This isn't right.” But, oh my gosh, I thought this was what I was supposed to love. You know, what do I do now? Right. And so I eventually quit to start my own business. That first business wasn't the right thing, but it was right to have my own business. But that first business wasn't right. Um, and in the beginning I did estate planning law and some financial planning. And a little after that I discovered information marketing. This was at a very early age.

I discovered we're talking like this is 2006, 2007. So I was naming, this is the early ages of that world. And, uh, I discovered coaching and things like that, and I was doing a lot of that kind of work for a while. So, I met tons of coaches and consultants and other service providers and went to all kinds of networking events. I went to conferences and stuff. And one of the things that happened is they were asking me all kinds of legal questions, because I obviously could set up all that stuff for my own self, right? I can form my own LLC. I could write all my own contracts. I knew how to do all those things myself. And so they would ask me for advice, and they would want to pay me for things, and I'm like, “No, I don't want to do any of that.”

I hated being a lawyer. Like that wasn't the right fit for me. And part of it was because I couldn't figure out how to have a law firm and charge money and all that stuff. In a way that was congruent with me, because I was coming from the big law firm world. And even the first, for my setup, was so kind of the old school way of practicing law. Well, it was a very old fashioned profession so there weren’t any models out there to look to yet. So I had to kind of come up with one. So, that was something I had to figure out. First, I had to figure out how to charge money for things that weren't just billing by the hour. Do things for most of my clients by either paying a flat fee for things or they're under retainer where they pay either quarterly or annually.

It kind of all was a thing. And then I also just market completely different in a different way. And so I had to figure that out first. And then there were. I actually had some clients who were waiting for me to launch that, that new law firm business, which is the one I have now. And so I had three clients on day one, which was a wonderful way to launch a business. And you know, that's the right one. It's like, “Oh,” you have you signed people right on that day, the  second you file your incorporation papers. So, that's the perfect way to launch something. So that's how I got to this iteration of my legal practice – was that kicking and screaming, being dragged into it in a certain way. But I think that's – I think there's a lot of people like that where you have a lot of talents and things that you're good at, but you have to figure out how to make those things that worked in the traditional world fit you in who you are as a person, because you're not traditional, but there are skills you got from that world.

Michelle:

So how do you put that together?

Yeah, I mean this happens, you know that I've told you about that happening for me with speaking, coaching, and I've talked about it on the podcast various times, and it happens with clients all the time. So, very similar stories, right? They're in corporate America. They climb the ladder, they get up to a high level, you know, leadership and they're like, “Oh my God, I'm miserable.” Like, I thought this was going to be the, like, this is what I've been working for and I hate it so much. So, then they often, because they're, you know, this gets narrowed down to people who are attracted to my message. So, they're often coaches or wellness experts. So, they swing the pendulum the other way and they're like, no more corporate ever again. I don't want to have anything to do with corporate. And so they're looking at how do I create this new coaching business or wellness business or consultancy?

Elizabeth:

And it's so clear to an outsider like me, I can see the potential. It doesn't mean they have to do it, but I can see the potential for, wow, you really understand what people in corporate are going through. But there's this period of time where you're like, no, never, I can't. Right? It's like this pendulum swinging. And then eventually I feel like many of us, not everyone of course, because we all have different paths, but many of us kind of find our place inside the midst of our experience and expertise and this new way of being. So, it's kind of what I'm hearing in your story. Yeah, and I think

Michelle:

All of our experiences are alive. I mean also even our hobbies and all kinds of volunteer work, all that stuff can be put together and what makes us uniquely ourselves, especially the older we get, you know. You get into your thirties, forties, fifties – you become more and more of a unique person because of all these experiences. But, sometimes we go through these phases where we have to, like, reject stuff for a little while and in a very stubborn way before we can embrace all those little pieces of ourselves to create that person who's really it – fully integrated.

Yeah. And so I was there, because I know this comes up for so many people, was there some like how, what did you land on if you had to kind of give a little summary of it? What was the balance of living this authentic version of yourself that didn't really resonate with the traditional law world and you being able to bring legal expertise to businesses?

Elizabeth:

Well, I think for me, it was,  I created a law firm that was not modeled off of what anyone else did – any other lawyers did. It was my own version of it. So I, and actually even to this day, I don't look at what's recommended marketing things for lawyers. I don't use software for lawyers. And when I say software coolers, I mean like scheduling software. She uses scheduling software for coaches.

Michelle:

Right? Right.

Elizabeth:

Yeah. I mean everything, and everything like that. It just assumes all these things. Um, that is not how I do business. And so I had to reject all those assumptions, about the kind of procedure of how law firms work and the structure of how law firms work, and then just do things my own way, which can be difficult, because like, you know, like I don't own a suit and I, I've actually always worked from home, and this particular law firm and all those kinds of things that are very different than your stereotypical lawyer. And sometimes we'll get some random person off the internet who will send me a message and be like, you know, you really should have photos that are more…

Elizabeth:

What does that even mean? Obviously my clients are probably happy with it and it doesn't look incompetent. I don't in the beginning, things like that might bother me right now. It’s just kind of a funny thing to tell people that.

Michelle:

Yeah. Because those photos ended up being a signal to the rest of us, to people like me, Oh look, here's a lawyer who I might actually be able to have a conversation with. I don't, by the way, this makes it sound like I don't like lawyers or traditional lawyers or it's none of that, but when you're looking for someone you can trust, part of that is like, do I feel like this person might get me what I'm trying to do? And I feel like that picture that you choose is sort of one of those signals, right? Oh yeah. And talking about personal things. Yeah. Like, yeah. I mean, I've had people hire me because I had a cat. People hire me because I breastfed my kid when my kid was little. I'm like, that has nothing to do with practicing law, but it made it so the first was like you're a real person and that's someone that relates to my life and you opened up your life, you know, on your social media or whatever it was. And that it was so sudden, such a huge contrast to your stereotypical lawyer marketing, which sometimes you go to lawyer websites and it's hard to even find the name of the lawyer and find the lawyer’s bio. It looks like something that's kind of like a LinkedIn portfolio where it's just like a resume. It has nothing personal, maybe one line and that's it. And there's no real story about, you know, why they did this or who they are as a person or anything like that. So, law firms are just now starting to do that. Yeah. But some of them are not. And it's still this wood paneling.

Yeah. It just is superimposed, that feel.

Elizabeth:

Yeah. So I think that was always something for me is to just – even to this day – just ignore all of that messaging of passion and just completely do my own thing and look to other professions to model off of. So, it could be coaching and it could be not just coaching but also various other professions and looking, seeing what do other service-provider-type professions, what are they doing? And as far as getting ideas.

Michelle:

Yeah. Yeah. And I think, I mean that is, I would say, why, when someone like me who is a coach and with a growing business feels, you know, that's why I feel comfortable. I'm on a walk, I have a question and I can just send it, and I'm not worried about thinking of everything ahead of time or what you'll think. I mean, you're going to think what you think, but you know, just “Hey, I have this idea for this nonprofit;” but is it something I should just be feeling like you'll understand, almost like the ethos of the business, like, that it comes from passion, that it comes from a deeper place? And so, sometimes we're just working things out and knowing that you'll understand, that's one of the things that I feel like you do that isn't, that I don't see in the legal world as much is you get the foundation of what we're trying to do, and that sometimes it's an exploration of an idea, and the legal questions are part of that process.

Elizabeth:

Um, and really, that's part of what being a lawyer is actually supposed to be. I mean, we are counselors. That’s part of lawyering, part of a traditional old- school legal practice. Like, if we went back a hundred or 150 years ago, lawyers, we're generalists, you know, just, and you would be a lawyer in a town and you would be the couple of lawyers in that town. And you would practice all kinds of law. You would be a counselor for someone, a business owner, and they would comment, and they would know all about their business, and you would talk to them about all the different things. And, that's what it was supposed to be like. But, now what happened? And this same thing happened in medicine too. It became these professions. We became Uber specialists. And so you lost the big picture. Yeah. Which is really unfortunate because there's no one who has a big picture about anything.

Michelle:

Yeah.

Elizabeth:

In our business or our personalized or our health or any of that stuff. And we really should be able to do that. And I think, you know, I think that's true for anyone who's looking for a lawyer. You want someone who kind of gets your type of business. So, like if someone came to me and wanted advice about like – and I've actually had this happen – where, like, when someone wants advice about some area that I don't know anything about anymore, like, I actually use to advise things in biotech, and I don't, haven't been in that industry in like 15 years. I would refer them out, because I'm not in there anymore. I used to have biotech clients. I don't do that anymore. So I don't really know what's going on. I'm not going to be able to have a gut  instinct about it anymore. So, it would be better for them to go to somebody else. Cause you want someone who has dozens of clients in that industry and they kind of get it. And I can give you that intuition. They haven't developed intuition about it, where at one time I did and now I don't. So, it's the same and that, but that's true in any industry. You want someone who has a lawyer who has that kind of intuition.

Michelle:

Yeah. Yeah. That makes so much sense. And again, as I was saying earlier, I mean, I think that is why, and it's why I love having you on, on the brilliance of work podcast and being able to share this with our audience; because I know that you have, you work with, I know you don't work exclusively with coaches and consultants and speakers, but you do a lot in that industry, and that's why I think you're such an amazing resource for this kind of thing, because there are a lot of… I know there are complexities in every business and we have our own sort of unique set of complexities. Like, we are sharing so many of our ideas, and, you know, from many conversations I could trademark this or I could trademark this, and then it kind of doesn't end up being what I thought it was going to be.

And so if I went down every one of those paths, I'd spend a lot of money and you know, take a lot of my time and your time unnecessarily. So, it's one of those, but then other times it feels really meaningful and important to trademark something, for example. So, I feel like your expertise and experience in that arena is so helpful. So, I would love to just talk about that and have you share about that. How does a coach, wellness expert consultant who has their own ideas, maybe they've created their own model, or I mean everywhere from branding to creating their own model, how do they decide when they need to go down the path of trademark, for example?

Elizabeth:

Yeah, and that's a hard question because it depends on a lot of things. It depends on what your budget is because you can obviously, I mean this, you know, this is a very obvious thing. The bigger budget you have, the more room you have to play with this, versus a tiny budget. But, it also depends on what your plans are and what you want to do with this thing, or what you might do with the thing. And, it depends upon where you are in the process with this. So, I mean the budget's kind of obvious, and we could talk a little bit more about that because the short version of that is applying for a trademark with a patent and trademark office. And, as you know, but as your listeners are now gonna find out, cost money, just the application fee.  What I'm talking about, the lawyer fees, but just the application fee with the trademark office in the United States is $275, typically for each class, for each trademark in a class is like which category it goes in, like which service or product.

Usually we only do one class, but sometimes we do two or three. So you can see how this adds up. Is it just getting the domain name? It's 10 bucks or whatever, right? This is like hundreds of dollars and you might have more than a hundred jobs you might do in two or three classes. So, you don't want to just do everything; it's not like a domain name, which can add up too. We're talking hundreds of dollars for each idea, and that's not even paying for a lawyer. You can do trademarks yourself, but it's very easy to screw up because the rules are very odd and not intuitive and technical. So, I get a number of people who have screwed it up, and I have to fix it for them. So, just their copyrights are much easier to do than trademarks – is the general rule of thumb.

Michelle:

I want to ask you something about that because, um, I haven't tried to do the trademark process myself. I've done the initial search just to kind of get a sense before I go to you and say like, “Hey, I'm, you know, thinking about going down this path,” but otherwise I haven't tried to do it. When you say people can screw this up, do you mean they can get something approved and go through the whole process and then have done it wrong, so it actually doesn't protect them?

Elizabeth:

Oh, that too. Yeah. So it can, so sometimes they put it in the wrong category.

Michelle:

Mm. Interesting.

Elizabeth:

And which is very upsetting. Yeah. So, and I've seen that. Sometimes we put it in the wrong category, not because we did a bad job in the sense of, you know, I was doing bad lawyering or we didn't have a good discussion. But sometimes we'll think that you have a plan that you're going to launch a program in this certain area, and then three years from now when you actually launch it, it's a different era, you know? And then it's like, “Oh, we gotta redo the whole thing.” Sometimes that's just what happens. Like, we change things. It's dynamic. And so we're wrong. But we, you know, it's cause we couldn't predict the future, or things change where I have someone where they thought they were going to be doing live speaking gigs, but there's a pandemic right now.

Michelle:

Yeah.

Elizabeth:

And so the live speaking gig category didn't work out.

Yes. So you know, like…it's, yeah, well what are you going to do? I don't know what lives are going to happen. I don't know. So, there's things like that that we can't know, that's just out of control. The thing that actually typically people mess up that is hard to fix is they describe the category or class of their  service wrong. And they do it in a way that does, is going to make it to their… won't get approved.

Michelle:

Mm.

Elizabeth:

And the reason they won't get approved is because there's some other trademark already in that category. And because they didn't do a search the right way. And so if we would have done the search the right way, then we could have put it in a different category. Most trademarks can be filed in more than one category. Um, so we might've put another category in, and the examiner might not have seen it in that other one, and he might've gotten through anyway, which there's a lot of trickiness. Yeah, that's what I'm hearing. We're trying to get into the weeds, but the idea is that there's all kinds of trickiness that you can do to get a trademark through. And no one would ever know this unless they filed a lot of trademark applications and some people who are not lawyers do file trademark applications, because they work in a big company and that's their job, even though they're not a lawyer. But you're a regular person who only does one or two or three or something in their whole life.

Michelle:

Yeah. Well the thing that's come up in mine multiple times is that, and I think this is something really good for those who are listening to think about. Yeah. Is the title, if I understand this right, the title of the brand, whatever the title of my program is like too self-descriptive, something like that. So, it describes too what it is. And so it's not trademarkable

Elizabeth:

Well, its quote is merely descriptive. The quote is the objection. One rule of thumb is something that makes a great keyword or domain name or marketing thing is the opposite of what makes a good trademark. Exactly. The idea is it's like, so for example, the name of my business, the legal name of my business is EDW Small Business Law. That's the corporate name, my business. Yeah. That's like a terrible trademark. Small business law. Right? It has the EDW in the beginning which is just my initials.

Michelle:

Yeah.

Elizabeth:

But small business law. I mean, yeah, that's just what I do. So there you go. Merely descriptive trademark, small business law or small business lawyer. Because that's a description of who I am, what I do or the idea is; but where people get into a problem, and what can go either way, is a lot of times you'll have the name of your program or your system will be the result that you get for people. So, it will be you get them more clients now or something like that. Like [inaudible] it's some sort of the way they feel at the end or the result that you get that a lot of those could go either way. It depends on which examiner you get. Some of them will let it slide by and some of them won't. For those, there are things that you can trademark, you can get them not on the primary register but you can get them on the supplemental, which isn't quite as good.

Also, you can trademark a logo, which it's not quite as good. It has problems for that too. So, you know sometimes there are things you can do but, as you know, because we've had these issues a lot of times. What makes a great name for being able to communicate to your customers or your clients? Opposite of what makes it good trademarks. A great trademark is something that's very random. It's like Amazon, which is a store for books. I mean, but, it was originally a store for books. Like, that's like a random thing. Nike, which is like a goddess from legends, for shoes, kind of – a little bit – goes with it because it's like “to go fast.” But that's, but it had nothing to do with shoes, you know? So, there's things like that, like where it's kind of a random thing, or maybe a little bit suggestive; because Nike is like a racing goddess, like make you get it.

The Nike thing, when she gives you an award, but like that's what shoes I like, you know? So, that's just something to be aware of. The biggest thing to be aware of is that you don't get a trademark automatically. It's a process you have to apply for, right? Yeah. When you're thinking about whether or not you want to do a trademark, it depends upon your goals. So like everyone doesn't want to trademark everything. It costs money. You don't necessarily want to trademark the name of your business or the name of your system, but there are times when you definitely want to at least look into it. So if you think you want to license or certify people – like you want to license this program to corporations –  you want to certify other coaches or consultants to be licensed, such and such providers for whatever those situations. Or, if you want to sell your business and you want to sell this as part of your business, those are situations where you definitely are going to want to at least try to trademark it, or at least look into whether or not you can trademark it, because there's going to be an asset for you to be licensing, and when you license that program to the corporation or the other coaches or consultants or whoever, then part of what they're paying for is the fact that you're letting anybody else use that name.

Michelle:

Yeah,

Elizabeth:

So those were just situations where you definitely want to at least look into it. Now also, even if you're never going to trademark something, you may want to at least do a search and sometimes even pay for a lawyer to do a search for you, because you don't want to be accidentally – especially if this is your signature program, you don't want to be accidentally using a name that's infringing somebody else. Yeah. Um, and then you're making money on this. You're spending time and energy on it, spend a lot of money on creating all this stuff. Maybe you're doing a live event at this point. No, because it's in the future we can have a lot of events.

You get a cease and desist letter from somebody. Yeah. And then you have to just finally – because they already have a trademark – and you have to change the name of everything. It's totally frustrating, and you don't want to have to deal with it. So, I have some clients who get a trademark, because they’re kind of a risk-averse person, and they don't want to ever get sued by anybody. So, like they just are doing it for that reason. So, it depends on the kind of person you are. Like some people do it just as a defensive measure so they don't have to worry about that.

Michelle:

Yeah. Future. So, talk about, if you would, the difference between trademark. So, what does a trademark protect you from and especially as compared to a copyright?

Elizabeth:

So, trademark versus copyright. Trademark is about the name of something that is protecting a phrase, a word. It could also even be protecting a sound and a smell. I'll be wanting to get really into it is associated with a product or service where the customer, he's associating with that name or phrase with that product or service and connecting that with the source of that product or service. So, they're saying to themselves, “Oh yeah, I know that Nike shoes come from this company,”

Michelle:

[inaudible]

Elizabeth:

and that it's all from the perspective of the customer. And, when you get a trademark, it's old. It's in the category that you claim it in. So, it's not in every category in the world it’s in. Just like when Nike originally got their trademark, it was in shoes. Now, of course Nike also has trademarks for tee shirts and hats or a gazillion other things. We can pull it up and it'd be like a hundred different trademarks, but in the beginning was just for that. So, that's versus copyright or copyright. Is it really about art? In a lot of ways it is an artistic creation that you get as soon as you create that artistic work and put it into a tangible format –  which tangible can be electronic. It doesn't have to be paper, but as soon as you create something in tangible format, you have a copyright in the work; you can register that copyright and you can't sue anybody to register it and you get more rights when you register it.

Like if you register it within three months of creating it, you get extra rights. Like you don't have to prove damages. You get damages automatically and things. But yeah, but, you get some copyright rights. Second, you create that. So, the second you type up a paragraph, you have copyright over that second, you snap a photo, you have copyrights over that. Okay. So it is a very different right, where trademark, you have a little bit of trademark rights as soon as you sell a product or service in conjunction with a name; but you only have those rights in the state or the location where you make that sale. So, if I have a trademarked product, I mean, you know, I'm selling something that has a name brand name on it, and I sell some say that here in California where I'm located. That doesn't help me. If someone has that same name on their product in New York. Yeah I have. That's why I have to file a trademark. But different than copyright – someone can actually –  and someone steals my paragraph and does it in Africa, because we have treaties with the various countries in Africa when almost every country in the world, they actually are still infringing

Michelle:

Mm.

Elizabeth:

Frameworks that are very different, because trademark is country by country.

Michelle:

Interesting. Well, I know that's one of the things that we have gone through when we've done the trademark process for, you know, you'll say to me like, “okay, where you know, have you created anything around this? Where is it publicly shared? Somewhere where we can connect this name with, you know, something that you sold?” I know those are some of the questions that you've asked me as we've gone through the process.

Elizabeth:

Right? Yeah. Cause trademark, you can file a trademark application before you sell something, but it's just an intent to use the application. It won't actually issue. Even if you get approved. Yeah. It won't actually issue until you make a sale in the United States. Interesting. Um, in conjunction with the name. Um, so you can keep it pending for up to three years, and they'll keep making you pay more and more fees sharing our office. Um, so you can keep it pending for a while. Sometimes that can make sense if you want to get dibs on that name. Yeah. I've run into a lot of clients where this has been a problem, though, and I've actually had this problem myself and lost the trademark application because of myself. I was so mad. Um, cause if you change anything about that name between when you do the filing and between when you actually sell your thing or users, then you have to start all over. So if you change the spelling, you – in my case – decide not to. Ha, I had to put a space in it.

Michelle:

Oh no.

Elizabeth:

Okay. Like if you put it in a different category, obviously use it slightly differently. I mean just all kinds of things can make it be, well they'll, some examiners will say, “well now, you have to start all over again.” So, yeah, you will. He's sure that that's exactly what you want. So, it's a kind of thing that you would talk to a lawyer. I'd be like, “Oh, does it make sense in this case? Do you intend to use applications?” Sometimes it does, because then you get that date, then you get dibs on that game. And, if you're going to be spending a lot of money on branding and it can make a lot of sense to file an application, because someone else has an application, then you lose the date. They win because they filed theirs. So, and that I've seen that happen. You don't want that to happen.

And that's something that I think needs to be pointed out. I've had clients come in who’ve been in business for many, many, many years as coaches and have an established brand but never filed a trademark application on it. And then someone else, I started a business, use that same brand for a little while and filed a trademark application, and then it became the short version of that –  says a huge extravaganza, and it was incredibly expensive. So, because, while my client used it first, yep – they did all the trademark application first and they didn't really use it everywhere all the time. Right. Because we probably don't have clients in every single state all the time. Right. So if you have a brand that you've been using for 10, 15, 20 years, a very well-established brand, that's great. You may want to think about, “should I go ahead and file a trademark application?” Yeah. To make sure no one comes in and who thinks they're being clever, difficult. Um, because it could be a big problem, but that's something that you know, you're running to keep using. Sure. Yeah.

Well I think that's the dance that I have sort of found over time is, like, I see this with my clients because a lot of them have a lot of good new ideas and they are exciting. And, you know,  after a while when you're out there working with people over time, you create these new models and you're like, “Oh,” you see something new and it all unfolds before you. And there's this period of like, “Oh my gosh, this is it. This is where I'm going in my business and we're going to end up.” I’ve done this so many times. So, maybe I better go protect it. And then I'll go down that path and you know, maybe start the trademark process or start the conversation and then it kind of fades away because I learned something new. You know, about, I don't know how it lands with a slightly broader audience of people. I'm like, “Oh, maybe it's not quite exactly. Maybe the title is a little bit different or maybe you know, maybe whatever, some element that's meaningful to the trademark process is different.” And I'm like, “Oh, so it's like you want to wait a little while, right. Just to kind of make sure it's a direction you're going solidly but not wait so long that you have what you just described with your client. Yeah. And that's one of the issues. It's something to be aware of – is that you can't change the name once you file it. Yeah. So you have to be at a point where you've done whatever client/customer target audience research testing stuff that you need to do. Yeah. To get to a point where you've settled on that name. Yeah. And it may be that you may launch it, and it may not work, you know, and you may end up abandoning it or whatever. Yeah. Who knows what's gonna happen that way in the future, but any sort of testing kind of stuff. And you know, you may do an initial run of things. You may do a little kind of secret little webinar Zoom thing just to put it out there a little bit and see what happened. And that may need to have to happen before we file a trademark application, because you have to see how it lands. Yeah. And I think it is hard. I mean it's just like all of us who own too many domain names, my domains, and I'm much better than I used to be. I use so many, I'm so much better now, and now almost all of them are set to automatically expire.

But it'd be, it's just like, I'm just like, I can't even remember buying that one. You know? Sometimes I'll go try to buy one I already own. Oh my gosh, I have done that like someone owns. I'm like, Whoa, someone owns that. Me. No. You know, I think it's a good idea to, of course, do a search yourself, learning more about how to do a good search. I mean, I think one of the things to remember is it's not about just searching, just that exact title you need to look at, and you know, “Is the domain name available?” is not enough. That is not a trademark search. Just because this is not me. You're okay. Yeah. Looking in the trademark database is obviously good. Yeah. [inaudible] also just do a Google search. Yeah. Because they search on Google and see what comes up. Sometimes there's nothing in the trademark database, but uh, stuff comes up on Google.

There's an exact business with that name. Yeah. That happened to me. Yeah. Well, how are you going to address that? Because the trademark office is going to find that. So you have to figure out, are you going to be in a different category? Like how is that going to be, you know, how are you going to strategize that? Does it even make sense to do that, because you're gonna have to beat them in Google results anyway? Like, you have to go through that whole process. Does it even make sense to do? Um, yeah. And also realize that when they search the trademark database, they don't just search the exact name. It's much more clever searching than that. They're searching the important words they're searching. One of the things that happens too, is sometimes you'll search the whole entire name, but there's actually already a trademark on just one of those words.

It's a very broad trademark and in the exact category that you want, right, to doing a more structured search. And that's the kind of thing that it's hard for you to learn yourself. That's more of what a lawyer will do a bit. Sometimes that's what I do for clients. Like, sometimes I'll have a client who'll be like, “here are my three ideas for my new…” yeah. On task or whatever. What's the plus and minuses of these three ideas? And then we can go through like, well this one, no [inaudible] yeah, these are both maybe. Okay. And that's helpful cause you don't want to be doing the no, that's just a bad idea. So doing those kinds of searches is a good way to to start with that process.

Michelle:

Yeah. And we can do some of it ourselves. Just to get a sense, you know, so it's, and I just have found, and I hope that that's what people are getting out of this. Some tips around ways that you can start to do some of this for yourself so that you can begin putting the right things in place. Some of what I've learned from you is, even before I have a conversation with you about a new name of something or whatever, is to make sure that I'm using it somewhere that I know where, you know, I’ll put the TM after it in a lot of places. I know there's, like, isn't there tips around putting TM after a name if you're heading toward trademarking it?

Elizabeth:

Yeah, so like in the United States, if you are using the name of, you're using a name or you're using a phrase or a word in conjunction with the sale of a product or service, then you have some trademark rights in the States in which you've made sales. And that's what the TM is. Okay. When you see people have a TM, well they'll be doing it wrong, but they're doing it correctly. They don't have a registered trademark with a pen and trademark office. They're claiming state law trademark rights.

Michelle:

Ah.

Elizabeth:

And so a lot of times people use it with taglines. Sometimes people use it with the name of their business because they either couldn't get a registered trademark or they didn't even apply for one because they knew they weren't going to get it or they didn't have the budget for it or whatever. So, you can use that either before you decide if you're going to do a British or trademark or if you're not going to, for whatever reason.

Michelle:

Yeah.

Elizabeth:

So, uh, taglines are actually a great place where a lot of times we don't do registered trademark because you change taglines so often. Yeah. But you still put a TM there because that's part of your branding, and it's something that's very important to your business. You don't want someone to just randomly copy it. Yeah. And so you can start using TM in the beginning, and then, even if you do a trademark later, it actually makes it very easy to switch that out and helps you use that name or phrase as more of a trademark, as opposed to something in the ordinary course. So, that's another thing that people kind of mess up, is if that phrase is something that's um, a result that you get for your clients, for example, or it's a feeling or something like that, people will start in their copy, they'll have it in their copy just in regular sentences and you don't in, in lowercase letters. And you don't want that. You only want to use that phrase now in a trademark, the way it is now official…

Michelle:

It's a thing. Yeah, it's a thing. Yeah.

Elizabeth:

So, you always use it that way and it helps people so it doesn't accidentally get in the middle of your property. That's something you guys, if you have copywriters working for you, you're going to need to tell them that. Like, this is our, you know, this is part of our branding. [inaudible] only can be used in the trademark anyway. It's the such and such system TM.

Michelle:

Yeah.

Elizabeth:

That's how we use it. Cause otherwise that's a thing that the trademark office examiners will use your own words against you and look at the website, and they'll find in your branding will look, you even use it in a descriptive way.

Michelle:

Ah. How do you argue against, you're never going to win that,

Elizabeth:

You know, so that's something that ‘s helpful if you use it with the TM, and you use it that way, then you're not going to have your own website be used against you at least.

Michelle:

Yeah. There's just so many. I'm just sitting here thinking there's just, I could, we could just keep talking about it. Cause of course there are so many different details and things that are – I'm thinking of as you're describing that-  and what I think I want, what I hope people will take away is there are some things that you can do, and knowing what those are, you know, just to kind of get started in the process, test out your idea, make sure it feels solid for you. Like, before you start a trademark process and invest in that process. But, also the power of just having a counselor, having a trusted advisor and guide around your legal matters is such a big deal. And I didn't do it at first like most of us don't. Yeah. Because I was like, is it too early? It seems so dramatic, but you know, now I don't know what I would do without having you that I trust to ask these questions to.

So, you know, I know it's not something people necessarily do right when they put up their website, although it's not a bad idea to say, look for the person and really looking for someone who can hear you in the way you're describing this, when you're ready to look for a lawyer. Look for someone who understands your business so that the conversation just, they can be shorter. You'll actually probably save time and money in that process. Yeah, I think that makes sense. Yeah. So I'm just hoping they'll take that away. Yeah. So thank you so much. So, so much good stuff that you have shared with our audience. I so appreciate you in my own business and in this conversation so much, Elizabeth. You're welcome. It was my pleasure. Well, I feel like that conversation could have gone on more and more. I had questions in my mind popping up, but I was like, Oh, we're already longer than usual and, and plus, I don't want to overwhelm you thinking about the legal questions.

And I think, cause I think that's what happens for us a lot of times is we kind of shut down because it starts to feel too complex and that's definitely not what I want to happen. What I'm hoping you felt from this conversation is the rightful reverence for your expertise, for your beautiful message, for the work that you're doing in the world, because that's what legal care does. It takes rightful care of what you have created, of your best ideas and wherever you are in your business. I hope that you're thinking about how to care for that amazing expertise of yours because it is worthy of that, that big vision that you have. I know that call you feel to serve is strong because that's why you're attracted to, To Brilliance at Work, to this message, to this podcast – that call you feel is strong, but sometimes our vision around that call can be scary because it really has us as a beacon, right?

Like a beacon shining our bright light, big and broad, and further and further. The more you see that there are ways to care for that, to care for your intellectual property, to care for what you're creating and that you don't have to do it alone, you can do it in partnership. I think the easier it is for us to step further and further into that vision, and that's always what I want for you. You know why? Because you, yes, you were made for this, and I know that because you know that, and I already can't wait to be here with you next week, cheering you on and supporting you on this journey. Take good care. Thank you so much for being here with me on the Brilliance at Work Podcast. If you want to know how to tap your own most natural charisma as a business owner, leader, and speaker, you can download a free copy of my book, Beyond Applause, Make a Meaningful Difference Through Transformational Speaking. This includes a free short course that helps you get crystal clear on the message at the heart of your work. You can get a free copy of this book and that short course@brillianceatwork.com/ free book. I hope you'll love it.

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