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Episode 221: How To Protect Your Business by Trademarking – with April Beach and Francesca Witzburg

Francesca Witzburg SweetLife Entrepreneur Podcast April Beach

This episode is for those in Phase 1 – 2 – 3 – 4 – 5 of the Lifestyle Entrepreneur Roadmap™ Not sure what Phase your business is in?

 

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Bonus – Join Francesca live on Clubhouse Wednesday, April 7 & 9, 12:00 Eastern time. Click here to join the SweetLife Entrepreneurs™ Club and get notifications and room links.

Who This Episode is Great For:

As you name your business, programs, courses or creative work, you want people to recognize them as your brand, and it’s important that you know how to protect your creations so that others can’t use it. 

Summary:

In this episode, we’re talking with The Trademark Attorney, Francesca Witzburg, about what you need to know when it comes to protecting your company name, tag lines and creative work including your courses, branded programs and more. In this jam-packed powerful episode, we’re diving into; Who needs trademark protection? How much it costs? How to check if the name you want to use is available? How to block someone from using your trademark and more. 
 
This is part 1 of a 2 part show with Francesca Witzburg. In part 2 we dive into Copyright protections for your work.

At the end of this episode you will:

  1. Know if you need to file for trademark protection
  2. Understand the difference between word and design marks
  3. Know where to start in your protection process

Resources Mentioned:


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Full Show Transcript:

 

You’re listening to the Sweetlife entrepreneur podcast, simplified strategies to grow your service business and launch a life you love faster with business, mental and entrepreneur activator a probate. Hi everyone. And welcome to episode two. You one here, we’re diving into an important topic today, and that’s how to protect your business through the process of trademarking. And there are so many questions around trademarking.

 

We get this all the time in our business programs, especially in my year signature offer business program, where people are really coming in and branding their method, branding their industry, leading signature programs. And so there are always questions around how do I protect the name of what I’m creating? And so I invited today’s guests to come in, pour into you.

 

And this is what we can expect by spending time together here today. First of all, this episode is for those of you who are in any stage of business growth and development. Now, this really aligns with one of the tools here that we give away completely free with the Sweetlife entrepreneur and business podcast. And that is a self-assessment where you can find out exactly what stage of business you are in.

 

And you can take this self-assessment by simply visiting Sweetlife co.com forward slash quiz. So when we’re talking about who this particular podcast episode is for this episode happens to be for any of you wherever you fall in the phase of business development. Because if you haven’t protected your intellectual property yet through trademarking, then this is an important topic to pay attention to. So as you go through the process of naming your business and your programs and your courses and your creative work,

 

you want people to recognize that they’re yours, they’re your brand. It’s an important part of building your business, a recognizable brand. And so in this episode, we’re talking to trademark attorney Francesca Whitesburg about what you need to know when it comes to protecting your company, name, your tagline, to your creative work, including your courses, your branded programs,

 

and more, this is a jam packed episode. And she talks about powerful things in here that every single business owner needs to know. And then we’re diving into who needs a trademark protection. How much does it cost? How to check if the name that you want is available, how to block someone who could be using your trademark or infringing upon your trademark.

 

And there’s so many different things we’re going to dive into. So I’m going to go ahead and get right over to the episode. However, I want to make sure that you know, that this is part one of two episodes where we have Francesca on the show. And so next week we’re talking all about copyright protection and today is all about trademark. At the end of this episode,

 

you will know if you need to file for trademark protection, you will understand the difference between a wordmark and a design Mark, and you’ll know where to start in your protection process. Everything we’re talking about here can be found@theshownotesbyvisitingusatsweetlifeco.com. This is episode number 221. And one last thing we are going to be live with has got on clubhouse the Wednesday that this show drops.

 

So that will be Wednesday, April the seventh at 12 o’clock Eastern time. So if you were not following me yet on clubhouse at April beach, and you want to connect with Francesca in, take your questions from this episode to her, live in clubhouse, then make sure that you join us. And you can simply do that by following me at April beach on clubhouse and turn on the little bell for the notifications.

 

And you will get notified when we’re going live, which will give you access to Francesca. It will give you access to this room. So let’s go ahead and dive into today’s business training.<inaudible> Hi everybody. I am so excited to be joined by Francesca Wittenberg, who has been instrumental in helping our business, make sure that everything that we have is our ducks in a row.

 

If you will say, and she’s here joining me on the podcast today, talking about quite a few very important legal foundations that you really need to have a no for your business. And so Francesco, welcome to the show. Thank you so much for being here. Tell everybody a little bit about yourself in UHIN, who you serve and really how you got to where you are right now,

 

professionally. Thank you so much, April. I’m super excited to be here. My name is Francesca Pittsburgh. I go by the trademark attorney on Instagram and I’m an IP lawyer. We’re going to talk about what IP is, but basically I help creators businesses, anyone who has created something using their intellectual creativity and especially people who are trying to monetize that I help,

 

whether it’s trademarks, copyrights, helping businesses get started to monetize and protect what they created is what I do. And I service really a variety of industries. I have fashion experience, story brands, online businesses in particular, and navigating how to protect content and all of the assets that you’ve created online. That’s really been my niche for the past year or two.

 

And, you know, I got started by going to law school. I had no idea what intellectual property was like most people. And I thought it was so amazing how, what you create are your real assets. These are real things that you can command. You can protect, you can sell. So I really fell in love with that. And also helping businesses get off the ground.

 

I feel like I’m able to kind of give back really help people launch. And so I got into it. I worked at a small IP boutique. I also had experience working in the legal departments at Prada and Tory Burch and the international jewelry brand from there. I really got the bug and I just wanted to learn everything in anything about intellectual property, in whatever industry.

 

And then I worked at the world’s biggest law firm called Dentons. I worked in Manhattan and Brock center for a little bit over three years, and then I made a big change. Yeah. I mean a big change becoming a partner at an IP boutique firm, meaning we only do intellectual property from start to finish like firms located in LA, but I’m based in New York and New Jersey.

 

I can service clients everywhere. And since September, I’ve just been really hitting the ground, running, helping a lot of online businesses, connecting on clubhouse, meeting people like you April. So I’m super excited to share my knowledge with everyone today. I’m so excited that you’re here and you know what? You do this super hyper niche area of serving online businesses.

 

I mean, you help our listeners protect their ideas and protect their services and their programs and their courses and their actual digital products, which is absolutely right on. And I know that there are so many people in this business space that are creating content that are creating different assets and what we call IP that have no idea, even the first step on, on how to protect that.

 

So let’s go ahead and start there. What actually is IP? What is intellectual property? Sure. So intellectual property refers to creations of the mind. They are inventions designs, creative works, brands, slogans, or anything that you’ve created kind of creatively. And so the law is divided up into certain categories and I like to call it, you know,

 

you have your IP toolbox. So there’s certain tools that you can use to protect whatever it is that you created or your business there’s patents, which protects inventions. Sometimes it protects certain ways of doing things processes, and it also sometimes protects designs. If it meets certain thresholds, then there’s trade secrets, which kind of works in tandem with aunts. If you’re not eligible for a patent may be able to protect confidential and secret information that is proprietary to your business so long as you’ve kept it private and you haven’t publicly disclosed it.

 

Then what we’re really going to focus on today is trademarks and copyrights. Trademarks are your brands. They are the symbols. And the names that you have created to tell that this is my business. I April beach am the owner of your signature offer. I upgraded this course, and that is my protectable content. The function of trademarks are to point to the source.

 

And then there’s copyright. Copyright is the creative regime. It really extends to creative, works such as content photos, certain texts, if it’s eligible videos, website layout. So, you know, just by saying that alone, there are so many different tools that you can use to protect an online business. And so we can talk about that. Wow.

 

Okay. So in, this is exactly why, I mean, just in that definition that you just gave, you talked about four really important areas that our listeners can and should be possibly if they qualify, protecting what they have created and what they plan to create. And I really want to dive specifically into trademarks today and we’re going to have Francesca back on the show.

 

Everybody don’t worry, and we’re going to be diving into other things as well. But I think this is really the most important place to start out. You know, just in my, your signature offer master class, we were having this kind of behind the scenes conversation about this. And even those students of mine that have been in business for over a decade are just almost like in this panic mode when this conversation came up because they realized they might not have done things correctly.

 

And so that’s why I’m really excited to dive into trademarking today. So first of all, I understand that there are two types of different trademarks that you can protect. Is it like a design Mark and a word Mark? Can you explain what those two different types of, of marks are to our, Yeah, I get asked all the time I have a brand name and I have a logo,

 

which one should I file for what’s protectable? And the short answer is that the word market itself, if you file an application with the government, just for the word in standard characters, that will automatically protect the name and any siloization. So if you go to re rebrand and change your logo, if you have a wordmark registration, that’ll extend any specializations colors,

 

whatever format. So we do searches for the word. And if that’s available, I usually say, go for the word Mark, but you’re right, that sometimes clients will have, let’s say it’s not just a script, right? Let’s say that they came up with a unique character or some sort of interesting artwork that they have in a circle next to the word,

 

a good example of this is target, right? You know, target has the word target and red, and then you’ll see the bullseye above that bullseye they use as a trademark. So they could file for the word target without a stylization and be protected. They can also file just for the bullseye, which is the design element, and that will be protected or they can file for a lockup version,

 

which includes the word and the design. So there are a variety of ways and it really is case by case specific, but more importantly, it’s about budget. And I always tell clients, start with your corny for your forklifts and services, because it can get very expensive. And also as a point of strategy, it may not be worth filing for every single variation of the bark.

 

Just start with your core name and your core goods or services. Okay. And who needs to file trademark protection? Let’s kind of really cover some basics like who needs it. You know, what’s funny is that if you were asking this question 10, 15 years ago, the answer different, it used to be fortune 500 companies had trademark lawyers and they were the ones Coca-Cola Pepsi,

 

big brands were the ones registering trademarks that has completely shifted with online businesses. And I think we need to take a step back and explain an important concept April that you and I have discussed. So in the United States, trademark rights are based on use. So I’m sure all of you have one point or another. Someone has said to you, Oh, you don’t need a trademark right now.

 

You don’t need to file the trademark. You have rights just based on use, just continue to use the problem with that is, like I said, 15, 20, 30 years ago, that wasn’t really an issue because you were a store in one particular market in one city, right. Or your restaurant, or you were consulting in one area in person.

 

So it didn’t matter. Really. If someone was using the same name, you’re in New Jersey and someone’s using it in LA necessarily. So the law as it States is you have Commonwealth rights. Your rights are limited to that, to where you’re actually using who you’re servicing with online businesses that has caused to be blunt chaos, because how do you prove where your servicing clients by being on Instagram online,

 

you know, having websites that technically target and market, not only all 50 States, but even outside the us. So the way that you get around those issues is by filing the application with the government, having a registration gives you a presumption of rights in all 50 States. So that way, if someone is using your name, all you have to do is send them that piece of paper.

 

That’s triplicate of registration and show them that you’re the owner and they should in theory. Got it. So many questions that, and I’m obviously, you know, I’m bringing questions from clients that I, that I know have been asking as well. So let’s kind of start back at the beginning. If there’s somebody who’s listening to this and they have program that they’ve named,

 

let’s say it’s best business, one, two, three, or whatever that they have been using for a long period of time. What are their first steps as of now versus somebody who hasn’t even, who’s coming up with a new name, let’s start with the established people that are saying, Hey, listen, my company name isn’t registered my program, or my course name or my mastermind name,

 

isn’t registered. What should those people that are already have an existing piece of work that they own do at this point in time? Yeah. And I think it comes back again to budgeting and understanding that a little bit of money can go a long way if you’re strategic about it. What I like to do differently, I think than most lawyers is clients come to me and say,

 

Oh, for test that I want to file for this. I say, let’s take a step back. We can definitely file. But did you protect your brand name, your core name? I have clients that come and say, Oh, this slogan, I want to protect it’s brand new and it’s new. No one’s using it. So what I do is I do an IP audit for a lot of clients,

 

but when they come to me, I say, let’s just take a step back. Let’s look at all of your websites, all of your courses, and let’s figure out what’s the most important instead of you deciding or someone telling you which trademark to file let’s think strategically and say, what are your most core names, your core content and connection with your core services?

 

Because it gets very expensive very quickly. So I would tell people who are using, and they haven’t had anything registered to really, you know, touch base. I’m happy to do this, to discuss and do the IP audit, but you can also do it yourself and just think like, what are the core names that I’m using and for what particular services,

 

and then get those on file. Yes. Maybe you came up with like a super cool name slogan that you’re using, but are you really going to be using that in six months to a year versus I would say the name that you’re operating under, that may be the first starting point. So I would say, you know, either check in with an IP attorney who can do that with you,

 

for you, or think about it and then get those on file. Okay. And let’s make sure that you guys don’t have to wait until the end of this. If you want to connect with Francesca for that IP audit, find her on Instagram at the trademark attorney. And she actually has a link in her bio on Instagram. You can just schedule a call with her.

 

So we’re making it really easy for you. It’s the trademark attorney on Instagram. And plus she has amazing videos and things on there that you guys will love. And you can schedule a call to set up that IP on it. Okay. So for those people that are listening and they’re new in business, and they’re just trying to, they’re thinking, wow,

 

I really want to name my company. This, what are their first steps? You know, let’s actually talk about how to search the U S PTO. What is that process and is, Yeah. So the first thing is to come up with a name, if you’re just getting started, I would say, come up with names that try to not be so descriptive because as business owners and content creators,

 

we want to express to our viewers what exactly it is that we’re offering. But unfortunately that falls on the lower end of protection. On the trademark scale, the really strong trademarks are the ones that are either made up terms like Google or terms that have nothing to do with the product that you’re selling, like Apple computers. Then there’s this sweet spot that a lot of marketing people like,

 

like April, you do this really well. You will find names that kind of hint at what you’re doing, but don’t literally describe like your signature offer. So those are the sweet spot they’re called suggestive marks. But anything like weaker than that is, is a little bit more descriptive in there. You can still get them as trademarks. They’re just a lot harder to protect and enforce,

 

meaning other people may be able to use them. And then when you go to create a brand that you’re about to invest a lot of money in, you know, you need to think about these things. So the more made up the less related to the actual things that you offer the stronger and the better. Okay. So for those people that are like,

 

okay, this is what I want to do. How do they go search and see if somebody already has that trademark registered? Yeah. So let’s say you came up with an awesome name. The first thing to do is go check on the U S T o.com. That is the government website. The government has a database of registered and pending trademarks. You can plug in the Mark,

 

but unfortunately it’s not very user-friendly. For example, if you put in the Mark, it really may only give you either the exact spelling, maybe with a space, but it really is very limited. It’s going to look for the exact Mark. So if you did work with the trademark where like, for example, I have special software where I plug in the Mark,

 

I plug in the goods and services and then with its AI software, it’ll pull up marks that are medically similar. Maybe they have a translation and a foreign language, and all of those can be potential issues that you’re not going to find yourself. However, for your due diligence. The first thing to do is for you to check on usp.gov, because maybe there is a dead hit,

 

and you’ll find that there, the next thing to do, though, it’s not enough just to look on you as PTO, because there could be people who are using the Mark that may not have a registration. As I mentioned before, trademark rights are based on use. So it’s really important to see who’s using and who can raise a potential objection. You check Google,

 

check, Instagram, check all those platforms, and then if it looks good, that’s when you go and you work with a trademark attorney. Okay. Okay, great. So you do your due diligence, you know, go, you know, was us pto.gov, not.com. It’s not geo OB do that check and then Google the heck out of it as well.

 

And I, I think that that is so important. I know that, you know, some people go, Oh, they’ll just search it and they’ll be like, Oh great, it’s available because it’s not popping up. And that is absolutely nowhere near enough. And then I can speak for experience. You guys, who are listening that I have had Francesca put our trademark names in her AI system and crazy things that there’s no way I ever could have found pop up.

 

So it is definitely an important investment to make. If, if you were in the process of growing your company and you have IP that you want to protect. And so I think that’s really an important thing. So any other last words today, when we’re talking about trademarking moving forward or any other things that our listeners need to know that are often missed,

 

maybe common questions, basically, what am I not asking that I should be asking you? Yeah. Number one, we’re in the middle of a, of a pandemic and a financial downturn. So you’re going to have a lot of people who may not want, or may not have the deans to file trademarks. So I will tell you there’s things you can do to try and protect your name,

 

even without a registration start using those TM symbols. And you may not know what that is. So a TM symbol, now that I’ve mentioned that you’re going to see them everywhere. It means that people are claiming rights to a name or design as a trademark. They’re saying I’ve created this. And when people look at it, it points to me means that’s my website,

 

it’s my services, whatever it is. So you came up with a slogan, or if you have your brand name that isn’t yet registered, put the little TM in the upper right hand corner. And what that does is that puts third parties on notice. So if you have another person to get the Google search went on and found your website, they’re going to see immediately,

 

Oh, this person is claiming trademark rights. I better back off. So that’s an extra element that you can do. It’s not as strong as a registration clearly because your rights are only limited to where you’re using until you get it on file. But at least it’s something. And I would say, think about budgeting for that registration, for some of your four names.

 

It may sound expensive. And I think it’s worth quoting. You know, you’re going to get people who are gonna do this cheaper, and you’re going to find people who are gonna do it more expensive, but my firm has a fixed fee package with a trademark search and the government and the filing. And it’s 1250, you know, that’s a deal,

 

it’s a deal. And I’m just thinking like the cost to respond, who would demand letter or to send a demand letter is that amount. So to get that on file, to kind of not have to worry, think about maybe budgeting that as part of your business process. Yeah. And I will say about, Oh gosh, it’s been about 12 years.

 

We filed a registration for a program that we were licensing to healthcare. And this was 12 years ago. And I think I paid, you know, well over 2,500 for somebody to just file that registration for me. So this is 12 years later, grand Jessica’s team. This is a deal. You guys it’s like the deal of a lifetime and it protects you.

 

And it really covers you. So we love that. So all of you who are listening, if you’re in this place, whether you’re new and you are just coming up with names of really, frankly, especially for those of you guys who have content, you have IP, you have things that you haven’t protected yet. You haven’t done your due diligence.

 

I don’t want you to lose those Francesca. Doesn’t want you to lose those. And so if you have questions about this, I highly recommend that you hit Francesca up for an IP audit. Again, she can be found at the trademark attorney on Instagram and she will, of course be back here on this sweet life entrepreneur podcast, again as well. And we’re going to be diving into copywriting next time,

 

which I know so many of our listeners have questions about protecting, like what actually is that? And so I’m excited to talk about that the next time that you are on the show. Thank you so much for being here and for all of your wisdom and pouring into our listeners. Thank you April. Thanks everyone.<inaudible> Wow. What an amazing episode.

 

Thank you so much for hanging out with us today. Again, join us live on clubhouse. You can follow me at April beach, turn on the little bell for notifications and you’ll get exclusive access to this room where Francesca will be here this week on Wednesday, April the seventh at 12 o’clock Eastern time. Taking your questions based on what we talked about on today’s show.

 

And don’t forget to connect with Francesca directly for her IP audit, which is a very important thing. It’s totally free. I don’t know anybody who shouldn’t take this opportunity up. She is absolutely a gifted expert at what she does. You can visit Francesca at the trademark attorney and she can be found at the trademark attorney on Instagram and on clubhouse. And on Instagram,

 

you can just very simply click the link and schedule a direct free complimentary consultation to get your intellectual property audit started. All right, again, this is episode one of a two part episode. Next week, episode number 222. We’re coming back with Francesca again, talking all about how to protect your creative works through copyright protection. All right, you guys have an awesome day.

 

It’s so great to chat with you and thanks again for tuning into this sweet life entrepreneur and business podcast.