Trademark & Copyright For Ecommerce - with Joey Vitale - lawyer
Trademarking is for brand elements in your business.
Your trademark is an integral part of your brand. It protects the identity of your company. You will be protected from competitors or other businesses encroaching on your customer base and business.
As a newcomer to the ecommerce industry, I learned a valuable lesson from a client who owned a flag and flagpole company. A competitor registered the same domain name as the plural form of the name, and he made $1.5 million online selling the same products. We knew about the situation because I wanted to register all the branded domain names. As you can imagine, the client was not happy about this, but there was very little he could do because he didn't have a trademark.
I interviewed Joey Vitale, Trademark & Copyright lawyer (& Business lawyer) about trademarks and copyrights, especially for ecommerce businesses. Here is the link to the recorded interview: https://veronicajeans.online/Joey-Vitale
I have curated the questions and answers in this chapter.
If you're a new company. When do you trademark?
Veronica, that's a really great question. And I think my follow-up question is, how big do you want your business to get? What is your ultimate goal as a business? Do you want to have a thriving seven, eight-figure business, or is it more a hobby? Because that really does affect our legal strategy here.
How to choose a name for your business?
Well, and it happens more and more. We're now seeing over half a million trademark applications filed every year. So many of us, you know, when it comes to picking a business name or figuring out, what your shop will be called, we do a quick domain search, and maybe we start some social media handles, and then we stop there.
And you can talk with naming strategists all day. You can pull your friends on Facebook, but the truth is that so many people don't have a lawyer in their corner to tell them that trademarks are a part of the naming strategy.
We should be thinking about trademarks before we launch. It's not this thing that eventually, maybe one day, we get around to trademarking. Unless and until you get a trademark registration for your brand, you're taking a considerable risk of being an accidental infringer.
What do you trademark?
Trademarking is for brand elements in your business.
So this means slightly different things, depending on what kind of a business you run. We want to focus on certain things. In the e-commerce space, it means your name. A logo, a slogan, if you have one. And increasingly, we see product lines.
So you can't trademark with a title of just one of your products, but if you have a collection and a name for that collection, that can be something you can trademark. A big mistake people make in the e-commerce space is not realizing that there are things that you can trademark.
Things that you can't trademark. One of the big categories you cannot trademark is just phrases on items. So let's say that you liked this fun phrase, and you put it on your jewelry, on your shirts, on your hats; the trademark office calls that ornamental use. And that is not something that you can trademark.
There are a lot of trademark applications that get rejected for this reason. And a lot of them are e-commerce people working with Legal Zoom who don’t check their work and just file the information. Be prepared if you are in a phrase-based merchandise swag kind of e-commerce - be careful and don't fall into that trap of trying to trademark the phrases on your items.
What do you do with copyright?
So before we get into copyright, I have to say, many business owners make this other big mistake, treating copyrights and trademarks like they're of equal importance.
Before we get into copyrights, I just want everybody to have a big sigh of relief here and say copyrights are important, but they are way less important than trademarks for most e-commerce stores in terms of figuring out what you want to get done.
So, if you are building a legal to-do list, as you're reading this chapter, feel free to write notes on copyrights, but do not get sucked into the rabbit hole of the copyright world until you get your trademarks registered.
Because reason number one, the things that are most likely to happen in your business legally will be trademark issues.
Reason number two is that we've talked about trademarks, your business name, and your logo, but you can copyright a lot more.
You can copyright so many of your designs.
You can copyright your blog content.
You can copyright videos that you record.
And so much more!
It can be a lot of work to file paperwork for all of those things. And so the analysis for what you actually want to protect and register in the copyright world it's a more strategic, more intense workout than getting your trademarks done.
So before we get into that advanced discussion, let's make sure that you get your trademarks and your brand protected first.
So, if I had a name for my book, is that a copyright or a trademark issue?
Neither - you cannot trademark the title of a book.
There are ways to protect that in other ways that could turn into a slogan. That could be the name of a podcast that you work on. And it just happens also to be the title of a book, but the way that it works in both of their arenas is that trademarks protect the brand and the title of your book is not a brand, right? And copyrights protect the content of a work, which doesn't include the title of the work itself.
How long does it take to get a trademark?
I love that you asked the question this way. How long does it take to get a trademark? This is what's interesting and important for business owners to know. You can get a trademark instantly for free.
So just by being in business, just by using your brand, you automatically have trademark rights. Many people think that you get trademarked by filing paperwork with the trademark office, which is what I help people with.
That's not really how this works. Trademark rights are created upon use. But they're protected when they're claimed at a national level. So, it's not that you’re getting a trademark for these brand registries and things. It’s that you're getting evidence of your trademark. And it's almost like you're going through this process with the federal government to get a birth certificate for your brand.
And then that's what takes a while because most trademark applications get denied. And so, it's important to take time before you get too loud about your brand to secure it at this national level. And the reason why platforms are getting smart about this on platforms like Etsy that don't have this brand registry have all of these business owners fighting with each other about who owns a what.
And so because platforms that are now seeing that they've gotten smarter and they've said, you know what? We can cut down on a lot of that by saying, we're only going to let you in here once you've got your trademark registration in place because then it's obvious who owns it.
So I want to create my own line of fashion. I'm going to be Veronica Jeans. And it's until I looked at my name on Facebook I didn't realize how many Veronica Jeans' there were. So what do you do? Not everybody has registered the name but say, for instance, if I want Veronica Lee Jeans, Veronica Beard Jeans, pops up. So they have a trademark Veronica Beard Jeans. So I cannot say, hey, I want Veronica Lee Jeans. Right?
You potentially could. So again, this is where it gets interesting. And I don't want to talk too much because you should speak with an attorney directly when it comes to this topic.
The reason why trademarks are so complicated and why people pay me to do what I do is because whether your brand is too similar to another person's brand it's not a very clear black and white test.
So when the trademark office is looking at an application to answer your question from earlier, a trademark registration takes anywhere from six months to a year to happen.
How important is it to trademark, and when should we do this?
You know, interesting. I work a lot with accidental successful business owners. And that's really what I was getting at earlier. So many business owners, regardless of where they think their business is going to go, need to talk to a lawyer because trademarks are important. You can technically skip them if you want to. But if you do skip this part, there's a big chance you’ll have to deal with this trademark stuff later. And many businesses either don't know where they're going to go, or they don't see big success in the future - They're like, well, that's a risk that I'm willing to take right now. The problem is, we make that decision now saying: “Oh, I'm going to skip the trademark part.” And then years later, or months later, sometimes days later, a cease and desist letter hits us, and we realize that we have to re-brand without a trademark in place. And that's the actual cost here. How willing are you to go through a re-brand?
And you're also a business coach, right? So you know about setting up your business correctly and legally in a company.
Many people make the mistake of thinking, Oh, a lawyer just costs money. And so, when can I afford to hire an attorney?
A better question to ask is, what can you afford right now?
What can you put as a line item for a legal budget and then find an attorney who's willing to meet you there? You might be able to afford my attorney friends or me. You might not, but I built my law firm so that you can afford anything no matter what. You can grab a call with me, or I have a resource, something where I can meet you where you're at because the ultimate goal of working with a lawyer is for you to take action somehow.
Here is how to connect with Joey Vitale: