What do you need for your ecommerce store with Joey Vitale - Trademark & Copyright lawyer

by Veronica Jeans, Ecommerce Queen January 01, 2021

 

Veronica Jeans (00:03):

And we are starting with Joey Vitale, a trademark and copyright lawyer, and he is going to tell us all about when to trademark, what to trademark, how long it takes and even copy writing.  I think It's so important to actually get your brand secured and get your name secured.  I find that in  e-commerce,  probably in any business, they think of a name, then they say, Oh, I need a domain name and they go off and find a domain name. And then they don't find the .com. Then they go to .net and dot everything else. And then they suddenly go, you know what, maybe I should trademark. Oops. So I'm going to just dive right in. If you're a new company  -  I'm now starting out, when do I trademark?

Joey Vitale (00:54):

Veronica, that's a really great question. And I think my follow-up question to that is how big do you want your business to get? What is your ultimate goal as a business? Are you wanting to have a thriving seven, eight figure business or is it more of a hobby?  Because that really does affect our legal strategy here.

Veronica Jeans (01:17):

But here's the thing -   that people start out with a hobby. They start out with this.  It's so cool. I need this and I want to sell this and I can make it. And then they start getting bigger and  bigger and then it all explodes. And then the shock comes in and they goes:  Ökay, there's another company out there with the same name".  I know it's supposed to start out with how big we're going to get. I don't think I would say 90%, 95% of people have no idea how big the business is going to get or what they really want, because they're not sure.   So we're  ditching the new companies, let's go to the existing companies. So we started out, we going great. And then we go, Oh, oops. I wonder if I should trademark, because now I want to be on Amazon.  Amazon Handmade. And they go, you have to be a brand. 

Joey Vitale (02:26):

Yeah. You know, interesting. I work a lot with accidental successful business owners. And that's really what I was getting at earlier was so many business owners, regardless of where you think your business is going to go, you talk to a lawyer and they say trademarks are important. You can technically skip them if you want to. But if you do skip this part, there's a big chance that you're going to have to deal with this trademark stuff later. And a lot of businesses who either don't know where they're going to go, or they don't see a 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 without having a trademark in place, now we really have to re-brand. And that's the real cost here is how willing are you to go through a re-brand?

Veronica Jeans (03:33):

And the re-brand is not cheap. I've done a re-brand with a client of mine, and she tried to do it the cheap way. Doesn't matter what you do. It costs money. So I have a good story. About a cease and desist letter. So plenty years ago we came to America and my sons were in high school and they were on the internet and they started a company while it was just a DBA, but they started a company and called it Paint Zilla, which was fabulous. They gonna sell paintguns and stuff online. My son drew the Godzilla thing as a paint seller guy with a gun and everything. We got a letter from Japan, like a lawyers letter from Japan, Holy cow.  It happens 

Joey Vitale (04:25):

Well, and it happens  more and more.  We're now seeing over half a million trademark applications being filed every year. So many of us, you know, when it comes to picking a business name or figuring out, what your shop is going to be called, we do a quick domain search and maybe we start some social media handles, and then we stop there.

Veronica Jeans (04:48):

Sometimes, they go....I want this name.  And you go  ....  No it's too long. 

Joey Vitale (04:55):

And you can talk with naming strategists all day. You can pull your friends on Facebook, but the truth is that so many people, they 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  Because unless, and until you get a trademark registration for your brand, you're taking a huge risk that you're an accidental infringer.

Veronica Jeans (05:28):

Oh yes, absolutely. And, you're also a business coach, right? So you know about everything legally in business. So my advice has always been, go and talk to a lawyer before you start your business. When I started out plenty years ago, I set up companies. I would book the lawyer for an hour and he would cost me then $150. There was plenty of years ago. But I used to have all my questions down. You know no chit chat   -   it cost me money. And it made such a difference in my business when I eventually launched it, because I had everything in place. I had the name in place while it was a different business, by the way. But I knew exactly. And here's the interesting thing that people don't realize is that a business lawyer can also advise you on how to set up your company correctly. And how to benefit on the tax side of how you set up your company. People just don't know about this.

Joey Vitale (06:42):

 And I love that you said you reached out to someone and you spent $150. A lot of people make the mistake of thinking, Oh, a lawyer just costs money. And so when can I afford to hire an attorney? I think a better question to ask is what can you afford right now? Like 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 me or my attorney friends. You might not, but I built my law firm so that no matter what you can afford, if anything. 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 in some way.

Veronica Jeans (07:32):

 I can't even stress how important that is. It's trademarking, it's setting up your company properly.  You will be sorry if you don't do that because it'll cost you money in the end. So instead of spending thousands of dollars on a website, you should be talking to a lawyer first and then getting your trademark ready and having that vision in your head that, okay, my business is going to be not a huge business, but maybe even a medium-sized business. Right. It doesn't matter

Joey Vitale (08:08):

Medium according to who?. Yeah. And that's the thing is yes. Once you figure out what numbers wise, you want your business to be, then these labels of big or small don't really matter.  I want to be able to take home this salary, which means the business needs to make this much money and we can get out of, are you big? Or are you smaller? You micro, are you seven figure? None of that really matters as much as what are the goals of your business and who can you add to this justice league around your team? Lawyers included Veronica included to help you hit that goal.

Veronica Jeans (08:47):

So here's a little tip or a fact that according to the government, your business is small in a non-manufacturing buzz ????????-   That's sticking in my head -  $750,000 and 200/250 employees. That's a small business. It's probably millions by this stage. If you have 250 employees, you don't earn $750. [inaudible] 50 K.??????? You're definitely in the millions, but that's what I mean, you have 250 employees, you still a small business. So as you said, it's just a label. Right? So I have a question. So trademark i the name, the product. What do you trademark?

Joey Vitale (09:46):

Trademarking is for brand elements in your business. So this means slightly different things, depending on what kind of a business you run. We kind of want to focus on certain things.  In e-commerce space it means your name.    A logo, a slogan, if you have one.  And increasingly we're seeing product lines. So you can't trademark with a title of just one of your products, but if you have a collection and you have 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 in there. Things that you can't trademark.  One of the big categories of things that you cannot trademark is just phrases on items. So let's say that you really 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 doesn't check their work and they just file it. 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. Yes.

Veronica Jeans (11:21):

Okay. So could you use the phrase as a collection?

Joey V

You could

VJ

So you can get around it .  That's actually right. Because I mean, obviously people think, Oh my gosh, my t-shirt is so cool. This is, I've thought about this. You know, I always say there's nothing original anymore. People have remembered it from somewhere. They've seen it somewhere. They've read it and they might have a twist on it. But if your original than you're absolutely brilliant. So copyright, what do you do with copyright?

Joey Vitale (12:11):

So before we get into copyright, I have to say, a lot of 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, they 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 watching this video, 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.

Veronica Jeans (12:56):

Wow. Why?

Joey Vitale (12:59):

Because number one, the things that are most likely to happen in your business legally are going to be trademark issues. Reason number two is that we've talked about trademarks, you know, your business name, your logo, you can copyright a lot more. You can copyright so many of the designs that you do, you can copyright your blog content. You can copyright videos that you do.  Once you learn about all the things that you can copyright.  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.

Veronica Jeans (13:55):

That makes sense.  So, if I had a name for my book. That's copyright or trademark?

Joey Vitale (14:15):

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 to also be the title of a book, but the way that it works in both of their arenas is that trademarks protect brand and the title of your book isn't sn't a brand, right?   And copyrights protect a content of a work, which doesn't include the title of the work itself.

Veronica Jeans (14:48):

I think we should just come to you. Nevermind. Just, give Joey cool. This is way too much.

Joey Vitale (14:56):

[Well, this is where it's really interesting because you have a decision once you realize that the legal side is kind of fun and it's kind of interesting, You have to decide whether or not you want to be a business owner and think about this in terms of your time being money and what are you going to do to protect your business?  Or indulge take time off the clock as the business owner  and play here, because I can geek out with you on the law all day, but I don't think it's the best thing for your business.

Veronica Jeans (15:27):

You got it. You got to look where the money is. Right. So e-commerce is branding  -  when, for instance, you go onto Handmade America, you have to be branded and then you have to have a trademark.  Then how long does it take to get a trademark?

Joey Vitale (15:52):

Okay. 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.   A lot of 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   -   when it comes to these brand registries and things  -  you're getting a trademark 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 is places like Etsy that don't have this brand registry have all of these business owners fighting with each other about who owns a what.

Veronica Jeans (17:19):

Yes, that's right. 

Joey Vitale (17:22):

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 very clear who owns it.

Veronica Jeans (17:38):

So I want to create my own line of fashion. You know, I'm going to be the next, whoever.  I'm very bad with names, but I'm going to be Veronica Jeans. And it's until I actually looked at my name on Facebook, I didn't realize how many Veronica Jeans' there were.  So what do you do? I mean, not everybody has registered the name, but say for instance, if I say Veronica Lee Jeans, Lee jeans, pitches up.  So they have a trademark Lee Jeans. So I cannot say, hey, I want Veronica Lee Jeans. Right?

JV

Why not? 

VJ

Oh, that's my question.

Joey Vitale (18:23):

You potentially could. So again, this is where it gets interesting. And I don't want to talk too much because really when it comes to this topic, you should talk with an attorney directly. 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.

 

Joey Vitale (19:05):

Part of what the trademark office is doing during that process is seeing, do we want to allow your application or is it too similar to somebody else's application?  And when they're doing that, it's called the likelihood of confusion test. And that is the number one reason why they deny people's trademarks.  But it's a pretty nuanced strategy. They have thousands of reviewing attorneys checking as they're making these calls on applications. And to give you an example of how this is kind of tricky  -   you know, the company Blue Apron  -   So recently there was another company that got denied that was called Green Apron.

 

Joey Vitale (19:54):

Similar industry. But the trademark office said, how likely is it that somebody who sees Green Apron could think that maybe it's like a, some version of Blue Apron and that's really what they're trying to figure out here is can someone see your brand and think that somehow you're associated with this other brand?

Veronica Jeans (20:12):

??????????????????And that's the same thing. If you have a domain name very, very similar to another domain name. So I have a client that have obviously have a name.  She is in  whole foods right now.  So, and it's a very common name, it's   Hug Patrol.  So she could get into trouble because her name is very similar to a non profit Hug Patrol Bears  which I discovered by accident. 

Joey Vitale (20:51):

Is that a different industry than what she does?

Veronica Jeans (20:53):

Totally different industries.  It is a non-profit,

Joey Vitale (20:56):

So in that case, there probably is not going to be a likelihood of confusion between the customers. So there are two big brands that are both called Delta. One's an airline, one's a faucet company.

Veronica Jeans (21:11):

Yeah. That's right. 

Joey Vitale (21:15):

So the fact that there can be two brands that are in totally different industries, that's part of the analysis. So it's not just how similar are the names, but it's how similar are the services or products

Veronica Jeans (21:26):

Exactly. That makes total sense.  I always get the question  -  is  trademark  going to cost me a lot of money. What is, I don't want to exact numbers, but what is the cost.    I know it takes a long time to do this because  I did do one of your courses, which I absolutely loved because I can get into this stuff,  it just takes a long time. And I've had a client that sat on this and sat on this for months on end because she couldn't get it done. And she eventually got her trademark denied and then she went to a lawyer and then it was approved, but she spent all these hours on actually doing the research and not really knowing what she's actually researching. Because they don't.

Joey Vitale (22:23):

So if, in terms of the fees of moving forward, you're right there's a lot of time that you can spend doing it on your own. So to one extreme, you have the option of working with an attorney. That's usually thousands of dollars. But that is completely off of your plate. They do everything.

Veronica Jeans (22:47):

From the filing to the, if it gets denied that you apply again and again, and put your arguments forward. 

Joey Vitale (22:56):

Yep. And because it takes so long, I will say that what separates the really good trademark lawyers from the average ones is more the customer experience. Are they keeping you updated throughout the process? Are they making it really easy for you to get in contact with them? Because you know that's the difference between two-star service and five-star service and that matters when it's a six months or a year long journey together. So then you have the other extreme, the option of totally doing it yourself, which it sounds like your friend might have

Veronica Jeans (23:32):

And then going through Legal Zoom, right?

Joey Vitale (23:35):

Yeah. So trying to do it yourself, there's a lot of research that needs to be done no matter what you have to pay a filing fee of at least  $225.  You could use a service like Legal Zoom. The problem with Legal Zoom is all of these nuances that we've been talking about, they don't look at any of that.  Legal Zoom is just a fancy form filling service. So they'll ask you questions, you answer them. They don't look at what you wrote   ?????????????Veronica Jeans (24:04):

You don't talk to anybody. 

Joey Vitale (24:08):

???????You wrote, and they use that to apply.  And you're likely going to face problems that way. The reason why Legal Zoom is profitable is because they make a lot of money on the backend. So they'll come to you saying we have these problems, Yeah. It was cheap to get started, but now it's going to cost you an arm and a leg to move forward.

Veronica Jeans (24:28):

Exactly. And that's what happens. 

Joey Vitale (24:31):

Yeah, that's their business model. And then you mentioned our programs. So we created a middle solution where we show you in a course how to do this yourself in about three hours.  What the major mistakes are. So you can avoid those mistakes. But we also don't just kind of send you to Google so you have to do all this yourself. So at this point we have over 250 members in the program and people are really loving how easily they can get started. Really making it seem like they can run those searches. They can get those applications submitted pretty quickly. And then hopefully, usually they get the registration. If not, they understand what it means when they get that status uptick from the trademark office.

Veronica Jeans (25:15):

Exactly. I think I was at one of your first courses and I did the whole thing because I was just interested in how it actually works. And the conclusion I came to is I think Joey can do this one.

Joey Vitale (25:29):

That is the other thing about our course is we work in connection with my law firm. So anybody who gets the course and like you realize you know what I think I'd rather just, even though this is easier than doing it on my own,  have someone just take it all for me. We will credit the cost of the entire course to working with my firm.

Veronica Jeans (25:49):

And that's what I've found amazing. Because you can go in and go, okay, I have a really easy name, no problems, get it done.  Finished and off you go, you know, happily off you go.  Or you can get into a situation  that's like  -  Oh shoot, I didn't realise it was this much work   -  let's get it done. I totally believe in using the experts because you should be running your own business. That's where your strengths lie. Because if you are trying to be your accountant, your lawyer, your coach, whatever else is, you take so much time to actually create the website. I've got one guy  -  it's been a year and I've been really on him come let's go, but he's so lost in the, Oh, I can do this on my website. Oh, I can do i this in my store. Oh, I can code a little bit. Are you kidding me?   If you had an expert, you just go in, have it done and then start selling, you need to make money. I mean, that's the bottom line, right? You need to make money. So any other good tips that we need to know that you could sort of think of the top of your head?

Joey Vitale (27:07):

Well one of the common questions that I get after we talk about copyrights versus trademarks is, what's the difference then between an LLC and a trademark. And do I get any naming rights when I formed the LLC? And the short answer is  -   no.  The main purpose of the LLC is that it gives you limited liability protection. So it, shields your personal assets, if anything bad would ever happened to you. But  that LLC name that you get, I like to think of it more as like a backstage named for your business. So you're communicating that LLC name to your clients when they sign up with you, it's on the invoices, it's in the contracts. Your bank knows the name of the LLC,.  The LLC name. Isn't really the forward facing brand. And if someone else has the trademark to it and all you've got is the LLC name. You can't point to that at all to play defense.

Veronica Jeans (28:08): ??????????????????

Exactly. So you can actually have an LLC with the name and you can have your face fronting brand could be "Doing business as, right. Then that is your brand. Again, it's your name, your brand. That's the most important part. I'm so happy you mentioned the LLC ibecause from overseas it's always Pty limited, but it does protect you. Right. It does protect you if you selling something and they are either consuming it, putting it on their skin, doing whatever, even just, buying something from you and they want to sue you or they want to do something. Cause you know, they came to harm or whatever, they can do that, but you can be protected behind that corporation.

Joey Vitale (29:05):

Absolutely. And you know, if this is triggering any questions, usually when people have the chance to sit in on a legal conversation like this. They want to raise their hands and they have questions.  I have a podcast that's a little over two months old now, and it's a great resource for you to just kind of binge through topics that I get asked about all the time. And so if like Veronica right now, you're like, Oh, maybe I don't have any specific questions, but I'm curious what questions I should be asking. I go through a ton of my answers to that question. Okay. In the podcast every week.

Veronica Jeans (29:47):

And we'll put this in the group on this  feed.  It's actually a post, and all your information and everything's on the website as well, but we are getting ready for our next speaker. So we're going to have at least 15 or so minutes to ask questions right now  of Joey. And so if you have any questions, ask them to below otherwise, go and listen to his podcast. You are going to have so much fun, right? Because I think you should protect your name. You really, really should protect your name. So, it's  money well spent. And Joey is, I've got to say, Joey, you've been amazing with any of my clients that I've had. I don't even know if you've worked with anybody, but I've always go. You should go to Joey.

 

Veronica Jeans (30:34):

Go talk to him. So anyways, thank you very much for listening and thank you so much to Joey popping in.   I am so excited about this. We will get ready for the next speaker  It's going to be on the hour. Thank you Joey

Joey Vitale
Lawyer, Speaker, Business Coach

Joey Vitale is an attorney for thriving small businesses. He is one of the top-rated lawyers for creatives in the country. With his law firm, Indie Law, Joey works with creative small business owners to protect their passions and give them the legal foundation they need to thrive.
Connect:
www.joeycvitale.com + www.indielaw.com
facebook.com/itsjoeycvitale
linkedin.com/in/joeycvitale/
Free Facebook Group - facebook.com/groups/joeycvitale
instagram.com/joeycvitale/
Free Trademark Masterclass: https://joeycvitale.lpages.co/powerbrand-registration-ego/

 


Veronica Jeans, Ecommerce Queen
Veronica Jeans, Ecommerce Queen

Author

Veronica Jeans is a Ecommerce Business Consultant, & Shopify Expert. She is passionate about eCommerce businesses and specializes in global ecommerce and online sales trends.  Shopify Expert - Marketing - Web Development - Social - Coaching - Training - Facebook Live - Messenger Bots - Facebook & Google Advertising - BRANDING www.veronicajeans.com
Like Me on Facebook :)


Also in Virtual Ecommerce Summit 2020

Video & Live Streaming: Getting Comfortable Being Uncomfortable In A Digital World. Now More Than Ever -Brian Schulman - VoiceYourVibe on LinkedIn, Speaker and Business Coach
Video & Live Streaming: Getting Comfortable Being Uncomfortable In A Digital World. Now More Than Ever -Brian Schulman - VoiceYourVibe on LinkedIn, Speaker and Business Coach

by Veronica Jeans, Ecommerce Queen January 01, 2021

View full article →