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Episode 59

E59: REPLAY: Let's Talk Trademarks with Radiance Harris, Esq.

As I have been digging deeper into copyrights and contracts, I’ve been getting a number of questions about trademarks. 

So I thought I would replay this interview with Radiance Harris, an expert in trademarks, from 2022 to answer your trademark questions!

Here are 3 key takeaways from our conversation with Radiance Harris:

  • Conduct an Intellectual Property Audit: It's important to identify all your intellectual property assets, including trademarks, copyrights, and trade secrets. By conducting an intellectual property audit, you can ensure proper protection and leverage your assets for maximum benefit.
  • Secure Your Trademarks Early: Trademarks are crucial for brand protection and exclusivity. Radiance emphasizes the importance of securing trademark protection as soon as possible. Working with a specialized trademark attorney significantly increases the chances of success in your trademark application.
  • Enforce Your Trademark Rights: Obtaining a US federal trademark registration is just the first step. As a trademark owner, it's your duty to monitor and enforce your rights. Radiance outlines various options for enforcing trademark rights, including sending cease and desist letters and pursuing legal action if necessary.

Don't miss out on this informative episode. Tune in to "Hourly to Exit" and let us know your thoughts!

More About Our Guest:

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.

Connect with Radiance Harris:

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

Erin's LinkedIn Page: https://www.linkedin.com/in/erinaustin/

Think Beyond IP YouTube Page: https://www.youtube.com/channel/UCVztXnDYnZ83oIb-EGX9IGA/videos

Music credit: Yes She Can by Tiny Music

A Team Dklutr production

Transcript
Erin Austin:

Hello, ladies.

Erin Austin:

Welcome to the Hourly to Exit podcast.

Erin Austin:

I'm your host, Erin Austin.

Erin Austin:

My goal with every episode is to share information and resources.

Erin Austin:

To help you achieve the next level of growth in your expertise-based business.

Erin Austin:

We all know generating income from our expertise.

Erin Austin:

It's pretty easy.

Erin Austin:

The challenge is in scaling and building a business that can run without you.

Erin Austin:

Join me here every week to make sure you are building an asset that can be

Erin Austin:

used to fund your goals and your legacy.

Erin Austin:

Before we get started though, one little disclaimer 'cause I'm a lawyer.

Erin Austin:

The information I share on the podcast is general in nature and is provided

Erin Austin:

for information purposes only.

Erin Austin:

It is not to be relied upon nor construed as providing legal

Erin Austin:

advice or legal opinions about any specific issue or set of facts.

Erin Austin:

Now, here we go.

Erin Austin:

Hello everyone.

Erin Austin:

Welcome to the Hourly to Exit podcast.

Erin Austin:

I am so pleased to have Radiance Harris with me today.

Erin Austin:

Hi

Radiance Harris:

Radiance.

Radiance Harris:

Hi Erin.

Radiance Harris:

Thank you for having me.

Radiance Harris:

That

Erin Austin:

is such a beautiful name.

Erin Austin:

Tell me the origin

Radiance Harris:

of your name.

Radiance Harris:

Thank you.

Radiance Harris:

I mean, long story short, my parents both have R names Rhonda and Rodney,

Radiance Harris:

and they wanted their firstborn child to have an R name that was a

Radiance Harris:

similar feel to Faith Hoper patients.

Radiance Harris:

And it looked in the dictionary.

Radiance Harris:

Oh, saw the word radiance and voila.

Radiance Harris:

Here I am.

Radiance Harris:

Well, that's,

Erin Austin:

that's a great result.

Erin Austin:

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

Erin Austin:

as interesting as Radiance.

Erin Austin:

Yes.

Erin Austin:

So we got Ernest, Elizabeth, another Ernest,

Radiance Harris:

Edward, and Aaron.

Radiance Harris:

So, We have Rhonda, Rodney, radiance, and Reve.

Radiance Harris:

Oh, nice.

Radiance Harris:

Mm-hmm.

Erin Austin:

Yeah.

Erin Austin:

Everyone can share.

Erin Austin:

Share Monogram, purchase.

Erin Austin:

Right.

Erin Austin:

Awesome.

Erin Austin:

So I am so excited about this episode.

Erin Austin:

Uh, I'm gonna let you introduce yourself and then we're gonna dig in.

Radiance Harris:

Okay.

Radiance Harris:

Well thank you again for having me.

Radiance Harris:

I am Radiance Harris.

Radiance Harris:

I'm the founder and managing attorney of Radiance IP Law, and I help emerging

Radiance Harris:

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

Erin Austin:

Awesome.

Erin Austin:

Awesome.

Erin Austin:

Now I discovered Radiance and 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 gonna have to fix that very soon.

Erin Austin:

Uh, but I discovered Radiance 'cause I read about her in

Radiance Harris:

some Really, it was, it was

Erin Austin:

a local magazine, I believe, where you were.

Erin Austin:

A rising star or a shooting star or a superstar or some kind of star,

Erin Austin:

that's all I know is that you are some kind of star and uh, and so I knew I

Erin Austin:

had to reach out to you immediately.

Erin Austin:

You know, I am.

Erin Austin:

Rabidly anti dabbler.

Erin Austin:

You know, I'm Provax Xer, anti dabbler, and so I love to talk to

Erin Austin:

experts, you know, in other areas of law to, you know, kind of who

Erin Austin:

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

Erin Austin:

So this is one of those topics that.

Erin Austin:

I would really like to keep it broader.

Erin Austin:

Like sometimes I'll have someone and we'll just kind of

Erin Austin:

go into one like little niche.

Erin Austin:

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 also dig into its, um, application to the expertise based business.

Erin Austin:

So,

Radiance Harris:

Start from

Erin Austin:

the top.

Erin Austin:

Can you share just generally what is intellectual property?

Erin Austin:

Mm-hmm.

Erin Austin:

What the different types are, and then specifically

Radiance Harris:

what trademarks are.

Radiance Harris:

Sure.

Radiance Harris:

So I mean intellectual property or ip, it's a broad umbrella term that

Radiance Harris:

encompasses four types or four areas.

Radiance Harris:

So you've got trademarks, copyright, Trade secrets and patents, and

Radiance Harris:

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 business.

Radiance Harris:

Meaning a source identifier, is that when someone sees it in the

Radiance Harris:

marketplace, do they automatically associate the net name, 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.

Radiance Harris:

Written materials, photographs, videos, artwork, music, anything that I guess

Radiance Harris:

is the original expression of ideas.

Radiance Harris:

Intangible form would be considered or subject to copyright protection.

Radiance Harris:

Then you've got trade secrets.

Radiance Harris:

Which is anything that is proprietary or meant to be kept a secret.

Radiance Harris:

It could be a business formula, 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 in inventive inventions, Then you would be seeking

Radiance Harris:

patent protection for that one question.

Erin Austin:

What brought, when you mentioned the in tangible form and

Erin Austin:

people ask questions about software, is that considered tangible form?

Radiance Harris:

Yes.

Radiance Harris:

Yeah, for, I mean, you could protect, I.

Radiance Harris:

Depending on the software, it could be subject to patent protection,

Radiance Harris:

depending on the software, it could be, uh, 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 feel, the look of the software.

Radiance Harris:

Um, you can protect from the trademark perspective.

Radiance Harris:

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

Radiance Harris:

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

Radiance Harris:

I would say yeah, absolutely.

Erin Austin:

So I hear a lot that people wanna trademark, like

Erin Austin:

everything, and, and obviously you've mentioned a lot of categories that

Erin Austin:

are eligible for trademark protection, but at what point in the business I.

Erin Austin:

Do they really need to start seriously thinking about trademark from the

Erin Austin:

moment they think of an a business name or a service name, or product name,

Erin Austin:

or is there some kind of inflection point where they really need to get

Radiance Harris:

serious about?

Radiance Harris:

I think you should protect your trademarks prior to use or adoption and, and that's

Radiance Harris:

important, particularly if you're, Really serious about your business,

Radiance Harris:

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 or adopting it, or at least at the very beginning.

Radiance Harris:

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

Radiance Harris:

You wanna make sure that you're not committing a trademark infringement.

Radiance Harris:

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

Radiance Harris:

and they're 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, uh, serious legal implications.

Radiance Harris:

And so that's one of the reasons.

Radiance Harris:

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

Radiance Harris:

growing your business that you.

Radiance Harris:

Now we'll have, you know, exclusively your ownership in the name, because that's the

Radiance Harris:

thing, 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 and adoption.

Radiance Harris:

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

Erin Austin:

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

Erin Austin:

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

Radiance Harris:

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

Radiance Harris:

that you've been using it as such.

Radiance Harris:

And then you can also file based on an intent to use.

Radiance Harris:

So with intent to use applications, you can follow 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 gonna use this

Radiance Harris:

name, I know that the users are the products and services that I'm offering.

Radiance Harris:

I wanna make sure that I have this name on lock.

Radiance Harris:

So then you file the intent to use.

Radiance Harris:

And with those applications you have essentially up to like three, three

Radiance Harris:

and a half years, um, in some cases to.

Radiance Harris:

Start using the trademark before it will eventually, you know, go abandoned.

Radiance Harris:

But assuming you're planning on launching something within the next 24 to 36

Radiance Harris:

months, you could definitely start with an intent to use trademark application.

Radiance Harris:

Are they

Erin Austin:

different processes and different

Radiance Harris:

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 base applications.

Radiance Harris:

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

Radiance Harris:

registered where the U S P T O 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, okay, 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 we've 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.

Radiance Harris:

Okay.

Erin Austin:

So the intent to use basically like.

Erin Austin:

Put your flag, you know, staking the ground,

Radiance Harris:

flagging around, stake your gun.

Radiance Harris:

Yeah, stake your claim, 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 in order, you know, okay,

Radiance Harris:

I've got this name on lock now.

Radiance Harris:

If you decide to get your business affairs in order before doing it, and

Radiance Harris:

then later find out that someone else.

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 know that

Radiance Harris:

you're going to launch within a certain amount of time and you're confident that

Radiance Harris:

that's gonna be the, the name or the, you know, tagline that you want to use.

Radiance Harris:

And then the products and services as well.

Radiance Harris:

Got it.

Erin Austin:

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

Erin Austin:

Google,

Radiance Harris:

lawyers have problems with Google University, as you call it.

Radiance Harris:

Yep.

Radiance Harris:

I was

Erin Austin:

just talking to someone the other day who had tried to

Erin Austin:

get, Trademark protection for her business name and it was rejected.

Erin Austin:

And I asked her, did you use a lawyer?

Erin Austin:

And she said, no.

Erin Austin:

But she watched some videos and she on YouTube, everything on something.

Erin Austin:

Yes.

Erin Austin:

She read everything on the, uh, on the trademark office, the site.

Erin Austin:

So tell us the benefits of using a

Radiance Harris:

lawyer.

Radiance Harris:

I mean, a lawyer will increase your chance of success like substantially.

Radiance Harris:

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

Radiance Harris:

Increase in success with an attorney.

Radiance Harris:

Um, and one thing's for sure.

Radiance Harris:

So, increasingly, I'd say over the last two years, the U S P T O has been

Radiance Harris:

coming, agre increasingly aggressive and in initiating initial refusals.

Radiance Harris:

So about 70% of trademark applications that are filed

Radiance Harris:

will receive an initial refusal.

Radiance Harris:

Be 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 or happen, happen

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, uh,

Radiance Harris:

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

Radiance Harris:

Or if there are some, they can help develop a strategy about

Radiance Harris:

how to either avoid them or get around them should they arise.

Radiance Harris:

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

Radiance Harris:

of objection or refusals.

Radiance Harris:

Two, they'll help you, um, correctly identify I.

Radiance Harris:

What categories to file the trademark application in.

Radiance Harris:

I know too many people who do the legal zoom and do the di, the d i y, and they

Radiance Harris:

incorrectly for whatever reason, choose the wrong class or the wrong descriptions

Radiance Harris:

of products and services that does, doesn't 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 a trademark, um, attorney can help with that, can help with the strategy.

Radiance Harris:

And just handle the whole, all of the nuances, the minutia of the

Radiance Harris:

lengthy 12 to 14 month process.

Radiance Harris:

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.

Radiance Harris:

Right.

Radiance Harris:

Exactly.

Erin Austin:

So if you have been rejected.

Erin Austin:

Like, can you fix that?

Radiance Harris:

There are some that we can fix.

Radiance Harris:

There are some that we can argue around and fix.

Radiance Harris:

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

Radiance Harris:

would, we were anticipating that this is gonna happen, and so we had a strategy.

Radiance Harris:

Sometimes it's hard to fix.

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 and other times where

Radiance Harris:

we're not, where we have to tell them, uh, no, we got to refile this.

Radiance Harris:

This is like, if you had hired an attorney, you would've seen

Radiance Harris:

that this would've been, you know, rejected kind of thing.

Radiance Harris:

So I would say it depends on the situation.

Radiance Harris:

But it's always best to do it right from the beginning.

Radiance Harris:

'cause sometimes it can't be fixed.

Erin Austin:

Absolutely.

Erin Austin:

Yeah.

Erin Austin:

I, you mentioned classes and making sure you're, uh,

Erin Austin:

categorizing in the right class.

Erin Austin:

Tell us about what that is

Radiance Harris:

and why that's important.

Radiance Harris:

Right.

Radiance Harris:

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

Radiance Harris:

to find trademark classes, there's a trademark ID manual on the U S P T

Radiance Harris:

O website where it's like, Approved descriptions of goods and services.

Radiance Harris:

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

Radiance Harris:

or you're doing, um, you know, courses, you go into the manual and you're, 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.

Radiance Harris:

But you wanna make sure that your trademark application.

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, like they file 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 t-shirts.

Radiance Harris:

Like my, my business is Radiance IP law and I just give away,

Radiance Harris:

you know, promotional shorts of Radiance IP law on the front.

Radiance Harris:

Well, you wouldn't, you wouldn't secure a trademark for that because

Radiance Harris:

it's not a clothing brand, 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're doing.

Erin Austin:

I would love to hear like the craziest story you have about

Erin Austin:

trademarks, but, but first, when, when they're thinking about their

Erin Austin:

names and you're helping them work through, okay, this is too generic.

Erin Austin:

I know there's different levels of protection, like even if you

Erin Austin:

get a registration that there's different levels of protection.

Erin Austin:

Am I right there?

Erin Austin:

Can you

Radiance Harris:

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 trademarks when you think about in the marketplace

Radiance Harris:

like Exxon, Google, Kleenex, Adidas.

Radiance Harris:

Ikea where they're consisting of invented words that don't

Radiance Harris:

exist in the English dictionary.

Radiance Harris:

Those are the best and the strongest and inherently distinctive trademarks.

Radiance Harris:

So if you come up with a name that's like invented, that's not

Radiance Harris:

in the dictionary, like those are the best trademarks because one.

Radiance Harris:

It's very distinctive.

Radiance Harris:

So though likely you won't have any issues with like, you know, likelihood

Radiance Harris:

of confusion, refusal, which is like likelihood of confusion is the

Radiance Harris:

standard for trademark infringement.

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.

Radiance Harris:

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 distinctive because they're unrelated.

Radiance Harris:

Now as you go down, now you're getting closer to like suggestive or also good

Radiance Harris:

trademarks, but it's, you're, you're on the fence of it almost being descriptive.

Radiance Harris:

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

Radiance Harris:

nature of the product's, nature, feature, or characteristic of the products and

Radiance Harris:

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

Radiance Harris:

Names are difficult to trademark unless you can show basically that

Radiance Harris:

you've acquired descriptiveness.

Radiance Harris:

So what does that mean?

Radiance Harris:

Acquire distinctiveness means that you've used that descriptive name

Radiance Harris:

exclusively and continuously in commerce for at least five years.

Radiance Harris:

So much so that it's become distinctive or unique for your products and services.

Radiance Harris:

Only then can you then secure trademark protection for that.

Radiance Harris:

But as you see, it's a process.

Radiance Harris:

Have you ever seen that

Erin Austin:

happen in real life?

Radiance Harris:

Oh yeah.

Radiance Harris:

We've, I've been clients all the time.

Radiance Harris:

We're 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 acquired distinctiveness.

Radiance Harris:

And so when you, once you can do the acquired distinctiveness, you

Radiance Harris:

can't receive a descriptiveness.

Radiance Harris:

Rejection.

Radiance Harris:

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

Radiance Harris:

term for that, then no, you can't, generic names cannot be trademarked at all.

Radiance Harris:

But if it's descriptive and you've been using it exclusively and continuously

Radiance Harris:

for at least five years, then yeah, you can, you can, um, or just been

Radiance Harris:

used very, um, aggressively in the marketplace and you can definitely.

Radiance Harris:

Claim acquired distinctiveness to get trademark rights, but

Radiance Harris:

again, it, it's a process.

Radiance Harris:

Mm-hmm.

Radiance Harris:

Whereas you Yeah.

Radiance Harris:

I think of the

Erin Austin:

person who was just telling me she was rejected and I think

Erin Austin:

she might fall into that letter Yeah.

Radiance Harris:

With a description.

Radiance Harris:

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

Radiance Harris:

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.

Radiance Harris:

Right

Erin Austin:

now, one of the things I uh, see a lot is someone using a foreign,

Erin Austin:

like a 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 this is sounding very legalese, 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:

an English word, they're gonna translate it to the English word.

Radiance Harris:

So like, you know what I, I can't even think of a translation, but

Radiance Harris:

in any event, if it's a foreign word, they're going, when they're

Radiance Harris:

doing the trademark search, they're gonna see if there's an equivalent.

Radiance Harris:

To it in the English language.

Radiance Harris:

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

Radiance Harris:

you're using a foreign word for the word welcome, the trademark search

Radiance Harris:

is gonna be for the word welcome.

Radiance Harris:

Like that, like a trademark attorney would research the foreign

Radiance Harris:

equivalent to make sure that there's no trademark infringement there.

Radiance Harris:

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

Radiance Harris:

changing it to a foreign word if that word is already protected in English.

Radiance Harris:

For the products and services that you're, that are of interest.

Radiance Harris:

Got it.

Radiance Harris:

Okay.

Radiance Harris:

All

Erin Austin:

right, so let's flip to the, you have your trademark

Erin Austin:

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.

Erin Austin:

Okay.

Erin Austin:

Or if you have, um, a mark and you find someone else is

Radiance Harris:

infringing it.

Radiance Harris:

Okay, 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, meaning you're a

Radiance Harris:

junior user, they're likely, and when you're receiving a nasty gram, as I like

Radiance Harris:

to call it, they're usually gonna ask you to cease any all use immediately.

Radiance Harris:

They're gonna ask you to then, in which case, you're gonna to stop any all use.

Radiance Harris:

That means stopping in in in any regards, taking it down, and then you're gonna

Radiance Harris:

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

Radiance Harris:

to fight and fight it all.

Radiance Harris:

It could escalate to litigation, but that just 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 feature it, it's a mess.

Radiance Harris:

It's a mess.

Radiance Harris:

I could say there's no, the only,

Erin Austin:

the lawyers win.

Radiance Harris:

It's a hot mess.

Radiance Harris:

So it's like, it's so much easier to just hit 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, 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 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.

Radiance Harris:

But it's important to know that once you're a trademark owner, the

Radiance Harris:

duty is on you as the trademark owner, 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 right.

Radiance Harris:

So it's not automatic.

Radiance Harris:

Like, yes, getting a US Federal trademark registration.

Radiance Harris:

Will block someone, could block someone from securing a registration

Radiance Harris:

with A U S P T O in some cases.

Radiance Harris:

'cause sometimes.

Radiance Harris:

There's strategies where people do these workarounds and allows 'em to slide in.

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 the,

Radiance Harris:

the option to actually sue them too.

Radiance Harris:

And you could get like trouble damages, you can get attorney's fees.

Radiance Harris:

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

Radiance Harris:

holder of a trademark registration.

Erin Austin:

And, uh, you know, what happens if, and I don't know this

Erin Austin:

is the case or not, but if there's two different classes, but they're

Erin Austin:

very close, like, let's say like

Radiance Harris:

business something

Erin Austin:

and software, something, like they're kind of similar and somehow you're

Erin Austin:

trying to get, you know, but two different companies, like, does the trademark

Erin Austin:

office catch that or does that happen

Radiance Harris:

bleed

Erin Austin:

into the other

Radiance Harris:

or.

Radiance Harris:

It.

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 marketplace

Radiance Harris:

that were either identical or similar.

Radiance Harris:

Would they think it's the same business?

Radiance Harris:

Are they affiliated by each other?

Radiance Harris:

Are they endorsed or is there kind some kind of relationship with them?

Radiance Harris:

So, um, a good example of, of what's not, uh, trademark infringement

Radiance Harris:

is like you have for example, like Pando, Pandora for like jewelry.

Radiance Harris:

You've got like Pandora for like music services.

Radiance Harris:

You've got Dove for Chocolate, you've got Dove for Soap.

Radiance Harris:

Mm-hmm.

Radiance Harris:

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

Radiance Harris:

a pass you can get, get over it.

Radiance Harris:

Mm-hmm.

Radiance Harris:

There is an exception, however, for famous Marks.

Radiance Harris:

Famous marks have like, I'd say trademark superpowers.

Radiance Harris:

So like famous marks like McDonald's or like Alexis or Coca-Cola, like you can't

Radiance Harris:

pop up with like, Coca-Cola Candy or Coca-Cola shoes, like you will get you,

Radiance Harris:

you know, there are issues with that.

Radiance Harris:

There's trademark there, 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

Radiance Harris:

looking at what's already out there.

Radiance Harris:

Asking yourself, am I committing trademark infringement here?

Radiance Harris:

Mm-hmm.

Erin Austin:

So then how soon in the process, 'cause most people are out there

Erin Austin:

thinking about things, they don't have lawyers on speed dial and um, you know,

Erin Austin:

they're listening to this right now, like, Like, do they call you immediately,

Erin Austin:

like when they're in the ideation phase or like when do, when do 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 wanna execute that idea.

Radiance Harris:

Mm-hmm.

Radiance Harris:

Um, those are the best ones I love to work with because of the fact that they

Radiance Harris:

are starting early, so they're getting their ducks in a row, if you will.

Radiance Harris:

So here's what I wanna do, and then we're able to come up with a legal action plan.

Radiance Harris:

To like, here 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 launched 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, oh, you know?

Radiance Harris:

And it's like, well, if we would've did this earlier, we would've discovered it.

Radiance Harris:

And then I always tell people like, do not share your ideas and concepts with.

Radiance Harris:

Anyone 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, he stole my idea, or she stole my idea.

Radiance Harris:

Well, I mean, again, I.

Radiance Harris:

It's not protectable intellectual property protection.

Radiance Harris:

Six.

Radiance Harris:

Once that idea develops into something, so that idea develops into a, a business

Radiance Harris:

name or that idea develops into, um, a new invention, or it develops into a, a

Radiance Harris:

written book, that's when inte 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.

Radiance Harris:

Right.

Erin Austin:

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

Erin Austin:

that's our audience is founders of service-based businesses that are based

Erin Austin:

on their expertise, how do trademarks apply to that type of business?

Radiance Harris:

Right.

Radiance Harris:

So we work, I mean, with my business, we work with all just

Radiance Harris:

about all service providers.

Radiance Harris:

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

Radiance Harris:

If you think about it, you most likely have trademarks because

Radiance Harris:

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 wanna trademark those names.

Radiance Harris:

You have logos.

Radiance Harris:

Then you've got copyright because it's service based.

Radiance Harris:

You're something that you're drafting up, sharing.

Radiance Harris:

Maybe you're doing videos, maybe you have training programs, um, books.

Radiance Harris:

Those are all subject to copyright.

Radiance Harris:

And I'm sure you have trade secrets as well.

Radiance Harris:

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

Radiance Harris:

sauce that helps you stand out.

Radiance Harris:

From, from your competitors.

Radiance Harris:

So in all of those cases, like you have intellectual property, so

Radiance Harris:

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, and just thinking about like all the things

Radiance Harris:

that you have 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.

Radiance Harris:

You might know it's yours, 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, you know, really generate money from this?

Radiance Harris:

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

Radiance Harris:

it in those three stats.

Radiance Harris:

But service-based businesses absolutely have intellectual property in a ton of it.

Radiance Harris:

Yeah.

Erin Austin:

Yeah.

Erin Austin:

It, it is surprising to me as I talk to people about that where, you know,

Erin Austin:

a lot of service-based businesses are selling their time and they're not

Erin Austin:

really thinking about creating assets in their business and including mm-hmm.

Erin Austin:

Of course, intellectual property.

Erin Austin:

So it, it is, it's, we keep talking about, we'll continue to talk about it and make

Erin Austin:

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

Radiance Harris:

Right.

Erin Austin:

So any trends that you're seeing in trademarks?

Erin Austin:

I mean, you did mention that.

Erin Austin:

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

Erin Austin:

I'll see someone who got a trademark that I'm like, how the heck did they

Erin Austin:

get a, you know, protection in this?

Erin Austin:

So, I guess, you know, it is getting harder, but what,

Erin Austin:

what trends are we seeing

Radiance Harris:

in trademarks now?

Radiance Harris:

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

Radiance Harris:

and metaverse type trademarks.

Radiance Harris:

There's a big push towards.

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

Radiance Harris:

so much so that there keeps being delays with the US Patent and Trademark office.

Radiance Harris:

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

Radiance Harris:

So definitely businesses large and small out there are filing trademarks.

Erin Austin:

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

Erin Austin:

are aware of the need to trademark

Radiance Harris:

or both?

Radiance Harris:

I think it's probably both.

Radiance Harris:

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

Radiance Harris:

they can't rely on this one stream of income, and so they're either coming

Radiance Harris:

up with side hustles or they're taking those side hustles full time, and so

Radiance Harris:

they're really wanting to legitimize their business because a lot of.

Radiance Harris:

Clients say that?

Radiance Harris:

Yeah.

Radiance Harris:

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

Radiance Harris:

because, you know, now it's like a legit, I legitly own this, like that l l c,

Radiance Harris:

that you have, that domain name that you got, that 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.

Radiance Harris:

People were really starting to take their businesses seriously and or

Radiance Harris:

starting a new business altogether.

Erin Austin:

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

Erin Austin:

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

Erin Austin:

I.

Erin Austin:

Is gonna stop doing the, uh, physical paper

Radiance Harris:

certificates.

Erin Austin:

Yeah.

Erin Austin:

And, 'cause I remember, you know, I'm a, I'm fairly new to Instagram, but

Erin Austin:

whatever reasons Instagram served me up some, uh, trademark lawyers where

Erin Austin:

they would show like the, the whole

Erin Austin:

Radiance Harris: celebration with the gift.

Erin Austin:

Right.

Erin Austin:

People get their certificate

Erin Austin:

and it, it was very meaningful.

Erin Austin:

People, you know, were Right.

Erin Austin:

Very, very emotional

Radiance Harris:

about that, so.

Radiance Harris:

Oh yes, absolutely.

Radiance Harris:

And I mean, you can still order them.

Radiance Harris:

But it's not the same as like, you know, just automatically issued.

Radiance Harris:

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

Radiance Harris:

Yeah.

Radiance Harris:

Mm-hmm.

Radiance Harris:

Um, it's just kind of the wave of the future Now they're like,

Radiance Harris:

let's, let's save some trees.

Radiance Harris:

Yeah.

Radiance Harris:

Um, you know,

Erin Austin:

I'm with that.

Erin Austin:

I can, it's hard to

Radiance Harris:

argue with that.

Radiance Harris:

That

Erin Austin:

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 your

Erin Austin:

business and having a strong market position like a brand and, uh, and then

Erin Austin:

having some independence from an owner.

Erin Austin:

So where do trademarks fit in?

Erin Austin:

To

Radiance Harris:

this landscape.

Radiance Harris:

So where do trademarks fit in?

Radiance Harris:

So, I mean, it fits in different ways.

Radiance Harris:

So it's important for you to then have the option to do any of those things,

Radiance Harris:

whether it's you decide to start licensing or something, or you, you

Radiance Harris:

wanna sell your business or whatever it is, you have to have legal ownership of

Radiance Harris:

the asset that you're selling, right?

Radiance Harris:

So having the trademark in the name ensures that you are the

Radiance Harris:

exclusive rights owner 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:

Don't necessarily, you 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:

Mm-hmm.

Radiance Harris:

And so when you only have common law trademark rights, and you're

Radiance Harris:

headquartered in Maryland, then you're vulnerable to someone

Radiance Harris:

misappropriating your name using it.

Radiance Harris:

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.

Radiance Harris:

Yeah, I was gonna say

Erin Austin:

like, what, what you raised a great point, especially at this time

Erin Austin:

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

Erin Austin:

they went to an office every day, right.

Erin Austin:

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

Erin Austin:

Right.

Erin Austin:

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

Erin Austin:

several people who have, you know, transitioned to an online presence and

Erin Austin:

they're now helping people across the country where they were not before.

Erin Austin:

Correct.

Erin Austin:

And that's a major shift.

Erin Austin:

And so now we're talking about.

Erin Austin:

Federal protections instead of just protections.

Erin Austin:

Yeah, so great point.

Erin Austin:

All right, so this is a very meta podcast.

Erin Austin:

You know, I'm a female founder of an expertise based business that I hope to

Erin Austin:

build to sell someday, 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:

Um, I don't know.

Radiance Harris:

Uh, that hasn't really, I don't think so, to be honest.

Radiance Harris:

I'm not, I don't think I'm building it to sell it, and not to say it's not a

Radiance Harris:

possibility, but for me it's more of like building a legacy while I'm here.

Radiance Harris:

You know, once I'm gone.

Radiance Harris:

It doesn't have to be here anymore, to be honest.

Radiance Harris:

It's just about like, you know, making my mark right now as I'm living.

Radiance Harris:

And people will remember Radiance IP law, but it doesn't have to actually continue.

Radiance Harris:

Mm-hmm.

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

Radiance Harris:

Maybe you ask me in, in maybe five to seven years, maybe it's a different

Radiance Harris:

perspective, but for me it's just about, you know, Scrolling and scaling to.

Radiance Harris:

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

Radiance Harris:

Mm-hmm.

Radiance Harris:

Um, things like that.

Radiance Harris:

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 or 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

Erin Austin:

are a young woman and that.

Erin Austin:

There may be a time that you just want another challenge.

Erin Austin:

It's not Yeah.

Erin Austin:

You know, and it would be nice to have an asset that you could

Radiance Harris:

sell.

Radiance Harris:

Correct.

Radiance Harris:

Absolutely.

Radiance Harris:

Yeah.

Radiance Harris:

So that's the, absolutely.

Radiance Harris:

Yeah.

Erin Austin:

So, uh, just to wrap up.

Erin Austin:

Where can people find you?

Radiance Harris:

You can of course check out our website,

Radiance Harris:

which is www.radianceiplaw.com.

Radiance Harris:

You can also, um, follow me on Instagram at Radiance Harris sq.

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.

Radiance Harris:

Fantastic.

Erin Austin:

Well, this has been a delight.

Erin Austin:

So much great information.

Erin Austin:

Thank you so much for sharing it with us today and uh, yeah, and we're gonna

Erin Austin:

make sure we meet in person very soon.

Erin Austin:

Yes,

Radiance Harris:

let's do it.

Radiance Harris:

Thank you for having me again.

Radiance Harris:

Thank you, radiance.

Erin Austin:

Thanks for listening.

Erin Austin:

Do not forget to check out the show notes for links to connect with today's

Erin Austin:

guest and for the resources, offers and organizations that we discussed.

Erin Austin:

You can also find the link set.

Erin Austin:

Hour lead to exit.com/podcast.

Erin Austin:

If you got value from this episode, please subscribe and

Erin Austin:

I'd be so grateful for a review.

Erin Austin:

I'm here to support your journey.

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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.