This brings into question — how essential is a trademark in the business world? Trademark attorney Rosezena J. Pierce, who leads RJ Pierce Law Group, one of the top 50 trademark firms in the country, stopped by AfroTech to answer all of our burning questions on how important trademarking is in order to establish brand authority and protect yourself as an entrepreneur.
A trademark, according to Pierce, is a “source identifier that allows consumers to relate to where a service or product comes from.” Some examples include names, logos, slogans, and even sounds.
“Not a lot of people know, but you absolutely can trademark a sound one. Some of the famous trademarks of a sound are ‘YOU’VE GOT MAIL,’ Homer Simpson saying ‘d’oh,’ the Harlems Globe charters, their sound, those are also trademarks as well,” Pierce explained to AfroTech.
Securing a trademark for your business is a step that should not be overlooked. In fact, it should be one of the very first things established before launching a business to the public. The trademark is what provides brand security to operate and invest in the business.
As the foundation, the trademark could protect a business owner from potentially being hit with a cease and desist letter down the line for the unauthorized use of a trademark of an existing business, otherwise known as trademark infringement.
“I always ask people ‘Would you build a house on land you don’t own?’ Everyone always says no. So, it goes back to building a business or a brand and you don’t own it,” Pierce said. “People always say, ‘Well my business has to get popular first,’ or ‘I have to make a certain amount of sales.’ But the whole thing with the trademark is a brand name, and if you go through the process of registration, you are actually securing that investment to build a brand. I have seen people actually start the business, run the business, invest in the business, and make sales from the business, only to be hit with a cease and desist letter threatening to sue for the profits they received, or also threatening to be sued for the material and the actual inventory that they have because it bears their infringement trademark name.”
As AfroTech recently told you, this was the case for Oprahdemics podcasters Kellie Carter Jackson and Leah Wright Rigueur who faced a trademark infringement suit from Oprah Winfrey’s company Harpo Inc. The duo used a logo with a large “O” and ran various social media platforms and oprahdemics.com. The best way to avoid this dilemma is to be as specific as possible. In addition, the trademark does not always have to be in connection to the particular product.
“When you’re starting a brand name, you want to take some time to develop it,” Pierce said. “You want to think of a not-popular name as it relates to the products or services as that you will be providing. You want it to be as distinctive as possible. So, for instance, the best brands, don’t really mean anything in connection to the products or services that they’re selling. For instance, you have Nike, Disney, Exxon, and Kodak, which doesn’t really mean anything, right? So, first, you want to develop a more distinctive brand because when you do it’s easier to get it registered, but also it doesn’t give your competitors any reason to use that name because it’s not related to the industry at all.”
She continued: “Second, you want to do the research. You want to make sure no one else has that name, no one else has the registration. As a trademark lawyer, it’s not about what’s the same, but what can be deemed confusing and similar. A lot of people think, ‘Oh, I have my LLC,’ ‘I have my corporation,’ ‘I have my domain name,’ ‘I have my social media,’ ‘I’m good.’ You can have all of those things and still be forced to start that business over if it infringes on someone else’s registered framework.”
Before taking the steps toward securing a trademark, you should consider working directly with a trademark attorney, as they are experienced and will be aware of all the implications and steps surrounding filing and maintaining a trademark.
“Now, as a trademark attorney, I am going to tell people they need to hire an expert because filing an application, can be simple. It comes down to, once you file the application, do you know how to overcome any objectives if you’re faced with them either via the government or any opposing third party? Then who can possibly oppose your trademark If the government opposes it? You have to use legal case law to support your arguments on why you should have this trademark registered. And if you’re not familiar with trademark law and trademark cases, you probably will fail at it. And yes, you only paid the filing fee, but if the application dies because you can’t respond to it, that’s just wasted money and time and resources,” Pierce explained.
Hiring a trademark attorney is the ideal route. However, there may still be hesitation as it will require coughing up some dollars. However, if it is revealed later on that a product or service infringes on someone’s trademark, you will run the risk of losing more dollars than the cost of a trademark attorney.
“This is me coming from being a CEO, not a lawyer. As business owners, and entrepreneurs when we begin and are up against raising finances, we have to be creative and figure it out. That’s just a testament to being an entrepreneur. So, if I can’t afford to get my trademark done, I need to figure out a way that I can because what it seems is, a lot of times when we try to skip steps, we end up paying for it later, and it becomes more expensive for us down the line,” Pierce said.
She continued: “But if you do it yourself, make sure you do the research. However, our research will be very different from a person who is not experienced with trademark law. Sometimes the simplest things can be missed and cost you thousands of dollars because you miss that little piece of research. As a trademark attorney, a fourth of our clients come to us after trying to do it themselves. So, I just encourage people if they’re gonna take on an entrepreneurial journey, be creative about how we raise finances so that we can hire experts.”
Do note, once the trademark is secured, it will last as long as you use it. However, it will still be important to maintain the trademark periodically.
“In order to keep your registration active, you do have to renew and file your maintenance document between your fifth and sixth year anniversary, then your ninth and tenth year anniversary, and then every ten years thereafter. So, if your brand was registered in 2000, you will file your maintenance between 2005 and 2006 and then between 2009 and 2010 and then every 10 years thereafter,” Pierce said.