You might not think trademarks have much to do with your work as a marketing or branding professional.

But if you're naming businesses, products, programs, or creating logos and other brand assets, trademark considerations can become an important part of the process.

In this episode, I’m looking at trademarks from two sides of the marketing and branding world: protecting your own business and helping protect your clients. I’m also sharing how you can become more knowledgeable about trademarks without stepping outside your lane.

You don't need to practice law. You don't need to become a trademark attorney. But you can learn how to spot potential trademark issues, recognize when a trademark should be part of the conversation, and know when it's time to bring in someone who specializes in this area.

Topics Covered

• Why trademark protection matters for marketing and branding agencies
• A real-life example of an agency forced to rebrand after receiving a cease and desist
• What agencies may want to consider protecting, including names, methodologies, frameworks, packages, and communities
• Why trademark should be part of the conversation when you're helping a client name a business, product, or program
• How marketing professionals can learn to issue spot without practicing law
• Different ways a trademark attorney can work with a marketing or branding agency
• How bringing trademark into your process can add value for your clients

Explore Working With Chelsea

Book a Free Consultation

Explore Services offered by Trademarks with Chelsea (including flat fee schedule)

👉 Find the Full Show Notes Here

Find Chelsea on: TikTok, Instagram, Threads + LinkedIn

Explore more about the podcast on our site!

---------------------

marketing agency, branding agency, marketing professional, trademark protection, need a trademark, benefits of trademark registration, cease and desist letter, trademark registration, intellectual property, brand strategy, trademark search

I'm Chelsea Fournier, US trademark attorney for business

owners and thought leaders.

This is Trademarks with Chelsea, one real question answered every episode.

And today's question is, why would a marketing or branding

agency need a trademark?

This is a little bit of a spin-off, a series I'm inserting every few episodes to

look at different types of businesses that you might not assume would be relevant

for really diving into intellectual property and protecting their brand.

You know, sometimes when people think about IP, intellectual property,

trademarks, it's easy to assume it's really relevant for startup companies

or fashion brands, but how does this translate in real life to the type

of business that you are running?

Now, as you listen to the podcast, if you stumble across some of these episodes

and it's not the industry that you are in, I encourage you to listen to it

anyways because they're all under 15 minutes, and it might help you to see

how something is similar in the type of industry I'm talking about that could

open your mind to seeing how you could be protecting your brand, creating more

revenue streams, and really planning for the future and sustainability

of your business in similar ways

Now, if you're new to the podcast, welcome.

I'm excited to have you, and if you've been listening right along, I feel

like I'm finally getting my groove on choosing topics that I know people are

asking and giving myself enough time to be able to cover them thoroughly

and with my own voice and personality.

So if you've been tuning in, I hope that you're sinking into the

feeling and the vibe of how I'm sharing things here on the podcast.

I'm really trying to strike that fine line between focusing on the fact that

you are a business owner listening to this podcast, and so you are here more

about the practicality, the creativity.

Like, you wanna be thinking is investing in trademark protection, whether that

be just education and understanding the strategy, whether it be hiring me for

a search, whether it be having me work through an entire application with you or

maintaining your portfolio with the USPTO.

Regardless of where you're coming in, I'm hoping that you're finding this

to be educational but also empowering for you to understand, does this need

to be something that you put towards the top of your priority list, or

based on your goals, is this actually lower priority than you expected?

Either is fine, and I truly hope that it is serving you

to listen to these episodes.

Feel free to come message me anywhere on social media.

I go by chelseadoesbusiness on Instagram, TikTok, and Threads, and would love

to further the conversation there

Now, today's question is a little bit different even within this series

because what I'm gonna be doing is splitting this into two subtopics,

so marketing and branding agencies.

Now, you also might just be a marketing or branding professional, like an individual,

a freelancer, a fractional CMO.

It's still gonna be relevant for you, but I feel like a lot more people,

when they get to a place where they have team members, where they're an

agency, they're really starting to think about the protection and, you

know, where is this brand going from here now that it's grown beyond me?

And so I'm gonna be having these two subtopics.

One is, why does protecting a trademark matter for your business?

And I'm gonna share a specific story and example of a past client,

kind of anonymously, talking through a real-life scenario that I

worked with a client on years ago.

And then on the flip side, the second subtopic is going to be, why should you

care about becoming educated about this as a professional who is serving clients?

How can what I'm gonna share today actually help you become the go-to,

the top referral source in your space in naming, product design, marketing,

branding because you know how to take the conversation further for your

client while also staying in your lane?

How can you help become an educated service provider in the trademarks space?

No, no, no, you're not gonna become an attorney.

You're not gonna be practicing law without a license.

But I'm gonna teach you how to issue spot.

I'm also gonna talk about how one of my specific offers, the trademark strategy

session, can be something that you can either bring in-house to add great value

to your clients or be a very simple referral, depending on your business model

and what your comfortability level is.

I'll talk that through.

So if you're in this space, stick around for the full fifteen minutes.

You're gonna get some major savvy business advice, but stemming from trademark.

Now, I actually find that many people in the marketing space understand

intellectual property maybe a little bit more than some other service providers,

and I think that this is because there's copyright involved in what you're doing,

and copyright is not what we're gonna talk about today, but I do wanna just

touch on it because you are creating copyright materials or copyrightable

materials, on a regular basis.

Every time you make a brand guide, every time someone hires you to

create a logo, when you're creating a slide deck, those are materials

that are covered by copyright.

In a future episode, I think I'll tackle a question around what you should be

doing, like copyright assignments and how they actually tie into trademark law.

I think that's a really important thing for me to pin

and put for a future episode.

But We're not talking about copyright.

That's really protection that's granted by the federal government to anything

that's in a fixed, tangible medium.

There is a process and ability to register copyrights.

Many of us are a little bit more familiar with that.

But trademark is where we're hanging out today, and if you haven't been

following along with past episodes, trademark is all about brand reputation.

It is about source identifiers for goods and services that are sold.

And so you as the business owner, you are … You have your own brand, right?

You have your own brand that you are creating your reputation around.

You want to be, I'm assuming, uh, thought of even when you're not in a room.

I think that's a great way to think about trademarks.

If someone is to say, "Oh, my gosh, I recently worked with so-and-so agency

brand name, and they were amazing. You should check them out," or maybe getting

tagged in a Facebook group, right?

This is creating your reputation, and the more distinct and the more

protected or protectable your brand is, even better for the long haul.

So first, we're gonna cover this subtopic A, right, of looking at

how it matters to you, and I'm gonna start that off with a story.

So this is several years ago, back when I was practicing law in Maine.

If you didn't know this, I'm currently located in North Carolina, but I can

serve clients anywhere in the country because federal trademark law is federal.

And I was working with a small marketing agency, and they had come to me after

receiving a cease and desist letter.

And I recently talked about, like, what do you do when you

receive a cease and desist letter?

And this is the very same type of conversation I had to sit down and have.

And when you're having the conversation, ideally with an attorney if that

comes in, it can be stressful.

It can just feel like you've done something wrong.

It can feel like your back is against the wall, right?

And so this branding agency had been creating quite a name for themselves.

In fact, I think that part of the fact pattern was that they had been receiving

some, like, awards in their space, and so more visibility, and perhaps that is how

the other business that did own a federal registration with the USPTO for the same

mark, how it kinda came onto their radar.

And that happens.

You know, sometimes you are unintentionally, accidentally

using someone else's brand, and they just don't know.

They don't know until they know, and then it becomes on their

radar, and then they have to.

There's an obligation of a registration holder to send out a

letter saying, "Hey, we own this mark.

We're gonna ask that you stop using it.

We're in the same space." And then it becomes, like, this fact dissection is

really looking at like, okay, is the mark exactly the same or very similar?

And are you in the same class of goods and services?

There's other factors, uh, basically the DuPont factors.

There was a, um, I don't wanna say famous, but there was a landmark case,

in federal court, the DuPont case, and that's where a lot of trademark law,

how things are applied, stem from.

But those first two factors are absolutely the biggest ones.

Is the mark exactly the same or similar?

If yes, continue to the next question, which is going to be, are you

providing similar goods and services?

'Cause that's gonna be a strong indication of a likelihood of confusion.

And so when we did that analysis, we realized, you know what?

They have senior use.

They've been using it longer.

They hold the registration.

You're in the same exact niche.

You know, you don't really have a leg to stand on here, so that's

gonna really indicate a rebrand.

And so what started to happen is, of course, they, the owners

of the agency were like, "Okay.

Well, if we start coming up with new names, we don't wanna

be put in this situation again.

So can we basically hire you to help us?

You know, if we get our top four or five that we could live with, can we

then have you search them and knock out any that you think could put us

in a similar situation down the road?

So be really conservative in your searching and legal

opinion," and we did that.

And we ended up going back and forth, and they did find a mark that they

were satisfied with, that I was satisfied with from a risk assessment.

They, submitted an application for that.

We did that process together, and then they were off and running and

rebranding and creating that brand, and then that was, you know, disclosed

or updated to the party that had sent the cease and desist letter so that

there wouldn't be further conflict.

And so as you might assume, the owners of this branding agency then had ding,

ding, ding, trademark on the brain.

Not every marketing or branding professional specializes in naming

or really involves that in their process, but many times they do.

If someone is coming to you and saying, "You know, this is the name of my overall

brand, but I need your help branding a new signature program," or, "I'm gonna

be launching a certification program," or, "I'm launching a new product line."

Okay, now if you're gonna be involved in the naming, that needs to be

top of mind for you of asking them questions like, "Okay, well, how far

out do you wanna be launching this?

And, you know, are you concerned about trademark?

Is trademark on your radar?

Have you done research?

Have you done a trademark search with an attorney to see if

there's some options you want?

Do you want us to help connect you to an attorney?

Do you want us to hire an attorney before we present names to you?" Like, these

are the types of elevated conversations that y-you can start to have, and again,

this is stepping into subtopic B, right?

The second topic of how can you add value to your client.

So as we continued our relationship, there was a lot of opportunities where

this particular branding agency would have a client come to them, and if they

were involved in either designing a new logo, because logos can be searched,

there are design marks, design mark codes in the USPTO, and so I can

actually search those in legal software.

It's a little bit hard to do in the USPTO site itself, but there's lots of ways.

It is doable.

And so basically, if they were creating a new design that could be

considered a brand source identifier, a logo, or a new name, either a new

name for a company, a new name for a brand, a new name for a product,

then we were able to decide, is this something that we should bring me into?

And in some cases, that branding agency would feel more comfortable connecting

me to say, "Hey, this is our client.

They definitely wanna make sure there's a search.

You know, we've got four or five potential names we wanna present to

them, and they authorized us to connect you guys so that you can search them

before they fall in love with one." There was another, I kind of used this

model going forward, and there was a different marketing agency that preferred

to just be the client and say, "For our own risk assessment, we don't want to

present names that could potentially be, not able to be registered because

we know that our clients are further along, and that's something they want."

And so they hired me, like I was their basically little in-house

counsel trademark attorney.

So their design team knew to send me final options before it went to the client.

So if there was one that I was like, "Ooh, guys, steer clear of this one, you

know, this word is really confusingly similar to a registration," I would give

a little bit of a, brief on what they needed to be paying attention to as for

that client in relation to the goods and services they would be providing.

And so I am comfortable doing either role.

I have different, like, engagement letters and, um, processes for each of those

two, whether a- a marketing company or a professional wants to bring me kind

of like in-house to their own project or If they wanted to say, "Hey, client, you

should talk to Chelsea. We trust her, and this is kind of the point in which we

recommend you talk to a trademark attorney if that's something that's on your radar."

So this is kind of just talking through story-wise those two

sides of the coin of why trademark becomes obviously relevant for you.

But I wanna just talk through in a little bit more concrete terms.

So if we think about the first instance, why trademark protection can be valuable

for you and where you likely have trademarks in your own brand and business

in the marketing, branding, naming space, these are specifically things

that might come up in your business.

So, you know, basically, you probably have an agency name, unless it's

just, your name designs, right?

That's not gonna be something that you can necessarily protect.

But I know lots of agencies where they have a really beautiful, distinctive,

creative name, and maybe it has designs in it, or maybe it doesn't

really having that household name association, and that can potentially

be something that you could register and then be able to protect as part of.

The legacy, the intellectual property portfolio of your business.

So the agency name itself, or maybe if you consider it, an umbrella brand

that everything else rolls up to.

What I see a lot in this space is people, individuals, agencies

creating, a signature process.

That could be a signature framework of how you walk people

through a branding process.

It could be a named methodology of how you audit brands and help them

identify areas that should be changed.

It could be a signature, framework that you pitch in the proposal.

I saw that at one point.

I actually did A specific name of the blank blank plan, right?

And that was the name of the proposal type of how an agency worked, sending

out their very long extensive proposal.

They wanted it to have a named, methodology, and that could be

something that depending on what you call it or desire to call

it could be protected as well.

There could be specific packages, retainer tiers, or even a client community if

you have a membership for alumni of your high-end services to be able to

pick your brain or have access to you.

So anything that you consistently call the same thing across

every client relationship, if that is using it in commerce

that is putting that name, that methodology, that framework out

into commerce, and that could be something that you could protect.

Now, also down the road, if you ever want to license that framework to train other

agencies or freelancers in your method.

Maybe you wanna teach someone in another niche how to use this method.

Maybe you specialize in marketing for food products, but you know that

your methodology could work anywhere else in any other niche, and maybe

there's an agency that does great work in the automotive marketing

space, and you want to license it to them and train their design team

on how to walk clients through it.

Boom.

Now you have an entirely new potentially income stream of licensing and maybe even

some consulting involved in that, that wouldn't be diluting your brand because

then people would start to see like this is the standard, this is the credibility,

the reputation that I would expect, but I know that this agency is just in

food products, but oh, cool, now that same reputation, that same standard is

being brought into this other industry.

And you can do that through owning the registration and then obviously

having all of your materials and the process and the consulting, and

you can have a license agreement.

So lots of really cool ways that you can start to think about it.

Lastly, I just wanna touch on the point that many of my friends and

colleagues who are in the marketing and branding space are highly creative.

And that is why you are amazing at what you do compared to me being

analytical , right, researcher nerd, being good at what I do.

And so there can be a hesitation.

I've witnessed this conversation, facilitated this conversation many times,

where a very creative business owner might say, "But what if I wanna change it?

I don't know if I wanna be married to this version of my logo.

Every few years, I like to refresh things." Well, then it's really smart

to talk to a trademark attorney like myself, who really understands business

and helps you identify what is it that you wanna protect versus what do you

want to allow to be able to evolve.

You know?

Like, you don't wanna feel like you're pushed into a tiny box

if you need that creativity.

And so we can find that balance of creativity and protectability and decide,

okay, maybe your agency name we do protect 'cause that's not gonna change.

But your logo, maybe you do like to do a refresh, or your colors.

Okay.

Well, let's not be so stringent about protecting that.

And so let's audit, in your brand, what would be worthwhile and valuable.

Now, in that second half of the conversation, protecting your clients,

but it's also about, like, protecting your reputation because I just want

you to think about, you know, lawyers always talk about worst-case scenario.

Worst-case scenario is someone comes and pays you big money for your expertise,

and they pay you to create a brand or a product name as part of the engagement,

and maybe trademarks is not on your radar, and it's not your area of specialty.

Or maybe you kinda go on the USPTO site and do a little searching based

on what you think you know how to do, but you don't have the training in it.

And so you're like, "Okay, I'm presenting this name.

It really, from a creative standpoint, nails their vision.

It represents what they're doing.

I love it.

They love it." Okay.

But what if, six months from now, they're the ones getting a

cease and desist letter, right?

You are gonna, A, feel horrible.

They're gonna be mad at you.

You know, like, "Oh, my gosh, we just spent $30,000 rolling out the packaging

for this product that you helped us name.

Why didn't you think to help us figure out if this would, you know, be a

problem?" And from my perspective, you know, as a trademark attorney

doing a search, I am looking for registerability, and it's not necessarily

saying, "Oh, my gosh- Nobody will ever see this as infringing on their mark.

I'm looking at USPTO records.

You know, people can sue and people can send letters even if

it doesn't really rise to the level of being truly infringement.

Let's just be honest, people can sue for whatever they

wanna pay their attorney to do.

If the attorney's ethical, they'll make sure it has some basis.

But, but even having a conversation, bringing those types of questions

up to your client, do you start to see how it truly adds value?

It shows that you're an elevated, more of like a business colleague who's

helping them to issue spot things.

You're not saying, "Hey, I am a trademark professional," but you're

saying, "I know that this is gonna be an important name for your brand.

Do you have a trademark attorney?

Would you like me to introduce you to someone?

Is this on your radar?

Would you like me to add into my package that I will hire an attorney to vet

some of the names before I present them to you?" Like, you can decide how you

want to have that conversation, but it starts to bring you to a whole new

level so that then when they not only love the creative that you create, but

they're realizing you're someone who added value to my business by introducing

me to a trademark attorney and helping me see how protecting my trademarks

can add value to my business, right?

That's such a win-win.

You become the go-to referral for that type of work forever in that

business owner's mind, right?

So it's truly about knowing enough to be dangerous, I like to say.

Like, you might know enough to be like, "Okay, I just did a

quick Google on the name that you want me to design a logo around.

Did you know there's someone?

Okay, I'm not a trademark attorney, but you might wanna have someone look at this

before we spend your time and money having me design something." 'Cause, uh, you

know, maybe you just do a little Google search and then point things out and

then say, "Hey, this is enough for me to say you should really talk to someone."

So whatever your comfort level is.

But this should also, in my opinion, I do not currently do contract drafting.

I am solely in the lane of trademark prosecution with the USPTO.

But in the past, I used to do a lot of looking at service provider agreements

and drafting them from scratch for clients, and I would include this.

If you're a marketing professional, I would actually encourage you to think

about should you put into your contract that you do or you do not have any

assessment of registerability, that you do or do not include services like

that as an option, that you do or do not recommend a certain person or at

least brings up the idea of trademark.

Something to consider

Now I know this topic may went, has gone a little bit over the 15 minutes, but I

wanted to be able to cover kind of both sides of the coin that you are sitting

in as a creative, as a business owner yourself who's working with other creative

business owners, and the two types of relationships that you have, right?

The relationship you have with your own brand, and then the relationship you

have with supporting clients and helping them to consider this conversation.

So I hope that this has been really helpful.

We are gonna talk in future episodes about the relationship between copyright

assignments and design ownership and what's required for logos to be

registered, registerable with the USPTO.

So if you are in this space, definitely make sure to subscribe

and follow along for future episodes 'cause you'll definitely continue

to get value out of what I share here at Trademarks With Chelsea.

Now, if this has your gears turning, if you run an agency or you are a

professional in this space and you want to protect your own name, methodology,

logo, tagline, or you want a reliable way to vet naming options or a, a trademark

attorney you can trust introducing clients to, we could talk about all

of that on a free consultation You can go to trademarkswithchelsea.com,

book a free consultation.

Let me know in the form where your mind is at, of what you wanna talk about.

30 minutes, no cost.

We can hash out some ideas, and the link is in the show notes

In the next episode, just a little teaser to jump ahead, we are gonna be talking

about what is the difference between all of the different tiers of trademark

ability, registration, like rights.

So sometimes people come to me and say, "Well, I've been using this for x many

years. Doesn't that give me some rights?"

That's common law rights.

Someone might say, "I registered my LLC with the state that I live in under this

name," or even, "I registered a state trademark," versus federal registration.

So we're gonna talk about the kind of spectrum of how you

gain and receive protection.

So if you've ever wondered those questions, make sure to

tune in to next week's episode.

That's it for today.

Take care of what you're building.

I'll talk to you next week