Making Your Mark: Your Trademark, Your Business, and You

The following transcript has been edited for clarity and conciseness. You can view the entire livestream here.

Michelle: Thank you, Rebecca, for being here. Rebecca has done a ton of deep diving into trademarks and trademark law over the past couple of years. One of my favorite things to do is talk to Rebecca about trademarks because she’s into it, so I wanted to invite her for this livestream so that all of you could share in Rebecca’s knowledge and interest. So, to dive into trademarks. There’s often a lot of confusion just at the basic level of, what is a trademark? And Rebecca, whenever I talk to potential clients and I get consultations, there’s often a lot of confusion between trademarks and copyrights and patents. So just from a very basic level, how do you describe what a trademark is?

What is a trademark?

Rebecca: Yeah, good question. Out of those three, the trademark is the one most related to branding. So, a quick description: trademarks are related to branding. Patents are more about the design of a product – and by design, I mean how it’s made. And then copyrights are for creative works: pieces of art, books, TV shows, and stuff like that.

Trademarks can be words or slogans or logos that help the customer identify the brand of the product. I like to use Nike [the shoe company] as an example because they have three very easy examples. The name Nike is a trademark. And one of their other word marks is “Just do it,” which is their slogan. Those are two examples of what word trademarks would be. There are also logo trademarks, which are images that people trademark, like Nike’s “swoosh” on the shoe. Or even Google has their “Google,” but each letter has a different color. To get those colors trademarked, they have a logo trademark for that. So there’s word trademarks, which are just for the words, and there can be design or logo trademarks for images or specifically-designed words.

Michelle: Ok, makes sense. So a business owner might think about the name of their business as the trademark, and they might want to add on a catchphrase or a slogan or something that’s unique – we’ll get there next. And then if they have an interesting logo that they want to be the only ones to use, logos can be trademarks too.

So the next question [is one] that you get all the time, once a client comes on and is trying to figure out whether they can trademark their name or their slogan or their logo. The next question is: what makes a really, really strong trademark?

How to get a good trademark

Rebecca: So this is just from a legal standpoint, right, because we’re not marketing experts, but usually this comes up because clients will want to trademark something that’s pretty – “descriptive,” is what we call it. The sort of the hardest trademarks to even be able to register are descriptive trademarks. So if you have an apple company, if you try to trademark the word Apple, it’s just not going to happen.

Michelle: Like if you sell apples, your farm sells apples. You can’t call yourself Apple and then prevent anyone else from using it.

Rebecca: Right, exactly. And it can even be more abstract than that and you can still run into trouble. Like, a tea company that’s called Leaves probably couldn’t get registered because tea is made of leaves. The USPTO has really been cracking down on descriptive trademarks. Anything that’s kind of describing what the goods or services are, you can’t even register it as a trademark [on the principal register, the register that gives you the best trademark protection]. And the reason is that the trademark is supposed to identify where the goods and services are coming from so the customer knows what they’re getting. When you get a Nike shoe, when you see that swoosh on a Nike shoe, you know you’re getting a Nike shoe. It’s going to be the quality of Nike. Not better, not worse. You know where it’s coming from.

So the more unique a trademark is, the better. Better than descriptive would be something that’s a little more suggestive about what your goods or services are, like Golden Delicious for an apple company or Pink Lady or something like that. It can still kind of connect to what your goods or services are, but it doesn’t exactly describe it. And then the further you get from that, the better. Arbitrary words are very strong. Apple for a computer company would be a strong trademark, obviously. That helps because then, if other computer companies are using the word Apple in their marketing, it’s pretty obvious that they’re probably trying to copy Apple, unless they’re talking about some sort of, like, computer program that has apples in or something.

So arbitrary is very strong. And then the best trademarks are just completely made up, like “Google.” Because, you know, if anyone else is using the word Google in their marketing, they’re very obviously just copying Google.

I know that’s hard for businesses from a marketing standpoint, because you want to tell the customer what your product is. I tend to think it’s best when customers or business owners get creative. Microsoft is a good example of that, because Microsoft is kind of a nonsense word like Google, but it comes from software for microcomputers. So it’s still pointing out what it is, which is kind of the middle ground there, I think.

Michelle: Mm hmm. Yeah, makes sense. Stay away from anything really descriptive. So I own G & G Law, a law firm. I shouldn’t call it “Law Firm Full Of Attorneys.” Something that evokes the idea of a law firm might be good from a marketing standpoint, and would be OK for a trademark. But the very best would be something that’s complete nonsense and something that nobody else uses.

When to get a trademark

Michelle: [Here’s] another question that we get all of the time, especially [when] talking to potential clients who are just starting a business. Almost all of them say “I’m on a budget. I want to do all of the things, I want to cross all the T’s and dot all the I’s, but I can only pay for so much in terms of legal services and everything else involved in starting a business.” Then we have a conversation about when you should prioritize registering your trademark. And the question is, does it vary by business type or what you’re doing? There’s no good answer, I know. This is all shades of gray, but I guess the question is: how do you think through this question and do a cost-benefit analysis?

Rebecca: I think the best way to think through this question is to think about what can happen if you don’t get the trademark. And usually, the worst-case scenario is that someone else gets it or someone else has it where you’re trying to expand. The long story short is that you end up having to change your trademark.

Michelle: Which means having to change the name of your business sometimes.

Rebecca: Yes, definitely. So thinking about that, it’s important to think about how hard that would impact the business. If you are investing a lot of money into, like, product packaging, it would be a nightmare to suddenly scrap all of that and put new packaging on it if the old trademark was on the packaging.

Michelle: That type of client, it might be somebody who wants to build a brand based on a grocery store food item. So they create their package, they send it all off to the factory to make the food item, and put the packaging on it. And you’re spending a lot of money to do that! That would be bad news if you got a cease-and-desist letter and somebody said “You’re using a word that we have intellectual property and trademark rights to. Now you have to change it.” That’s super expensive, right?

Rebecca: Way more expensive than it probably would be to get the trademark. If [it] helps [you decide whether to get a trademark or not], from just a straight bottom line, looking at the dollars, how much would it cost you to change versus how much it costs to get the trademark?

Some other considerations would be if you’re planning on trying to get your name out for marketing purposes. Like, if you’re trying to invite a lot of people to write in their blog about you or your business, keeping in mind that you could lose a lot of the publicity that comes from that if you have to change your name. People aren’t going to know who the blog is talking about once your name changes. But that being said, if you’re not putting a lot of effort into the company name and you’re providing some type of consulting services or something where you’re relying on word of mouth and people knowing you as a person, your business name probably is a little lower on your priority list.

Michelle: Yeah, makes sense. So, thinking through what’s the worst-case scenario. What we’ve seen as the worst-case scenario – there might be something worse – but what we’ve seen is you get a cease-and-desist letter and then you might have to change your name. And for different business types, for different business owners, that’s more cost intensive than it is for other business types.

But there’s also the emotional component which we kind of struggle with. Because there’s the cut and dry, like, there’s a cost-benefit analysis. But in some ways, when you finally come up with a perfect name for your business, it kind of feels like naming your baby.

Rebecca: Yeah, absolutely. We’ve had clients that wanted to apply for… an intent-to-use application before [they] even started using the trademark. So when we find clients that have really fallen in love with the name, we do some searching. If we think there’s a chance of registration, you know, we apply for that trademark just so they know ahead of time. They really want to get that protection right away if they can – [sometimes] before they’re even using it, because they love the name.

Michelle: Which makes sense! This is really helpful. Thanks for doing this, Rebecca, and taking time out of your busy day. Nice to spread the word!