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Episode 11

E11: Let's Talk Trademarks with Radiance Harris, Esq.

In this episode, Radiance Harris and I talk about all things trademarks, including--but not limited to: 

  • A broad overview of trademarks, copyrights, trade secrets and patents
  • The trademark registration process
  • The nitty-gritty of trademark protection in your expertise-based business
  • The many benefits of getting an experienced trademark attorney on your team early.

Radiance W. Harris, Esq. is an award-winning trademark attorney, bestselling author, and speaker. As the founder and managing attorney of Radiance IP Law, she helps emerging businesses protect, monetize, and grow profitable brands with trademarks. She has successfully represented startups and multinational corporations across diverse industries. Previously, she worked at one of the world’s largest law firms representing Fortune 200 brands. During her extensive career, Radiance has been widely recognized as a thought leader in the intellectual property law field. Her accolades include Maryland Rising Stars for Intellectual Property by Super Lawyers, Washington, D.C. Rising Stars for Intellectual Property by Super Lawyers, and Nation’s Best Advocates: 40 Lawyers Under 40, to name a few. She has also been featured as a legal expert in a variety of publications, including Forbes and The New York Times.


Grab your copy of “Trademark Like A Boss” - http://book.radianceiplaw.com

Connect with Radiance

On Instagram: Radiance | Trademark Attorney (@radianceharrisesq) • Instagram photos and videos

On LinkedIn: http://www.linkedin.com/in/radianceharris

Online: Radiance IP Law


Connect with Erin and find the resources mentioned in this episode at hourlytoexit.com/podcast.

Music credit: Yes She Can by Tiny Music

A Podcast Launch Bestie production

Transcript
Erin Austin:

Hello everyone.

Erin Austin:

Welcome to the hourly to exit podcast.

Erin Austin:

I am so pleased to have radians hairs with me today.

Erin Austin:

I radiant

Radiance Harris:

Hi, Aaron, thank you for having me.

Erin Austin:

that is such a beautiful name.

Erin Austin:

Tell me the origin of your name.

Radiance Harris:

Thank you.

Radiance Harris:

I mean, long story short, my parents both have our names.

Radiance Harris:

Rhonda and Rodney, and they wanted their firstborn child to have an RNA

Radiance Harris:

that was similar field to faith, hope her patients, and it looked in the

Radiance Harris:

dictionary, all the word radiance.

Radiance Harris:

And while here I am.

Erin Austin:

well, that's, that's a great result.

Erin Austin:

We have all he names in my family, but they're not nearly

Erin Austin:

as interesting as radius.

Radiance Harris:

Yeah,

Erin Austin:

So we get earnest Elizabeth, another Ernest, Edward, and Aaron.

Erin Austin:

So

Radiance Harris:

we have Rhonda, Rodney radiance and Revi.

Erin Austin:

Everyone can share, share monogram purchase.

Erin Austin:

Right?

Erin Austin:

So I am so excited about this episode.

Erin Austin:

I'm going to let you introduce yourself and then we're going to do.

Radiance Harris:

Okay, well, thank you again for having me.

Radiance Harris:

I am radiant Harris.

Radiance Harris:

I'm the founder and managing attorney of Radiant's IP law, and I help emerging

Radiance Harris:

businesses protect, monetize, and grow profitable brands with trademark.

Erin Austin:

Awesome.

Erin Austin:

Awesome.

Erin Austin:

Now I discovered and say, you know, first of all, we're kind of neighbors.

Erin Austin:

We live right across the Potomac river from each other.

Erin Austin:

Um, we haven't met yet in person, but we're going to have to fix that very soon.

Erin Austin:

Um, but I discovered radians, cause I read about her in some, it was, it

Erin Austin:

was a local magazine, I believe where you are a rising star or shooting star

Erin Austin:

or a superstar or some kind of stars.

Erin Austin:

All I know is that you were some kind of star.

Erin Austin:

And so I knew I had to reach out to you immediately.

Erin Austin:

You know, I am.

Erin Austin:

Uh, rabidly anti dabbler, you know, I'm pro-vaccine and high dabbler.

Erin Austin:

And so I love to talk to experts in other areas of law to, you know, kind

Erin Austin:

of who really have that deep expertise so they can, talk to the audience.

Erin Austin:

So, this is one of those topics.

Erin Austin:

Um, I would really like to keep it broader.

Erin Austin:

Like sometimes we'll have someone and we'll just kind of go into one little

Erin Austin:

niche, but this one, I think, you know, people are so interested in the topic of

Erin Austin:

trademarks and just to get a broad, you know, 3000 foot view of it as well as

Erin Austin:

also kind of also dig into its application to the expertise based business.

Erin Austin:

So.

Erin Austin:

Start from the top.

Erin Austin:

Can you share just generally, what is intellectual property, what

Erin Austin:

the different types are, and then specifically what trademarks are.

Radiance Harris:

Sure.

Radiance Harris:

So, I mean, intellectual property or IP is a broad umbrella term that

Radiance Harris:

encompasses four types or four areas.

Radiance Harris:

So you've got trademarks, copyrights.

Radiance Harris:

Trade secrets and patents.

Radiance Harris:

And so trademarks protect your brand.

Radiance Harris:

So your business name, brand name, product, and service names, taglines

Radiance Harris:

logos, basically anything that serves as a source identifier for your

Radiance Harris:

business, meaning a source identifier.

Radiance Harris:

Is that when someone sees it in the marketplace, do they

Radiance Harris:

automatically associate that name?

Radiance Harris:

That logo?

Radiance Harris:

With your particular offerings.

Radiance Harris:

The second category is copyright, which protects copyright protects content.

Radiance Harris:

So any of the content you create, written materials, photographs, videos,

Radiance Harris:

artwork, music, anything that I guess is the original expression of ideas

Radiance Harris:

in tangible form would be considered or subject to copyright protection.

Radiance Harris:

Then you've got trade secrets.

Radiance Harris:

What does anything that is proprietary or meant to be kept a secret?

Radiance Harris:

It could be a business formula or recipes, business, and financial information.

Radiance Harris:

Anything that's meant to be proprietary or kept a secret

Radiance Harris:

would be subject to trade secrets.

Radiance Harris:

And then you've got patents which protect inventions.

Radiance Harris:

So if you're creating any inventive inventions, then you would be

Radiance Harris:

seeking patent protection for that.

Erin Austin:

Oh, question what Brian, when you mentioned that a tangible form

Erin Austin:

and people ask questions about software, is that considered tangible form.

Radiance Harris:

Yes.

Radiance Harris:

Yeah for, I mean, you can protect, depending on the software, it could

Radiance Harris:

be subject to patent protection, depending on the software can

Radiance Harris:

be a subject to copyright.

Radiance Harris:

So you can copyright like the software coding, you can, um, copyright like sort

Radiance Harris:

of like the look and feel the look, not the field, the look of the software.

Radiance Harris:

Um, you can protect it from the trademark perspective.

Radiance Harris:

The name of the software would be subject to trademark protection.

Radiance Harris:

So there's absolutely there's multiple intellectual properties within software.

Radiance Harris:

I would say.

Erin Austin:

Yeah, absolutely.

Erin Austin:

So.

Erin Austin:

I hear a lot that people want to trademark like everything.

Erin Austin:

And obviously you've mentioned a lot of categories that are eligible for trademark

Erin Austin:

protection, but at what point in the business do they really need to start

Erin Austin:

seriously thinking about trademark from the moment they think of a business name

Erin Austin:

or a certain name or product name, or is there some kind of inflection point where

Erin Austin:

they really need to get serious about.

Radiance Harris:

I think you should protect your trademarks

Radiance Harris:

prior to use or adoption.

Radiance Harris:

And, and that's important, particularly if you're, you know,

Radiance Harris:

really serious about your business and this is more than just a hobby.

Radiance Harris:

Um, it's definitely important to pursue trademark protection before

Radiance Harris:

you actually start using are adopting it, or at least at the very beginning.

Radiance Harris:

Uh, the reason why it's so important to do that is because.

Radiance Harris:

You want to make sure that you're not committing trademark infringement?

Radiance Harris:

So a lot of people just kind of conjure up this name in their head

Radiance Harris:

and I'm like, ah, I love that.

Radiance Harris:

And they just start plastering it over everywhere with not without understanding

Radiance Harris:

that there are legal implications to doing that a serious legal implications.

Radiance Harris:

And so that's one of the reasons.

Radiance Harris:

And then secondly, um, it gives you that peace of mind as you're growing your

Radiance Harris:

business, that, you know, Now we'll have, you know, exclusively you'll ownership

Radiance Harris:

in the name, because that's the thing.

Radiance Harris:

When you don't have that trademark protection in the, your business name,

Radiance Harris:

like you don't have any rights, you don't, you're not able to prevent competitors

Radiance Harris:

from using a similar name as yours or selling competing products or services.

Radiance Harris:

So there's a lot of legal importance to securing a trademark

Radiance Harris:

prior to use in adoption.

Radiance Harris:

So I would do, I would say doing it sooner rather than later is the way that.

Erin Austin:

And how much time do they have before they start using it?

Erin Austin:

There's like, isn't there a time period that they have to start using it.

Erin Austin:

If they do it

Radiance Harris:

So there are two ways you can file trademark applications.

Radiance Harris:

You can file based on current use.

Radiance Harris:

So meaning you've already been using it and you can show evidence that you've

Radiance Harris:

been using it as such, and then you can also file based on an intent to use.

Radiance Harris:

So with intent to use application, you can file those applications.

Radiance Harris:

Before you started using it.

Radiance Harris:

So at this point it could just be an idea, like, I know I'm going to use this name.

Radiance Harris:

I know that these are the products and services that I'm offering.

Radiance Harris:

I want to make sure that I have this name on lock.

Radiance Harris:

So then you filed the intent to use and what those applications

Radiance Harris:

you have essentially up to like three, three and a half years.

Radiance Harris:

Um, in some cases to start using the trademark before it will eventually,

Radiance Harris:

you know, go abandoned, but assuming you're planning on launching something

Radiance Harris:

within the next 24 to 36 months, you could definitely start with an

Radiance Harris:

intent to use trademark application.

Erin Austin:

Are they different processes and different costs.

Radiance Harris:

similar process.

Radiance Harris:

The only difference is that you file your, evidence of trademark

Radiance Harris:

use when you file your application with the use space applications.

Radiance Harris:

Whereas with the intent to use, there's an additional step right before you're

Radiance Harris:

registered, or the U S PTO wants to see evidence of trademark use.

Radiance Harris:

So that's when you have to submit a.

Radiance Harris:

Statement of use and that's where you would give them.

Radiance Harris:

Okay.

Radiance Harris:

Here's the date.

Radiance Harris:

We first started using the mark and here's the evidence that we're using

Radiance Harris:

the trademark as is applied for it.

Radiance Harris:

And with that additional step, there are additional filing fees.

Radiance Harris:

But other than that, it's the same process.

Erin Austin:

Okay.

Erin Austin:

So the intent to use basically like put your flag, you know,

Erin Austin:

stake in the ground flag on the

Radiance Harris:

Take your gun.

Radiance Harris:

Yeah.

Radiance Harris:

Stake your claim.

Radiance Harris:

Like I'm using this name for this.

Radiance Harris:

And so it establishes priority as of the filing date.

Radiance Harris:

So while you're getting your business affairs on order, you know,

Radiance Harris:

okay, I've got this name on lock.

Radiance Harris:

Now, if you decide to get your business bears in order before doing it, and

Radiance Harris:

then later find out that someone.

Radiance Harris:

Has either filed before you, you know, has filed before you,

Radiance Harris:

then you're kind of out of luck.

Radiance Harris:

So there is a lot of benefit to doing an intent to use, especially if you

Radiance Harris:

know that you're going to launch within a certain amount of time.

Radiance Harris:

And you're confident that that's going to be the, the name or the, you

Radiance Harris:

know, tagline that you want to use.

Radiance Harris:

And then the products and services as well.

Erin Austin:

Got it.

Erin Austin:

So, you know, along with, you know, doctors having problems with Dr.

Erin Austin:

Google lawyers have problems with.

Radiance Harris:

Google university is you call it.

Erin Austin:

I was just talking to someone the other day, who had tried

Erin Austin:

to get a trademark protection for her business name and it was rejected.

Erin Austin:

And I asked her, when did you use a lawyer?

Erin Austin:

And she said, no, but she watched some videos and

Erin Austin:

she

Radiance Harris:

YouTube or

Erin Austin:

me.

Erin Austin:

Yes.

Erin Austin:

If you read everything on the, uh, on the trademark office site.

Erin Austin:

So tell us the benefits of using a lawyer,

Radiance Harris:

I mean a lawyer we'll increase your chances

Radiance Harris:

of success like substantially.

Radiance Harris:

Um, I think it's like 60 or 70%.

Radiance Harris:

Increase and success with an attorney.

Radiance Harris:

Um, one thing's for sure.

Radiance Harris:

So increasingly I say over the last two years, the USB TL has

Radiance Harris:

been coming increasingly aggressive and initiating initial refusals.

Radiance Harris:

So about 70% of trademark applications that are filed

Radiance Harris:

will receive an initial work.

Radiance Harris:

W via an office action.

Radiance Harris:

So as an attorney, when you're hiring an attorney, a good trademark attorney,

Radiance Harris:

not just somebody who's pretending they do trademarks are happening, having

Radiance Harris:

to do it on the side, but someone who specializes in trademark law will be

Radiance Harris:

able to do like a preliminary or full trademark search to make sure that

Radiance Harris:

there are, you know, no challenges or potential refusals that will come.

Radiance Harris:

Or if there are some that can help develop a strategy about how to either avoid them

Radiance Harris:

or get around them, should they arise?

Radiance Harris:

So that's one they'll help, you know, minimize the risk of

Radiance Harris:

objection or refusals to they'll help you, um, correctly, identify.

Radiance Harris:

What categories to file the trademark application.

Radiance Harris:

And I know too many people who do the legal zoom and do the DIY, the DIY,

Radiance Harris:

and they incorrectly for whatever reason, choose the wrong class or

Radiance Harris:

the wrong descriptions of products and services that Delta doesn't

Radiance Harris:

actually cover what they're doing.

Radiance Harris:

And so a trademark that doesn't reflect what you're actually offering in

Radiance Harris:

the marketplace is no good for you.

Radiance Harris:

And so.

Radiance Harris:

Um, attorney can help with that can help with the strategy and just handle

Radiance Harris:

the whole, all of the nuances that my new HSA of the lengthy 12 to 14

Radiance Harris:

month process, it's a long process.

Radiance Harris:

And so a trademark attorney can handle that for you while you're able to

Radiance Harris:

like focus on making money, building your business, things of that nature

Radiance Harris:

versus trying to learn trademark law.

Erin Austin:

Exactly.

Erin Austin:

So if you have been rejected, like, can you fix that?

Radiance Harris:

There's some that we can fix.

Radiance Harris:

There's some that we can argue around and fix.

Radiance Harris:

It is better though, to, again, if, if we were hired at the beginning,

Radiance Harris:

we would, we were anticipating that this is going to happen.

Radiance Harris:

And so we had a strategy.

Radiance Harris:

Sometimes it's hard to find.

Radiance Harris:

Once it's happened because now we're cleaning up a big mess.

Radiance Harris:

So there are some times where we're able to fix it.

Radiance Harris:

And other times where we're not where we have to tell them, no, we got to

Radiance Harris:

refile this, this is like, if you had hired an attorney, you would

Radiance Harris:

have seen that this would have been, you know, rejected kind of thing.

Radiance Harris:

So I would say it depends on the situation, but it's always best

Radiance Harris:

to do it right from the beginning.

Radiance Harris:

Cause sometimes it can't be fixed.

Erin Austin:

Absolutely.

Erin Austin:

You mentioned classes and making sure you're categorizing in the right class.

Erin Austin:

Tell us about what that is and why that.

Radiance Harris:

Right.

Radiance Harris:

So there, I guess, for the person who wants to learn more about how they find

Radiance Harris:

trademark classes, there's a trademark ID manual on the U S PTO website where it's.

Radiance Harris:

Approved descriptions of goods and services.

Radiance Harris:

So like if you have a mobile app or if you have a book series or anything, how

Radiance Harris:

are you doing, um, you know, courses, you go into the manual and you're, uh, you're

Radiance Harris:

basically, it helps you identify approved descriptions that will be approved.

Radiance Harris:

Um, and so that's the best way to do go about it, but you want to make

Radiance Harris:

sure that your trademark applications.

Radiance Harris:

Reflects what you were doing.

Radiance Harris:

Cause there's been some that say, you know, they go and they file for

Radiance Harris:

example, clothing and apparel that they filed for clothing and apparel.

Radiance Harris:

And it's like, I'm like, why did you file for that?

Radiance Harris:

Are you, are you trying to sell a clothing line?

Radiance Harris:

They're like, oh no, we're just selling promotional.

Radiance Harris:

T-shirts like my, my business is Radiant's IP law and I just give away, you know,

Radiance Harris:

promotional shirts or Radiant's IP law.

Radiance Harris:

Well, you wouldn't, you wouldn't secure a trademark for that too.

Radiance Harris:

That's not a clothing brand.

Radiance Harris:

You're just using it for promotional purposes.

Radiance Harris:

So there are certain things that are not actually, I guess, noticeable or to

Radiance Harris:

the lay person, like as what constitutes trademark use or what you would file for.

Radiance Harris:

But the trademark ID manual at least helps with coming up with approved descriptions,

Radiance Harris:

but you still have to make sure that the application reflects what you were doing.

Erin Austin:

Yeah.

Erin Austin:

I would love to hear like the craziest where you have about trademarks, but,

Erin Austin:

but first, when, when they're thinking about their names and you're helping them

Erin Austin:

work through, okay, this is too generic.

Erin Austin:

I know there's different levels of protection.

Erin Austin:

Like even if you get a registration that there's different levels

Erin Austin:

of protection on my right there.

Erin Austin:

Can you talk us through that?

Radiance Harris:

Yeah, sure.

Radiance Harris:

So not all trademarks are created equal.

Radiance Harris:

There are some trademarks that are stronger than others.

Radiance Harris:

So like, you know, the trademark, when you think about in the marketplace, like

Radiance Harris:

Exxon, Google, clean ax, Adidas, Ikea where there consisting of invented words

Radiance Harris:

that don't exist in the English dictionary diluted the best and the strongest

Radiance Harris:

and inherently distinctive trademark.

Radiance Harris:

So if you come up with a name that's like invented, that's not in the dictionary.

Radiance Harris:

Like those are the best trademarks because one, um, it's very distinctive.

Radiance Harris:

So there'll likely you won't have any issues with like, you know,

Radiance Harris:

likelihood of confusion, refusal, which is like, likely to confusion is

Radiance Harris:

the standard for trademark and frame.

Radiance Harris:

Your chances of that happening are lower because you invented the word.

Radiance Harris:

So then the next level underneath that are when you use words in the

Radiance Harris:

English dictionary, but apply it to something completely unrelated.

Radiance Harris:

So think of like apple for computers camel for cigarettes,

Radiance Harris:

again, completely unrelated.

Radiance Harris:

Those are also good trademarks.

Radiance Harris:

They're distinct.

Radiance Harris:

Because they're unrelated now, as you go down now, you're getting closer to

Radiance Harris:

like, suggestive are also good straight marks, but it's, you're, you're on the

Radiance Harris:

fence of it almost being descriptive.

Radiance Harris:

So when your name is really descriptive, so meaning the name describes the

Radiance Harris:

nature of the products, nature, feature, or characteristic of the

Radiance Harris:

products and services that you are offering, then, then it is descriptive

Radiance Harris:

and descriptive names are difficult to trademark unless you can show.

Radiance Harris:

Basically that you've acquired distinctiveness.

Radiance Harris:

So what does that mean?

Radiance Harris:

Acquired distinctiveness means that you've used that descriptive name exclusively

Radiance Harris:

and continuously in commerce for at least five years, so much so that it's

Radiance Harris:

become distinctive or unique for your products and services only then can you

Radiance Harris:

then secure trademark protection for that, but as you see, it's a process.

Erin Austin:

Have you ever seen that happen in real

Erin Austin:

life?

Radiance Harris:

We've gone to all the time.

Radiance Harris:

We were like, oh, I've been offering this name for five

Radiance Harris:

years and I'm like, oh perfect.

Radiance Harris:

We can, we can do a card distinctiveness.

Radiance Harris:

And so when you want, you can do the acquired distinctiveness.

Radiance Harris:

You can't receive a descriptiveness, uh, rejection.

Radiance Harris:

Now, if it's generic, meaning like, you know, it's a generic,

Radiance Harris:

completely generic term.

Radiance Harris:

For that then no, you can't.

Radiance Harris:

Generic names cannot be trademarked at all, but if it's descriptive and you've

Radiance Harris:

been using it exclusively and continuously for at least five years, then yeah, you

Radiance Harris:

can, you can, um, we're just, it's been used very aggressively in the marketplace

Radiance Harris:

and you can definitely claim acquired distinctiveness to get trademark rights.

Radiance Harris:

But again, it's a process,

Erin Austin:

Yeah.

Erin Austin:

I think as a person who was just told me she was rejected and I

Erin Austin:

think she might fall into that

Radiance Harris:

Yeah, with the

Radiance Harris:

district and she wouldn't have known, and she might not, she may

Radiance Harris:

have been in business for 10 years and not know that, oh, I could have

Radiance Harris:

claimed, acquired distinctiveness.

Radiance Harris:

You know, that's something that a trademark attorney would be

Radiance Harris:

able to advise on or help with.

Erin Austin:

right.

Erin Austin:

Uh, one of the things I see a lot is someone using a form like a

Erin Austin:

translation, a foreign translation as trying to get a trademark on that.

Erin Austin:

How, how do they like that?

Radiance Harris:

Well, there's a doctrine of foreign equivalents.

Radiance Harris:

I know it's a sad and very legal leads, but that's what it's called, where

Radiance Harris:

when you're applying for a trademark for a word that's being translated

Radiance Harris:

in English word, they're going to translate it to the English word.

Radiance Harris:

So like, you know what?

Radiance Harris:

I can't even think of a translation, but in any event, if it's a foreign

Radiance Harris:

word they're going to, when they're doing the trademark, certs are going

Radiance Harris:

to see if there's an equipment.

Radiance Harris:

To it in the English language.

Radiance Harris:

And so when they're doing the trademark search for like welcome.

Radiance Harris:

So if you're using a foreign word for the word, welcome, the

Radiance Harris:

trademark starts, it's going to be for the word welcome like that.

Radiance Harris:

Like a trademark attorney would research the foreign equivalent to make sure that

Radiance Harris:

there's no trademark infringement there.

Radiance Harris:

And so that's something to think that you can't get around a refusal

Radiance Harris:

by changing it to a foreign word.

Radiance Harris:

If that word is already protected in English for the products and

Radiance Harris:

services that are happening.

Erin Austin:

Got it.

Erin Austin:

Okay.

Erin Austin:

All right.

Erin Austin:

So let's flip to the, you have your trademark registration and somebody else.

Erin Austin:

Well, there's two things.

Erin Austin:

One is if you're on the receiving end of a cease and desist, or

Erin Austin:

if you have a mark and you find somebody else is infringing it,

Radiance Harris:

Okay.

Radiance Harris:

So if you're on the receiving end of the cease and desist, assuming

Radiance Harris:

you haven't, you haven't secured any us federal trademark rights.

Radiance Harris:

Okay.

Radiance Harris:

So if you're on the receiving end, And it's valid claim,

Radiance Harris:

meaning you're a junior user.

Radiance Harris:

They're likely when you're receiving a nasty gram, as I like to call it,

Radiance Harris:

they're usually going to ask you to cease any all use immediately.

Radiance Harris:

And they're going to ask you to then in which case you're going to sit,

Radiance Harris:

stop any all use that means stopping and in any regards, taking it down.

Radiance Harris:

And then you're going to have to come up with something else.

Radiance Harris:

You're gonna have to come up with a totally new name.

Radiance Harris:

Um, hopefully, I mean, it could always escalate if you decide to

Radiance Harris:

fight and fight it off, it could escalate to litigation, but that just

Radiance Harris:

would not be a smart thing to do.

Radiance Harris:

Um, in this case, a lot of actual trademark infringement cases end up being

Radiance Harris:

settled, but they go years and years.

Radiance Harris:

So imagine how much legal fees.

Radiance Harris:

It's a mess.

Radiance Harris:

It's

Erin Austin:

I to say there are no, the only the lawyers when,

Radiance Harris:

it is a hot mess.

Radiance Harris:

So it's like, it's so much easier to just get the trademark early and do it right?

Radiance Harris:

Like you're, you're spending like three grand or something to get the trademark

Radiance Harris:

done versus all this money on legal fees.

Radiance Harris:

And then to do the rebrand is so much more expensive to you.

Radiance Harris:

So it's important to do it right now.

Radiance Harris:

On the other hand, if you have us federal trademark registration,

Radiance Harris:

and you find out that someone.

Radiance Harris:

Started using the mark after you.

Radiance Harris:

And you send, and then, you know, you can enforce your rights against them,

Radiance Harris:

so you can send them a nasty gram.

Radiance Harris:

You can prevent them from use, but it's important to know that once

Radiance Harris:

you're a trademark owner, the duty is on you as the trademark owner

Radiance Harris:

owner to enforce your rights.

Radiance Harris:

So if you don't enforce your rights, there are other people out there who

Radiance Harris:

could start using it and will continue to use it unless you enforce your rights.

Radiance Harris:

So it's not automatic, like yes, getting a us federal trademark, registered.

Radiance Harris:

We'll block.

Radiance Harris:

Someone could block someone from securing a registration

Radiance Harris:

with the U S PTO in some cases.

Radiance Harris:

Cause.

Radiance Harris:

There are strategies where people do these work arounds and louds on the slide end.

Radiance Harris:

So, but granted, it would prevent someone from getting a registration,

Radiance Harris:

but you have to stop them from actually using it in the marketplace.

Radiance Harris:

So you would send them a cease and desist letter and then you'd have

Radiance Harris:

the option actually Sue them too.

Radiance Harris:

And you could get like troubled damages.

Radiance Harris:

You can get attorney's fees.

Radiance Harris:

There's all of these different remedies that you could have as a

Radiance Harris:

holder of a trademark registration.

Erin Austin:

And, uh, you know, what happens if this is the case or not, but

Erin Austin:

if there's two different classes, but they're very close, like let's say like

Erin Austin:

business something and software, something like they are kind of similar and somehow.

Erin Austin:

You're trying to get, you know, but two different companies, like does the

Erin Austin:

trademark office catch that or does that

Erin Austin:

happen when someone bleeds into the other or.

Radiance Harris:

It depends.

Radiance Harris:

So like, so generally speaking, so like I mentioned before, like the

Radiance Harris:

standard for trademark infringement is likelihood of confusion.

Radiance Harris:

So it's looking at whether, if someone saw two competing marks in the

Radiance Harris:

marketplace that were either identical or similar where they think it's the

Radiance Harris:

same business or they're affiliated by each other, are they endorsed or is there

Radiance Harris:

some kind of relationship with them?

Radiance Harris:

So, um, a good example.

Radiance Harris:

Of what's not a trademark infringement is like you have, for example, like

Radiance Harris:

Pandora for like jewelry, you've got like Pandora for like music services.

Radiance Harris:

You've got dove for chocolate.

Radiance Harris:

You've got dove for soap, even though those are identical trademarks,

Radiance Harris:

they're covering completely unrelated products and services.

Radiance Harris:

So in those regards, like, you know, there's kind of, kind of a pass.

Radiance Harris:

You can get get over it.

Radiance Harris:

There is an exception, holler for famous.

Radiance Harris:

Famous Mark's had, like, I'd say trademark superpowers.

Radiance Harris:

So like famous Marty's like McDonald's or like Alexis or Coca Cola.

Radiance Harris:

Like you can't pop up with like Coca Cola, candy, or Coca Cola shoes.

Radiance Harris:

Like you we'll get you the, you know, their issues with that there's

Radiance Harris:

trademark there that, you know, dilution issues and all of that.

Radiance Harris:

So typically it's important to stay away completely from famous brands.

Radiance Harris:

Um, with that being said, Uh, when you're looking at whether something's

Radiance Harris:

infringing, the marks, don't have to be identical for it to be infringement.

Radiance Harris:

They can be similar and neither do the products and services.

Radiance Harris:

If they're related or similar, it could constitute trademark infringement.

Radiance Harris:

So that's something to keep in mind when you're adopting a name and looking at

Radiance Harris:

what's already out there asking yourself, am I committing trademark infringement?

Erin Austin:

So then how soon in the process, because most people

Erin Austin:

are out there thinking about things.

Erin Austin:

They don't have lawyers on speed dial and, um, you know, they're

Erin Austin:

listening to this right now.

Erin Austin:

Like, like, do they call you immediately?

Erin Austin:

Like when they're in the ideation phase or like when did, when did they call you?

Radiance Harris:

I think it's best to call me when you are in the idea phase, but

Radiance Harris:

you know, you want to execute that idea.

Radiance Harris:

Um, they'll do the best ones I love to work with because of the

Radiance Harris:

fact that they are starting early.

Radiance Harris:

So they're getting their ducks in a row, if you will.

Radiance Harris:

So here's what I want to do.

Radiance Harris:

And then we're able to come up with the legal action plan to like, here

Radiance Harris:

are the things you need to think about.

Radiance Harris:

You need to do it at this step in the process versus them

Radiance Harris:

getting it up and running.

Radiance Harris:

It's already out there and launch and they, they skipped all of

Radiance Harris:

these other important steps.

Radiance Harris:

And then you realize, oh, I can't use this name now.

Radiance Harris:

Or.

Radiance Harris:

Oh, you know, and it's like, well, if we would've did this earlier,

Radiance Harris:

we would have discovered it.

Radiance Harris:

And then I always tell people, like, do not share your ideas

Radiance Harris:

and concepts with anyone.

Radiance Harris:

Like just anyone because ideas and concepts are not protectable.

Radiance Harris:

There's no protection whatsoever.

Radiance Harris:

So when you're like, he stole my idea or she stole my idea.

Radiance Harris:

Well, I mean, again, It's not protectable intellectual property protection six,

Radiance Harris:

once that idea develops into something.

Radiance Harris:

So that idea develops into a business name or that idea develops into, um, a new

Radiance Harris:

invention or develops into a written book.

Radiance Harris:

That's when it becomes eligible for intellectual property.

Radiance Harris:

So once it's an idea, I would say, keep your ideas to yourself or only share

Radiance Harris:

with people that you trust, because otherwise they're up for grabs until.

Radiance Harris:

Intellectual property protection attaches to it.

Erin Austin:

Right.

Erin Austin:

So while you're bringing me to the expertise based business,

Erin Austin:

that's our audiences, founders of service-based businesses that

Erin Austin:

are based on their expertise.

Erin Austin:

How do trademarks apply to that type of business?

Radiance Harris:

Right.

Radiance Harris:

So we weren't, I mean, with my business, we work with all just

Radiance Harris:

about all service providers.

Radiance Harris:

Um, they have all the service providers have a ton of intellectual property.

Radiance Harris:

Um, if you think about it, you most likely have trademarks

Radiance Harris:

because you have a business name.

Radiance Harris:

There might be products and services that you offer that are your bread and butter.

Radiance Harris:

So you want to trademark those names.

Radiance Harris:

You have logos, then you've got copyright because it's, service-based, you're

Radiance Harris:

something that you're drafting up sharing.

Radiance Harris:

Maybe you're doing videos.

Radiance Harris:

Maybe you have training programs.

Radiance Harris:

Um, Books.

Radiance Harris:

Those are all subject to cock rate, and I'm sure you have trade secrets as well.

Radiance Harris:

Like what is helping you that, that, I guess your secret sauce that helps

Radiance Harris:

you stand out from your competitors.

Radiance Harris:

So when all of those cases.

Radiance Harris:

You have intellectual property.

Radiance Harris:

So it's important to identify that.

Radiance Harris:

So identify that by doing an intellectual property audit,

Radiance Harris:

it's essentially like a dump.

Radiance Harris:

And just thinking about like all the things that you have

Radiance Harris:

and what have you created and how can you really leverage it.

Radiance Harris:

So in order to leverage that intellectual property, you have to protect it first.

Radiance Harris:

So like identifying it as the first step, then protecting it to ensure

Radiance Harris:

that it's actually legally yours.

Radiance Harris:

And that the world knows it's legally yours you might know is yours,

Radiance Harris:

but does everybody else know it?

Radiance Harris:

And then thirdly, leveraging it.

Radiance Harris:

How can you monetize it?

Radiance Harris:

How can you really generate money from this?

Radiance Harris:

And so that's, I think it's really important to do it in those three

Radiance Harris:

stats, but it service-based businesses absolutely have intellectual property.

Erin Austin:

Yeah.

Erin Austin:

Yeah, it is surprising to me as I talked to people about that, where,

Erin Austin:

you know, a lot of service-based businesses are selling their time and

Erin Austin:

they're not really thinking about.

Erin Austin:

Creating assets in our business and including the person wants your property.

Erin Austin:

So it is, it's good talking about, continue to talk about it and make sure

Erin Austin:

that we are capturing all the value that we're creating with our expertise.

Erin Austin:

So any trends that you're seeing in trademarks, I mean, you did mention that.

Erin Austin:

I will say sometimes I go and, you know, do a search, uh, and I'll see someone who

Erin Austin:

got a trademark that I'm like, how the heck did they get no protection in this.

Erin Austin:

You know, it is getting harder, but what trends are we seeing in Trayvon's?

Radiance Harris:

I mean, recent over the last year, a lot more applications

Radiance Harris:

for NFTs and metaverse type trademarks.

Radiance Harris:

There's a big push.

Radiance Harris:

Virtual services and virtual products.

Radiance Harris:

Um, so there's been a real increase in those areas, I would say.

Radiance Harris:

And just in general, overall, there's just been since the pandemic, like record

Radiance Harris:

breaking numbers, in terms of trademark filings each year, it keeps increasing so

Radiance Harris:

much so that there keeps being delays with the us patent and trademark office visit.

Radiance Harris:

It's hard for them to keep up with the demands.

Radiance Harris:

So definitely businesses, large and small out there are filing trades.

Erin Austin:

So is that because they're more businesses or more people are

Erin Austin:

aware of the need to trademark or

Radiance Harris:

I think it's probably both.

Radiance Harris:

Um, but I definitely think that with the pandemic and people realizing that they

Radiance Harris:

can't rely on this one stream of income.

Radiance Harris:

And so they're either coming up with side hustles or they're

Radiance Harris:

taking those side hustles full-time and so they're really wanting to

Radiance Harris:

legitimize their business because.

Radiance Harris:

You know, clients say that.

Radiance Harris:

Yeah.

Radiance Harris:

When I got that trademark, I really started taking my business more seriously

Radiance Harris:

because you know, now it's like a legit, I legitimately own this like that LLC,

Radiance Harris:

that you have that domain name that you got, the social media handles don't

Radiance Harris:

mean anything in terms of establishing legal ownership over your business.

Radiance Harris:

And, and so getting that trademark is really what does it for a lot of people.

Radiance Harris:

And so I think that's what it was, is that people were really starting to

Radiance Harris:

take their businesses seriously and, or starting a new business altogether.

Erin Austin:

You know, mentioning that it reminds me of a post that you

Erin Austin:

did recently about a development that the trademark office isn't doing.

Erin Austin:

It's going to start doing the, uh, physical search.

Erin Austin:

And because I remember, you know, I'm fairly new to Instagram, but whatever

Erin Austin:

reasons, Instagram served me up some, uh, trademark lawyers where they would

Erin Austin:

show like the whole celebration with a

Erin Austin:

guest, you know, all thing, look at their certificate.

Erin Austin:

And it was very meaningful people, you know,

Erin Austin:

or emotional about that.

Erin Austin:

So

Radiance Harris:

Oh, yes, absolutely.

Radiance Harris:

And then you can still order them, but it's not the same as like, you

Radiance Harris:

know, just automatically issued.

Radiance Harris:

You know, I think a lot of places are just becoming more digital now.

Radiance Harris:

Um, it's just kind of the wave of the future.

Radiance Harris:

Now.

Radiance Harris:

They're like, let's, let's save some trees.

Erin Austin:

Yeah.

Erin Austin:

I'm, you know, um, I'm with that, I guess it's hard to argue with that is fantastic.

Erin Austin:

So this is the hourly to exit podcast.

Erin Austin:

You know, we talk about that journey from that hourly unsustainable business

Erin Austin:

to one that is scalable and saleable.

Erin Austin:

That includes, you know, having some exclusive assets like IP in

Erin Austin:

your business and having a strong market position, like a brand.

Erin Austin:

And, uh, and then having some independence from an owner.

Erin Austin:

So where do trademarks fit in to this landscape?

Radiance Harris:

So where did trademarks fit in?

Radiance Harris:

So, I mean, if it's in different ways, so it's important for you to then have

Radiance Harris:

the option to do any of those things, whether it's you decide to start

Radiance Harris:

licensing or something, or you, you want to sell your business or whatever

Radiance Harris:

it is, you have to have legal ownership of the asset that you're selling.

Radiance Harris:

Right.

Radiance Harris:

So having the trademark in the name ensures that you

Radiance Harris:

are the exclusive rights of.

Radiance Harris:

In that name.

Radiance Harris:

So that gives you the option to be able to do various things when that time comes,

Radiance Harris:

when you don't secure those trademarks at the, you know, early on in the process.

Radiance Harris:

You don't necessarily may or may not have that option to do those things.

Radiance Harris:

Um, and so that's why it's so important because, um, when you don't secure

Radiance Harris:

us federal trademark, you have what's called common law trademark

Radiance Harris:

rights, which are only based on where you are headquartered locally.

Radiance Harris:

So a lot of times service-based businesses are helping clients across state lines.

Radiance Harris:

Sometimes even internationally as well.

Radiance Harris:

Um, and then even with social media and websites and all of that, people can

Radiance Harris:

see you have a big digital footprint.

Radiance Harris:

And so when you only have common law trademark rights and

Radiance Harris:

you're headquartered in Marilyn.

Radiance Harris:

then you're vulnerable to someone misappropriating your name using

Radiance Harris:

it, starting a competing business in a neighboring state, like in

Radiance Harris:

Virginia or DC or something, and you wouldn't have any legal recourse.

Radiance Harris:

And so the importance of a trademark is to ensure that you have legal ownership,

Radiance Harris:

that you minimize any legal conflicts or disputes that arise later in the process.

Radiance Harris:

And so that you're able to license or sell or anything free and clear of any kind of

Radiance Harris:

conflicts or legal issues attached to it.

Radiance Harris:

That's the best thing

Erin Austin:

Yeah.

Erin Austin:

So say what you raised a great point, especially at this time in

Erin Austin:

history where people may have been doing local business, you know,

Erin Austin:

they went to an office every day.

Erin Austin:

Uh, I don't know why, but they do.

Erin Austin:

And, uh, and that maybe they've transitioned to an online, I know several

Erin Austin:

people who have transitioned to an online presence and they're now helping people

Erin Austin:

across the country where they weren't.

Erin Austin:

Four, and that's a major shift.

Erin Austin:

And so now we're talking about yeah.

Erin Austin:

Federal protection instead of

Erin Austin:

just stay pensions.

Erin Austin:

So great point.

Erin Austin:

All right.

Erin Austin:

So this is a very meta podcast.

Erin Austin:

You know, I'm a female founder of an equity space business that

Erin Austin:

I hope to build a sell someday.

Erin Austin:

And you are the founder of an expertise based business.

Erin Austin:

So are you about building your business to perhaps sell it someday?

Radiance Harris:

I don't know.

Radiance Harris:

I, that hasn't really, I don't think so.

Radiance Harris:

To be honest, I'm not, I don't think I'm building it to sell it and not to say it's

Radiance Harris:

not a possibility, but for me, it's more of like building a legacy while I'm here.

Radiance Harris:

We don't want some guns.

Radiance Harris:

It doesn't have to be here on.

Radiance Harris:

It took about like, you know, making my mark right now as I'm living and

Radiance Harris:

people remember ratings IP law, but it doesn't have to actually continue.

Radiance Harris:

Um, you know, once I'm gone, I don't, I don't expect my son to carry on

Radiance Harris:

the radiance IP law, but who knows.

Radiance Harris:

That's where I feel now.

Radiance Harris:

I mean, I've been in business seven years.

Radiance Harris:

Maybe you asked me and maybe five to seven years, maybe it's a different

Radiance Harris:

perspective, but for me, it's just about, you know, Growing and scaling

Radiance Harris:

to be able to employ people, be able to live the lifestyle that I want.

Radiance Harris:

Um, things like that,

Erin Austin:

Yeah.

Erin Austin:

Well, I agree.

Erin Austin:

The legacy is what we do every day.

Erin Austin:

It's not something that we do later after, or yeah.

Erin Austin:

It's what we do every day.

Erin Austin:

The decisions that we make and just, I like to mention you are a young

Erin Austin:

woman and that there may be a time that you just want another challenge.

Erin Austin:

It's not, you know, and it would be nice to have an asset that you could sell

Erin Austin:

at that time of that has so that's

Erin Austin:

that?

Erin Austin:

Um, yeah.

Erin Austin:

So, uh, to us, to rev up.

Erin Austin:

Well, where can people find you?

Radiance Harris:

You can of course, check out our website,

Radiance Harris:

which is www.radiantiplaw.com.

Radiance Harris:

You can also, um, follow me on Instagram at radiance Harris Esq.

Radiance Harris:

Connect with me on LinkedIn.

Radiance Harris:

Uh, I'm radiance Harris on LinkedIn.

Radiance Harris:

Those are the primary three places where you can find me.

Erin Austin:

Fantastic.

Erin Austin:

Well, this has been a delight so much great information.

Erin Austin:

Thank you so much for sharing it with us today.

Erin Austin:

And, uh, yeah.

Erin Austin:

And we're gonna make sure we meet in person very soon.

Radiance Harris:

Yes, let's do it.

Radiance Harris:

Thank you for having me again.

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Erin Austin

Meet Erin Austin, a Harvard Law alum with over 25 years of copyright and contracts experience. As the go-to advisor for professionals with corporate clients, Erin empowers entrepreneurs to be their own advocates, standing out for her commitment to transforming expertise into empires through the creation, protection and leveraging of intellectual property assets. Explore her blend of legal expertise and entrepreneurial insight on ThinkBeyondIP.com and the "Hourly to Exit" podcast. Off the clock, you'll find Erin in the great outdoors or connecting with business coaches to elevate 6-figure consultants into 7-figure powerhouses.