The Cheri Hill Show

The Cheri Hill Show is not your ordinary business talk show. Join Cheri Hill, “Wealth Protection Diva”, to learn what it takes to start, grow, and maintain a successful business.

Each week features a successful business owner, community leader, or industry expert who shares their challenges, insights, and advice.

In this episode, Cheri Hill has invited expert Russ Weinzimmer — Senior Patent and Trademark Attorney at Strategic Patent Law®, Russ Weinzimmer & Associates, P.C. — for a radio interview: trademarks and how they can help your business.

Transcript of Radio Interview: Trademarks

Introduction

Now. The “Wealth Protection Diva” is a successful entrepreneur, business owner, and premier business strategist. President and CEO of Sage International, Inc. and a national speaker. Best-selling author and motivational teacher of financial education, business development, and wealth protection strategies. The joys and frustrations of being a business owner. Her insights are motivating, her frankness inspiring. Here is Cheri Hill…

Cheri

Intellectual Property, often referred to as IP, is a legal term covering various forms of valuable business assets. The three primary areas of IP are trademarks, copyrights, and patents. Many people confuse trademarks, copyrights, and patents, frequently referring to copyright when it’s really a trademark that they’re talking about or calling all IP a patent. Although there are some similarities among these forms of IP, they are very different and serve unique legal and business purposes.

A trademark — our topic today — is one of the most important business assets that a company will ever own, because it identifies and distinguishes the company and its products, services, in the marketplace from its competitors. Therefore, it is good practice for all business owners to take sufficient action to protect and enforce valuable trademarks.

My guest today, Russ Weinzimmer, has over 30 years of experience in patent law, which includes seven years doing complex patent preparation and prosecution in demanding downtown law firm environments, seven years as in-house chief patent counsel at a leading global high tech Corp. listed on Nasdaq, and over 16 years as founder and senior attorney at Russ Weinzimmer and Associates P.C. Five years of corporate and entrepreneurial experience prior to his career in law enables him to better understand the business needs and objectives of his clients. Russ presently advises a variety of start-up ventures. So, Russ, thank you for joining me today.

Russ

Glad to be here, Cheri.

Cheri

Let’s start with kind of the trademark overview. What is a trademark?

Russ

OK. Trademarks, as you pointed out, are among the most valuable IP rights for any company. Even companies that don’t have inventions and don’t need patents certainly need trademarks.

And there are many sources of confusion around this and many people believe things that are erroneous about how to protect their trademark. So what we might do is first discuss a lot of these misconceptions and clear it up before then we say what we actually need to do.

So I just spoke to someone the other day that thought that forming a corporation or an LLC would protect the name by virtue of using a name as part of that process of forming a business entity. And that is not true.

Forming a business entity is separate from registering a trademark and protecting the name of that business. It’s great to form a business entity, but you also then have to go the next level and protect the trademark aspect of what it is you are creating.

Cheri

I would agree.

Russ

You would agree. Excellent. And I know you’re involved in helping people create business entities, but they really do think if they just can lock in that name as part of the business entity, they’ve locked it in and that’s it.

Now then, there’s another idea that you can form a business, and it has a name, but that doesn’t need to be the same as the name that you operate under, so you can have a DBA. Form a corporation with a first name, do business under a different name, the name you’re doing business under is what needs to be protected through trademark, because that’s what’s out there. That’s where you want your reputation associated with that name, and you want to make sure that there’s a clear distinction made in the marketplace, so no one is confused.

And the confusion can cause problems in multiple ways. You could lose business because of the great reputation you and your products have or your services and someone else decides to call themselves the same thing. So they can then ride on the coattails of your great reputation. They don’t have to do any advertising or marketing. They just say the name and people flock to them because of the great reputation you took 20 years to build.

So that certainly is something you don’t want. If you see someone using your name or anything confusingly similar, you would want to then assert your trademark rights. And you couldn’t say: “I own a company with the same name, so stop.” That would get you nowhere.

Cheri

Great.

Russ

Likewise, registering your business name in the Copyright Office. That would not work, because copyright cannot protect names or short phrases. So you can’t copyright those things. So if you try or think you did, that would be ineffective.

There’s something analogous to the poor man’s patent. I could imagine someone thinking that there’s a poor man’s trademark. So they write it down, mail it to themselves to prove that they thought of it first.

“This is my trademark, I thought of it first, so I mailed it to myself. Here’s the letter with the postmark proving I thought of it first. Stop.”

They would not stop, because you have no trademark rights. You need to apply for those trademark rights.

If you buy a business domain. People think: “All I have to do is get the website name. I’m going to go onto Godaddy and lock in that name for my business right there. And so no one else can compete with me, because I own the domain name.”

That is false.

Someone else could be already using that name and business. They might not have the website name. Someone else could have superior rights just because they actually go into business. And you can’t stop them, because they’re really in business, and just owning a domain name is not considered being in actual business operation. So that’s not effective.

And just filing a DBA. “I know that this is OK, this is a good name, and I can protect it because I filed a DBA.”

Doesn’t matter.

You might have been cleared in your state. No one else is operating under that name, but that doesn’t replace federal trademark registration where they clear the name nationally. So, that’s a whole different beast.

Cheri

Great. And I know years ago I had a trademark — I’m sure it’s expired now, because I didn’t realize I had to renew it (and we’ll talk about some of those, you know, how to maintain your trademark) — After the Inc Dries® and that is what I used to run all my workshops under, I created DVDs around it. And so it became real clear to me that that trademark became those products or those services related under it.

It was federally registered, and it wasn’t Sage International, right. Sage International owned the trademark, but everything we did: the marketing, the building of the workshops, all the materials all showed After the Inc Dries®. And so I got real clear on, you know, kind of what is a trademark.

But, Russ, like you say, I get people that call me all the time, and they think, “If I named my company my trademark”, you know, and so that’s why I wanted to have you talk to us today.

So let’s figure out if somebody has this great idea, they have a service or a product or an event or a speaking gig or whatever, and they want to call it something else. What are those steps to really figure out: “Can I own that name?”

Russ

OK. Well, the first step would be for the trademark attorney to do a search, an exact word search, in the trademark database, to see if anyone else has applied for it or already owns it.

You can also do a Google search and look for exact use of that on the web. Because if someone else is using it, that’s the first sign this may be a problem.

Now it may not be a problem if someone else is using it for an entirely different purpose in a different industry, different products, different services that are clearly distinguishable and totally unrelated. So those aren’t going to be confused in the mind of the public if one person is using it for automotive parts and someone else is using it for cake decorating supplies. There is very little chance that there will be confusion even if the trademark is identical. So the Trademark Office will allow that mark in both classes of goods.

Cheri

So let’s touch on this very quickly: I mean, there’s a lot of people in our world that think they can do this themselves or go onto some online registration service, but I’m sure in your experience that can prove disastrous for entrepreneurs.

Russ

Absolutely. What a great point. The reason why that’s true. Yes, the Trademark Office does provide an online application capability. And I remember when I first did it, I had been doing patents for years and then I started in to trademarks, and I thought: “Oh, this is no problem. I’ll just go online and do it myself.” And I saw that each question had huge numbers of issues and questions to resolve. And just clicking the little button, you could be veering off a cliff if you made the wrong decision.

So I realized you really have to know what you’re doing. And like anything professional, you wouldn’t do surgery on your own hand if there was something seriously wrong with your hand.
And a trademark, it goes to the core of the value of your business. So you don’t want to be messing with it, not being absolutely certain that you’re making the right decisions.

So there’s many questions that come up:

  • How broadly should you be trying to get protection?
  • How many elements do you want to put under that umbrella?
  • Are you going to include every product you ever envision selling?
  • Or maybe just the ones in the first year?
  • Can you add further classes later?

These are all huge questions that it really makes sense, if you want something to issue reasonably quickly and with reasonable likelihood, you might want to keep it a little bit narrow.

You certainly should be aware of other marks that might be similar, such as sound-a-like marks or look-a-like marks. You might not want to do it if it’s something out, if you’re basically walking into a situation where you’re creating confusion in the marketplace.

So I offer consulting on how to choose a mark. And my background includes, like you said Cheri, I’ve been an entrepreneur before I was an attorney for patents and trademarks, so I can advise on the marketing appeal of of a trademark: How effective will it be? Will it get the customers you want? Will it work legally? Will it be distinguishable? There’s all these different factors. And I’ve done this for years, even before I became an attorney. I would be the one that selected the trademarks and navigated all these issues for the businesses that I was involved with.

Cheri

So, Russ, we have to go to break, but when we come back, I want to pick up with Russ Weinzimmer, and he’s one of the founders of Strategic Patent Law®. They do offer a free phone consultation, so if you want to call (800) 621-3654, you can chat with Russ. He’s very knowledgeable.

We’ll be right back.


Cheri

Welcome back and thank you for tuning in to the Cheri Hill Show. I have expert guest Russ Weinzimmer, who is the founder and senior attorney at Russ Weinzimmer and Associates P.C., Strategic Patent Law®, and they do offer free phone consults, which I really love about Russ. I’ve worked with him for many years.

We’ve been talking about trademarks, and you know, there’s a lot of confusion in the marketplace, but most important, Russ, when someone comes to you — it’s been identified that they have a valid mark, that we need to protect that mark — so what are some of the steps? Besides, we know, you’re filing with the Patent and Trademark Office, but now if I own that mark and I move from the little TM trademark to a ® registered trademark, what does that give me?

Russ

OK. That gives you the right to stop others from using marks that create confusion in the marketplace. Sometimes they may be confusingly similar, and sometimes they may be identical.

And I have had clients contact me who have registered trademarks, and I always confirm that by looking up the mark in the trademark database to see if their trademark is still current and assertable.

So we can talk about how to keep your trademark current and assertable, because a lot of people, they get into business, and the years go by, and before they know it, they have missed a deadline to keep their registration current.

So there are fees that you need to be paying between the fifth and sixth year and between the ninth and tenth year. You have to keep every five years paying fees to the Trademark Office. So you got to check up on that, and you can always give me a call. I could look up the status of your mark to see if you’re current.

But that’s what you need is to have that registered trademark, so we can then send a copy of that to any party that is already using a mark that is the same or confusingly similar to your mark.

And what I do, I have an approach which is litigation avoidance, because I generally don’t get involved in litigation. I prefer not to. And that really aligns with my clients’ objectives, because litigation is expensive, and it’s upsetting and time consuming. And as my grandfather would always say: “I don’t need the aggravation.” So nobody wants to be in court.

And so what I specialize in is keeping you out of court. So when I confront a party that is infringing your trademark, I tell them that this for them is a free consultation, and I will counsel them on how to avoid being sucked into court and just having a really bad day, because they will lose.

And when they understand how grave the situation is and how easy I can make their life, I can counsel them on how to transition over to using a different mark that will not be in conflict with my client’s trademark. That’s my approach, and so far it has worked every time.

Cheri

I like that approach.

I think one of the things that, you know, I’m sure you counsel your clients on, I mean, when you think of a sentence or a mark, I mean, it has to be a little more in-depth than that, right?

So how are you with, you know, being honest with people to say, “Not really sure this is going to accomplish the goal.” Which, the goal is to build brand and awareness around your company in a way that isn’t your company and your logo. It’s separate, but yet, it has its own legs and its own purpose.

So do you counsel people on, you know, let’s really noodle on this and make sure it’s going to accomplish that goal before you go through the process of searching, and paying the fees to register, and then finally defending, if necessary.

Russ

Yes, I do help people select trademarks. So the trademark has to be suitable for trademarking, so there are marks that are stronger than others.

You can have a mark that is completely unrelated to what you’re doing, like Apple® and computers. That’s a very strong mark, because before Steve Jobs wanted to call the computer company Apple®, apples were just fruits from trees.

And that’s an extremely strong mark, because he had to build a brand, build an association between the name and the product and the company. So that was great.

But at the other end of the spectrum is just a generic mark, where you are essentially trying to co-opt the language, which you’re not allowed to do. So if you were to select Mexican Restaurant as the name for your new Mexican restaurant, that would be totally not OK.

Cheri

Right.

Russ

The Trademark Examiner would reject that out of hand and say “Yeah, that is so descriptive as to be just you’re trying to take generic language and own it. You can’t do that.”

So there’s this whole spectrum. And I’ve got an article on my website about this, and we guide you through that process, make sure that the mark is going to be strong enough, but also make sure that it helps sell your product.

The mark should create a positive impression, and it should be a relatively unique impression. The more unique, the better.

And it has to have the characteristics of a strong mark, so your rights are the strongest when you assert your trademark. And in principle, it’s like what Reagan always said: “You’ve got to be strong to avoid the war.” So we arm you to the teeth, so you don’t have to go to court. So we have to be strong upfront, and that helps you avoid court.

So picking the name right out of the gate could be determinative. If the mark is weak, you may end up in court. That would be not good.

But most people select weak marks. They think that they have to help the client, help the customer, understand what it is that they’re selling. So they build in a lot of descriptive language into their trademark, and that can often be self-defeating.

Cheri

One of the things, I mean, obviously people that are familiar with patents know that it can cost thousands and thousands and thousands of dollars, but a trademark is really not nearly as expensive. So when you think about this as a brand and something you want to work on, I mean, it really should be at the very beginning of setting up your business.

Russ

That’s absolutely right.

Although you don’t need to apply right away. The sooner you start using the mark, the better. That can increase the strength of your position. And the sooner you apply, the better.

So if people have been using their marks already, and they didn’t think about trademark protection or they’ve been putting it off because they thought it was expensive, it’s never too late. You can trademark something you’ve been using for 10 years and never registered.

But there’s no reason to wait. You shouldn’t say, “Oh, I have to wait ’til my trademark is approved to start operating my business.”

You can start, and you can apply, and the risk you run is just that if you’re turned down, you may have to change the name if you want trademark protection. But if you get counseling right out of the gate on what to name your business or your product to maximize your chances of getting a trademark, you’re going to minimize that risk.

Cheri

Absolutely. And, Russ, you offer a free phone consultation and your organization’s Strategic Patent Law®. You do copyrights, trademarks, patents obviously.

So for folks that are curious or in this process of trying to figure out: is this statement, this logo, this brand trademarkable? I mean, they really should consult with an attorney. You have well over 30 years experience. That phone number (800) 621-3654 or you can go out to StrategicPatentLaw.com. Look at Russ, very handsome picture on his website, and really have some some good insight to, you know, determine if this is the right direction.

So, Russ, we only have about a minute left. What is a final, you know, you want to share with our listeners about trademarks?

Russ

OK. I do want to add that I offer many free consultations. I really don’t watch the clock or bill for every minute after that free consultation.

I just do flat rate billing, and people call me all the time for answers to questions. Clients — once they start with me — can call anytime, and I do not bill for that. So that’s an aspect of my practice that I’ve been doing for years. Basically, once the client is a client, they can call me anytime.

And my office hours, being in the afternoon or evening, are well-suited for people with day jobs, and they can call me after work.

Cheri

Nice. That’s wonderful. Talking to Russ Weinzimmer and so StrategicPatentLaw.com. Go check it out. There’s some good information on his website.

Really, if you’re in business, and you want to invest in a brand. So like, I had Sage International that owned the trademark After the Inc Dries®, was able to build a huge stream of income around that. And so that’s another way that business owners can really expand their business as well. Would you agree, Russ?

Russ

I completely agree, Cheri, good advice.

Cheri

Absolutely. Well, I want to thank everyone for tuning in to the Cheri Hill Show, where business is amplified.


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