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129. Insider Secrets to Trademarks & Why Your Brand ISN'T Protected! | Lawyer Kelli, Trademark Lawyer
Episode 12925th October 2023 • Work, Wealth & Travel - A Digital Nomad Podcast • Nicole Vilaca
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If you have a business, or are thinking of starting a business, YOU NEED THIS EPISODE. Lawyer Kelli explains why your business isn't protected, even if you've registered it with the government, how to protect your business name, and the legal secrets of running a business.

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Kelly, welcome to the Work Wealth and Travel Podcast. I am so looking forward to diving into all things legal today on the business side of things, such an important aspect when you are really starting a business, but often an overlooked aspect. So Kelly, you are a lawyer for entrepreneurs and an online business owner who helps others save time, money, and stress by handling the legal side of their business early.

So before we dive into trademarks, contracts, everything legal, I'd love to hear a little bit more about your story, where you got started, how you started your business, and how you ended up where you are today.. So I been a lawyer for almost, well, I guess nine years now. But I was working primarily in like nonprofits and then for a private firm for a while.

And so I only started my own business almost three years ago now during Covid when a lot of people started their own business I actually was going to court every day at the firm that I was working at and. I also hated it. But then with Covid, courts were closed and everything, you know, things were looking a lot different.

let go from my job summer of:

I'm teaching like bootcamps and spin class and stuff. So I was already connecting with a lot of other people in like the online space. A lot of them were either fitness entrepreneurs like me or they had started as fitness entrepreneurs. And then I. Changed into, you know, helping people with like social media or business or finance or something else.

a lot of people. So summer of:

Lawyers can be overwhelming, expensive, kind of scary. So that's kind of where I stepped in. I was I can do this and I am different because, you know, like I am can relate to you more. I'm doing the same online business thing. And I also am very anti like, typical like lawyer and like lawyer talk and stuff like that.

What an interesting story, and I love that you saw the connection of like, I already have all of these connections online, so why not, you know, utilize them and create something out of it , I was just talking about this the other day, how a lot of the time when people start an online business, They think they need to reinvent the wheel and they don't know where to start.

But like I was saying, I think this was in another podcast I was recording, to really just use your transferrable skills. You were a lawyer. You don't need to reinvent the wheel, you just need to bring it to the online space or whatever kind of town area, online, whatever, wherever you want it to be, bring it there.

You don't need to start from zero. We all have amazing transferable skills, so I like that you just, that clicked immediately for you. Yes, exactly. That's what I was like, what can I do that's like not having to go to court and then I was like, wait, I already do something. I need to do something with, you know what I already know, rather than trying to figure out something else.

So talk to us about the legal side of business. What are some things that people often overlook? That can go wrong. Tell us, or even some horror stories that you heard to scare us so that we do the legal side of our business. Tell us everything. Yes. So I think a lot of people, when they think of like the legal stuff for business, the first thing that comes to mind is like an L L C or whatever type of business entity in their country that it, it's called.

But, and an L L C is good. It does. Protect your personal assets from, you know, should anything go wrong in your business, you get sued, creditors, things like that. That way they don't have access to your personal, you know, like house, car, bank accounts, investment accounts, those kind of things. So an an L L C is good.

It's not bad, it's just that's not always even the most important legal priority for your business. A lot of times contracts and trademarks are. Maybe even higher of a priority really, depending on what type of business you have. But if you are taking on clients, your client contract is probably the most important legal thing because it's really what can get you in the most trouble if you either don't have one or don't have a good one.

If things go wrong. So I think sometimes the, you know, these contracts, trademarks, these kind of things get overlooked because everyone thinks like, oh, I just need an L L C. I think that's the biggest thing. They're like, there's so much more to the legal than just your L l C.

I like that you started with that, because I think that is a very good, and hopefully should be basic, but it's totally not. Basic piece of the business puzzle, online business, puzzle and world. Because. You know, working with clients like you never know what will happen. So what does it look like if maybe you are doing e-commerce or drop shipping and you have less of clients retainers?

Are contracts still important or what does the legal side look like for that aspect of business? There's still some type of contracts that are involved, but maybe not the same thing. 'cause you know, you're obviously not sending them a contract to sign before they purchase anything off your website.

You are gonna have like terms of. Purchase that usually they will, you know, maybe check a box and kind of like agree to these terms before they purchase. And those kind of have important things. Those will go on your website too. Your website terms, you use privacy policy, these are things that are, should just be there and they're there to protect you and really also your customers.

A privacy policy is. I consider it a contract. 'cause it technically is, even though it just goes on the, the footer of your website and like no one reads it except like me. But it's required by law. So you should just have one just to be safe. But that's a lot of things that, that's something that a lot of business owners don't have and it's just something that is like, well, you don't wanna get hit with these fines for not having a privacy policy when it's like something that you can so easily.

Have, if you also, if you use Shopify, they have like a policy, a privacy policy generator through Shopify that like you just have to input. Information about your own business, like it's free, just put it on your website so you are complying with the law. But also even if you don't have Shopify, you can just buy one from a lawyer.

I have them. A lot of people have privacy policy templates, and then at least you're protecting yourself. But you know, these terms of purchase, things like that, like it's gonna have your shipping policy or refund policy. Things that will get you in trouble if you don't have them, because that's where people then, you know, even if.

People don't always read these actual policies, it's still there to protect you that way. Like if something happens, they, you at least have something to reference back and say like, well, this is my policy to try to like, The, the point of it is to like, manage their expectations and like set your own boundaries of what your policies are.

So if you don't have these in writing somewhere, it's gonna be harder to communicate with, someone who is mad that their things didn't arrive when they thought it would, or in the condition they thought it would, or, you know, they wanted to return it. Things like that. Like you're gonna have an easier time when you have your policies listed out and then it's, it was on them if they didn't read it or, you know At least you can say, well, I had it here.

I can't force you to read it, but you agreed to it. You said you checked this box saying I've agreed to these terms. So that is something that is great for e-comm businesses and anyone else selling like products, even digital products, I. Hmm, interesting. So, okay, so in you saying this, I'm like, there are a million contracts that you need.

So what are kind of the basics? I guess maybe we can do like product and then service, 'cause I'm sure you'll need kind of different groups of legal, but what are the things that are absolute musts you need to have at the beginning of your business? Yeah, so the must haves are definitely if you have a website, your privacy policy, just because that one's required by law and you never wanna be the one to like.

Get the, the fine for not having it. I kind of break contracts down into like four groups of contracts. So you have your, like your web contracts, those are just boring ones that you get the template you filled out once. You never have to like really do anything else with it again. Then you have your client contracts.

So if you are, , providing services Then it's, you know, a client contract for whatever it is, web design, coaching, whatever it is. If it's for products, then it's that, that terms and condition kind of thing where they're just agreeing to it. But it's still, you know, I. Clients or customers. So those kind of contracts.

Then we have like collaboration contracts. If you're like, you know, you have affiliates for your business or you have people, guests speaking in your program Things like that. You wanna have contracts for that. You know, if you have like brand ambassadors, affiliates, whatever it is that way you're protected that way.

And then the other type, the last type are hiring contracts. So whether you have contractors or employees, you should have a contract, a written, signed contract that way too, to protect you. And all of these contracts, you know, they protect you as the business owner, but they're also protecting the other party as well.

, won your. Covering yourself, but also you're showing the other party like, okay, I care about you enough too, to like make sure that we're both protected and we're both trying to make sure everything is communicated and you know, Expectations managed upfront, ahead of time. , those are the main groups of contracts.

Do you have like bundles or something on your website where it's like you are this type of provider or business, like you need all of these contracts? I don't have it like that, but I do have them split into the four types. And I have some different bundles. Like, you know, one is like your starter bundle where it's like just a client contract and your website contracts and like the terms and conditions.

'cause those ones are like, great to start you out. Then I have one that's like, you know, once you're like a six figure business owner or something, you know, like further along, that's when maybe you'll need like the affiliate one, the hiring contracts. You know, you're growing your business, that's when you need those kind of things.

It kind of depends on like where you're at as well. Because I know like legal can be overwhelming. You don't have to do absolutely everything at first. Like start with what is the most important, which is typically the client contract. And then you know, everything else you can get as your business grows, as you actually like need them.

It can be very overwhelming, especially a lot of people don't know this space so well, and so it's just like, okay, I started a business first. I need to register it as an L L C or whatever it is in your country, and then I need to get all these contracts. And it's just so overwhelming that sometimes you just.

It's analysis paralysis almost. You're definitely like, I don't wanna start. So I like that you kind of break it down and it's like you don't need everything all at once. It's, it's not gonna make sense, if you're starting a new business to have everything all at once. . And a lot of times I tell people, one of the best things that you can do early in your business is just have a consultation with a lawyer.

You don't have to. Do absolutely everything, but like what I do in my like general consultations is we'll set up a roadmap of your priorities because. Businesses are different, like one that has a brick and mortar. The the order of things that you're gonna need to do things in is different than if you are like an online coach or a copywriter or something.

So if we have this initial consultation and we kind of talk about like, okay, these are the legal things that you'll need overall, but these are the order that you know is best for your business. Because you know, if you have a brick and mortar. Or, you're selling products, especially if they're like branded products, like with your like logo or something on them.

Maybe a trademark is even more important and to do like earlier rather than later. So, you know, we'll talk about the order of things that way you can like budget. As best as you possibly can. You know, like, okay, maybe we'll do plan for the trademark within the next six months and then, you know, maybe you don't really need a contract right now 'cause you're a brick and mortar.

So you know that you don't have to worry about until like you hire someone, you hire an employee like in a year or something like that. So that is something that. I always recommend people to do. That way you can kind of like get the peace of mind of like, oh, okay, I have some time before I need to do X, Y, and Z, and I need to budget now for like this one thing first.

I like that you kind of break it down. I've never heard it broken down in that sense of like, we can discuss and figure out the path that's right for you. I think that's really important. Now, you mentioned in that trademark, so let's talk first about what is a trademark and then why is it so important to have an and when do you potentially need one in your business?

So a trademark is essentially just something that is identifying your goods or services in. Connection with your brand. It can be like word words, it can be your logo like a tagline or slogan. , a lot of times for a lot of people, you know, their first trademark is their business name, but sometimes it's something else, like maybe a product line name or even your like podcast name, your course name, something like that.

It's something that you, you know, you have that identifies. It some type of goods or services. So it's an identifier for your business. This is something that, you know, a lot of people think like, oh, I have my L L C so my name is secured, but the L l c name it, the L L c protects your personal assets.

Like we said before, it doesn't really have anything to do with the name, so that's where the trademark comes in because if you have the L l C name or whatever it is in your country, like other people can still. Name their business or use that name because you're not securing the name with the L L C, you need the trademark to actually secure ownership essentially over that name.

And then so you're securing your ownership of using that name, but only in connection with what you're actually using it for. So, you know, like if you have a podcast, you are using that trademark. You know, and the services are like, you know, your entertainment services for the podcast, things like that.

So you can stop, then potentially stop other people from using the same or similar name as you for maybe like other types of podcasts. You can't stop them from using it for like hot sauce, like you don't have blanket ownership of it over absolutely anything in the world, but you have it over things that are either the same or similar to you because the whole point of the trademark is, We don't want two things to exist that would confuse a customer, like they're from different brands and we don't want a customer or client, whoever, a consumer, to look at two things and be like, oh, are those two products from the same company?

Body wash and deodorant, oh, are they from the same company because the name is the same, or the name is so similar, you know, it's maybe, it just, it's spelt differently you, so you don't want people to think that there's an affiliation when there is not. So that essentially is the whole point of a trademark.

Maybe every business might not even need a trademark. But basically what I ask people three questions to kind of decide, like, okay, do you need one? Are you ready for one? So the first question really is, do you have something in your brand that you see yourself using for the foreseeable future?

So it's not just something temporary, it's not something that you're like, not really set on. You might change in a year. So this can be, you know, like, like it said, it can be your business name, it could be your logo, it could be a tagline that you use, your program name, podcast name, whatever it is. So if you have something that you.

Plan to keep then. Then question two is, would you be upset if you had to rebrand it? And this could be because, you know, someone else comes along with something that is the same as you or too similar. Even if it's not identical, and you kind of should be upset if you would have to rebrand because you.

Like you shouldn't want other people to exist with the same thing as you because you, again, it's the consumer confusion. You don't want them to be confused and be like,, I heard someone talking about a podcast. So I went and listened and then, you know, I realized later it was actually a different podcast.

Like you don't want them to be confused because it. You know, it doesn't help your brand. If there's something else that is like, maybe just one word is off, but the other three words are exactly the same and you do the same thing. And then, so if you'd be upset, if you had to rebrand, then would you be upset if you had to like if someone sent you a season desist and forced you to rebrand, so you had to think of another name.

Because not only can someone. Like send you a seasoned desist, try to make you rebrand, but they could potentially sue you for all the profits that you made using their trademarked brand. So you kind of have to think about that. Like, okay, did this suck? If this happened? And for a lot of people, like, if you don't like your name, then fine.

Maybe don't trademark it. If you don't care. If you'd have to rebrand, then, you know, cool. . I mean, there's still the potential risk of like losing your profits if they sued you, but also, you know, that takes into account, okay, then they're gonna put in the time, money, and effort to sue you, which doesn't happen all of the time.

, the money of , what would it cost you to rebrand? And this is where, what type of business you have. Comes into play. 'cause if you have a brick and mortar, if you have products, it's gonna cost a lot more to rebrand than if you're just like an online social media coach or something.

You might just have to change your website. So thinking about those kind of things can really help. Like, okay, I have something in my brand. Would I be upset if someone else had it? And then would I be upset if I was forced to rebrand? And then if yes to those, then you probably need to think about a trademark.

I have a question that like does pop into my mind that I've always been curious about trademarks and I think a lot of the audience will as well, because it's a very like international question.

I'm from Canada, I'm not from America to begin with, but I do have a business an L L C in America. If I were to trademark something, is it global? Because my audience is all over the world. Like what if somebody from the UK or Canada or Albania or Indonesia tries to take that?

So that is the tough part because it is by country. Well, technically there's also even like lower levels, like state trademarks in the us, but I don't really ever talk about those because like. There's no point in really in getting a state trademark for a business that does business outside of one state.

You'd want a federal one. But that's where it is. It is a federal trademark. , if like I'm helping you with a trademark, we'd apply in the us you'd have protection in the us. Then there are ways where you can then apply in other countries, either like one at a time or a bunch at a time.

There's just like treaties that. We have with other countries where you can mass apply essentially. So some businesses do that like that. You know, they're growing, you know, especially big ones like Nike, just, you know, whatever they're applying like all over with as many countries or all the countries.

That's the thing. So that's where it really comes into then like, okay, are you in one country? Are you expanding into others? What countries are you really expanding into? And you know, like, How much, like there are some brands where they're named differently in different countries. I know Lay's in the UK is Watson's. There's a couple of brands like that, and most times it's because the trademark is taken elsewhere, so then they can't go by that name in that country. So that's why it's kind of known differently somewhere.

So that does happen. Usually I recommend trademarking first in the country that you have the most customers, clients, consumers in. And then potentially applying or registering in other countries. In the us let's say if you had a trademark elsewhere, you can register in the US using like your foreign trademark as a basis of registration.

Sometimes also if you're depending on when you're applying, , or if you applied in the US within a certain timeframe, it might be even easier for you to apply elsewhere. Just with like, you know, filing fees and like the timing and stuff of doing that. It kind of depends on like what your overall like global strategy is.

Sometimes it just doesn't like work out, you know, you don't grow quick enough to secure the trademark in all these other places. And then that's where you might have to, sometimes they go by other names in other places. That makes so much sense now that you say that.

But I was always like, to my British friends, it was like, why is it called Watsons? Like ha ha, that's so silly. You know? But now that makes a lot of sense. So another question on trademark now. I guess this is really a case by case basis, but I, I feel like in general, if somebody, so let's say like I own Work Wealth and travel.com.

I own the handle on Instagram. I own the handle on all of the socials, but somebody else wants to trademark that. Are they less likely to trademark that because they don't really own any of the domains, any of the socials, anything in the online space for that? Is there kind of some merit to that or do companies just not really care and they'll trademark whatever they want?

It really depends. So it really depends on like, were you using it before them, because sometimes, you know, people will get the domains, but they weren't necessarily the first ones using it. So then maybe the person who was using it already is like, well, I was using it first, so I wanna get the trademark for it.

Even though they have the domain, they have the social media handles for it, and sometimes if this is the case, they'll trademark it. Get the trademark registration and then kick off the person who has the domain and social media handles because they own it. Now, you own having a domain, you having social media handles.

You don't own those things, you just, you're using them, but essentially you're just renting them until someone with a trademark comes along and kicks you off to their property. Now it might be different. Here's where it depends on like who was actually using it first, because, so this is also where different countries differ.

Like in the US the first person to file the trademark is always in the best position because, To have to get the trademark because if you file for the trademark, and even if someone else was using it first, like they're gonna have a hard time, like let's say you file and then they're like, oh wait, I was using it.

I'm gonna file it. And they file a month later, your application is like, their application is gonna be blocked because yours was filed prior to them. But even though that's the way the trademark office will look at it, technically the law in the US is the first person to use. It has more rights. They have what's called common law rights, so it's kind of , Flip flopped.

But the problem with that, and why I still say it's better to always be the first one to file is because if you're relying on those common law rights to get around the trademark office, like blocking you because you weren't the first to apply, you have to essentially either oppose their trademark, And while it's in process or petition that canceled their trademark.

And both of these two things, it's essentially like going through like a court process. It's litigation, very costly, timely, like the average cost of this is a hundred thousand. So that's why unless you have a hundred thousand lying around, you wanna be the first one to file. So that's where it can kind of differ in like, okay, even though they might technically have more rights to it, like if they didn't file first and they don't have a hundred thousand, then they're not gonna be in the best position.

And different countries have different rules, some countries. The first to file is the one with the rights. There's no like going around it for a hundred thousand, like fighting about it. It's like you have to file first. So that's where it can kind of also depend. But that's why I always tell people like, don't rely on the domain name or Instagram handles because that, that's not ownership.

, this is really interesting. I have never done a trademark, but this is making me think like, Ooh, I should trademark like five different names. Now I feel like I know every time I talk to people and like they start thinking about it, they're like, oh my God, I have all these things to trademark.

Do you recommend that people who are not starting out but pretty seasoned in what they're doing and they know this is gonna be a long-term thing, do you recommend that one of the first things they do is trademark? Or is there ever a time when you would be like, ah, you can wait typically yes. I tell people to do it like as early in in your business as you possibly can when you know it's something you wanna keep. Even if you are like earlier along in your business just because of that. , if you don't get there and someone else does, it's either like your choices then become, pay the a hundred thousand average to, you know, try to get it or rebrand.

ou know, you might spend like:

It's either like:

So it might depend on something like that as well. So in you saying that, it makes me think of, and I'll actually share a little story. So when I first started this podcast, it had a different name. I won't say the name, and I think I bought the domain for it, but then somebody messaged me and they were like, Hey, I own the trademark.

You need to get rid of this. And so, you know, I just started so it was no problem. But. I'm curious how it works. At the time, my business was not an L L C, I'm not American. It does it kind of go based on , if your audience is also American, then you have ties to America. So, or how does it work if you're not physically in that country, whether it be America or you're not a citizen of that country, so it might differ in other countries, but for the us I do have clients that are not living in America or not like American citizens, but they either I. Either America is where the, is the largest base of their, you know, consumers, listeners, clients.

So that's where they wanna file or they've filed elsewhere. Now they're coming here to also file because they have a big base here. So the only thing with the US is that if you are filing and you're not in the us, you do need a lawyer. In the US to represent you. So if you apply without one, you'll have to, you'll get like a refusal that you have to like find one.

So whereas like if you live in the US and you're, , a US citizen, , your business is registered in the us you don't need a lawyer. Although I definitely recommend a lawyer. But so that is like the main thing. . It might be different in other states. I don't know if they require attorneys.

But that is the biggest thing for the us. Interesting. I had no idea. I really had never thought about trademarks before talking about this. I'm sure everyone you talk to is like, oh my gosh, my world is completely blown open. So you are in the legal space.

So what is. Something else, whether it be in terms of contracts, trademarks, something else that's very important in your business, or something that we haven't talked about that is a huge piece that is being overlooked. Another thing that a lot of time like is pretty a, I guess a big thing is copyright. Primarily with , Even like social media stuff, there's a lot of like talk all the time about like sometimes people get into trouble with like, using things that they maybe shouldn't be using.

Whether it's like reposting other people's pictures or reels or things like that. So I. Essentially the, the rule is just , at least definitely for the us, if you are not the copyright holder, so if you didn't create it, if you didn't create the real, take the picture, then you're not the copyright holder.

So then you don't have the rights to use it unless you have written permission from someone else. So I think that's the thing that sometimes. I see business owners getting in trouble with, or getting hit with cease and desist or getting their, you know, accounts flagged because they repost other people's reels or things like that.

And I don't mean using the share function, like the little airplane thing on Instagram. , that's fine. You can use, those kind of things. You can use stitches like that, you know, TikTok has and stuff like that. But it's when you're , either screenshotting it or screen recording it from like Pinterest or TikTok or whatever and posting it, that that's where it can get, you know, Get you potentially into some hot water.

So on that side of content creation now, do you find this industry has gotten a little bit messier and crazier with so much content creation in the last few years? Oh yeah, definitely. Yeah, especially with the rise of videos and just , there's so many different platforms and there's so many different platforms that people can like get content on and then be cross-posting and stuff that it really is, The wild west sometimes.

Do you have a lot of people coming to you for that? Somebody took my content and I'm a big creator or something like that? Yeah, that is either, they, they're reposting stuff or it's that they've taken something from like, you know, maybe it's a course module or a template or something like that, that they're selling some type of digital product as well.

And then, They found out from so and so, that they included it in their course or like, you know, they're selling it or something like that. So I do find that that happens pretty often. And sometimes, a lot of times people just say, especially when it comes to like social media posts, , oh, I didn't know I wasn't supposed to do that.

I get it because there's a million things that like, we don't know, like, how are we gonna know everything that we're supposed to do? Especially, , when you're. Comes to business, you're kind of learning on the fly. All of us. But that's not a defense. So it's not, it really depends on like the person who it happened to, because you know, some people are just like, oh, whatever.

It's fine. And then some people are , I want money for it. So it can be tough. . I like that you bring up like the course creation. 'cause I've actually heard of quite a few big creators who talked about, somebody blatantly took a section of the course that. They paid for and then.

Put it in their own course. And it's like, sometimes I think it's as blatant as like almost just screenshots and Yeah. So obvious, like at least change the content. Well I mean, obviously you do a lot more than that, but Yeah. I do think it's so wild when I hear these stories. I'm sure you hear them all the time.

I sort of love that all these people come to me because I feel I have all this tea that like, I can't say any, you know, like I can't spill it, but I have all of it. It's fun to have and to like, it reflect on and that's all I can do with it.

Right? I can't do anything, but at least I know it. So where can people find you, first of all, on social? So you can find me on Instagram primarily.

My handle is at lawyer Kelly Kelly with an I underscore.

Can I ask you, so when you first started your business, was it an immediate, you had the contracts in place, you had the privacy policy, you had the trademark. Was that immediate for you? So I did form my L L C right away. And I did have contracts for my, , trademark clients and stuff right away.

But I will tell you that with trademarks, I did not always file right away. My lawyer, Kelly trademark, it's actually in process. It just got approved for it's not fully approved trademark, but it got approved to like, Almost get approved. 'cause it's the process takes over a year. But that means I only applied last summer, so I applied two years into business.

So sometimes I'm like, you would think I would have these things done earlier too, sometimes, but , It's hard. It's hard to do everything.