What’s up, y’all. Welcome to The Shontavia Show, where my goal is to help you start a business based on your life’s vision. This ain’t gonna be your daddy’s business advice. I’m laser focused on entrepreneurship in the 21st century, vision and breaking the traditional mold. If you can get with that, you can get with me, be sure to visit shontavia.com for more episodes, blog posts, and other content. Thank you for listening. The show starts now.

Hey y’all. Welcome to The Shontavia Show. This is Shontavia, and I’m here to help you create a business that supports the life and vision that you want for yourself. So today’s episode is about one of my favorite topics and it’s gonna sound like such a nerd thing, but one of my favorite topics on the planet is trademarks, and the reason I love trademarks is because what they do is communicate to the rest of us to, to all of the people who come into contact with products or services, why we should use them, why they are valuable, how they will change or improve our lives, why we should, you know, drink Dasani water versus Aquafina.

If I put three glass cups with different types or brands of water, how will we know which one we like other than tasting all of them. And we know because of the trademark, because of the branding, because of the reputation, the trust, the relationship that companies, brands and entrepreneurs are creating for their products. And that’s cool to me because I care a lot about relationships and the relationship between an entrepreneur and a business owner and their clients and customers should be one of trust and trademarks are the way to do that. And I for years taught trademark law. I’ve been a trademark lawyer for 15 years now almost. And so this is a topic that is near and dear to my heart for many, many reasons. It’s one of those components of intellectual property and intellectual property is a term that lawyers sometimes use to refer to patents, trademarks, copyrights and trade secrets sometimes.

Trademarks is one of those that doesn’t get as much love as patents in the entrepreneurship and the startup ecosystem, but something that is still critically important and why it’s important for you as you start your business is that this is what’s going to help you stand out in the marketplace. If you’re a new entrepreneur or a new startup founder, a person out here trying to build a reputation and a brand, your trademark is going to be the thing that does that. And there’s so many common misconceptions about trademarks. So I’d like to do in this episode is give you an overview about just what trademarks are. And in future episodes, what I’d like to do is show you how you can start to protect your trademarks in a number of different ways, some even costing you, hopefully no money. So why don’t we talk a little bit in this episode about what trademarks are.

I’ll give you some high level stuff about what you can start doing to identify your own trademarks. And if future episodes, we’ll walk through the different ways you can protect trademarks, because really there, I can think of four ways off the top of my head to protect trademarks.

So let’s start by defining, and a trademark is just about anything, a word, a set of words, a catch phrase it’s not just names and logos, it can be music, it can be holograms, it can be vertical motion. One of my favorite registered trademarks is goats on the roof of a restaurant for this restaurant out in the Midwest and the vertical opening of Lamborghini doors, that’s also a registered trademark. So trademarks can be just about anything. Anything that separates you and your business and your products from everybody else in the marketplace of whatever you’re selling.

There’s also another really good trademark out there. I’m a little salty. I’m a member of Delta Sigma Theta Sorority Incorporated. There’s registered trademark is for Alpha Kappa Alpha Sorority Incorporated. They make a specific sound when they greet each other. I’m not going to even try to do it. Y’all Google it is terrible, but it’s a great trademark.

So when I say trademarks can be anything I really mean just about anything. Now, how do you get there? How do you go from a sound or a color or a set of words or whatever and get to a registered or protected trademark? Even though the definition is broad, there are three specific requirements for determining whether or not you can actually own something as a trademark. Number one, you have to be the first to use the trademark in commerce. Number two, the trademark cannot be functional. And number three, the trademark has to be distinctive.

So let’s walk through all those things and unpack them a little bit.

Number one, you have to be the first to use the trademark in commerce. Notice that phrase in commerce. That’s the part that is commonly misunderstood and that can trip people up. So it doesn’t just mean you have to be the first to use the word Apple, but you have to be the first to use the word Apple to sell laptops and phones and that kind of thing. So even though you know, we use the word Apple every day to describe a piece of fruit the company Apple Inc owns the word Apple as it relates to selling products and services like telephones, laptops, and other mobile devices. So it’s not just that you have to be the first, but the first to use a trademark in commerce. So what’s that mean in commerce?

It means that you’re selling or offering something for sale out in the marketplace. And this is something that is a little unique in the United States. So for those of you who are listening from other countries, the US is a little bit different because we actually require a trademark to be attached to a product or service. And other countries don’t require that. So that’s the first thing.

The second thing is that a trademark cannot be functional. If the thing does something useful, like if it makes a product or service work better function better, make it more aesthetically pleasing. You can’t protect that by trademark law. So like one of the best and most recent examples that I can think of is, I think it was Miller light that had a vortex bottle where the neck of the of the glass bottle was kind of grooved. It looked kinda like waves around the neck of the bottle and they said, Hey, the design of this neck of the bottle makes the beer easier to pour or whatever because it had that function of making the beer easier to pour and maybe had less bubbles.

I don’t know that function disqualified the design, which otherwise might be trademarkable from being a trademark cause it had that function. So again, trademarks can be just about anything including designs, but it can’t be functional. And that’s where you get into, you know, some of the more gray areas with trademarks when you have things that might also be considered design elements with functional elements, because if they’re functional, you can’t have a trademark for it.

Third, and this is where most trademark lawyers spend a lot of their time, a trademark must be distinctive and there are four relatively blurry at the edges categories of what it means for your trademark to be considered distinctive. Those four categories are arbitrary and fanciful trademarks, suggestive trademarks, descriptive trademarks. And then there’s a generic category. And if something is generic, it is not protectable as a trademark. So the worst kind of name you can adopt for your product or service is something that is generic.

So like using the word Apple to sell apples. So if you are founding an Apple company and you want to call it the Apple company, that would be considered generic and not protectable as a matter of law. So that first category, generic is what you don’t want. Now you will probably get into some tension if you have a marketing person or a person who’s going to help you with your branding. Because that is oftentimes what marketing and advertising folks like to see because you’re communicating what your thing is so the public doesn’t have to guess and figure it out. So there’s a lot of stuff to balance because on the one hand, particularly if you’re new and unknown, you want to communicate what you’re doing so that people know what you’re doing, what you’re selling, and they can make quick decisions about whether they need it.

If you make up a word, you know it’s way harder to build that consumer relationship, that customer, client relationship and reputation. But generic stuff you don’t want to choose. Descriptive designations can be considered trademarks if they have something that lawyers call secondary meaning. And that’s just basically like a fancy way of saying you have a reputation with that word for selling whatever it is you’re going to sell. So descriptive trademarks, identify characteristics or qualities of a product or service. So some examples might be like QUICK PRINT. It says it’s a printing service. It describes it as being quick. These are also the types of words that marketing folks like you to use because you’re describing what your stuff can do. But the descriptive trademarks are a little bit more difficult in terms of getting trademark protection because you can only protect it if it’s acquired that secondary meaning.

So you already have to have built a reputation and to identify something as a protectable trademark that means you actually, if it’s a descriptive mark, you actually have to have been out there building a reputation for yourself with that name. And if you’re a new entrepreneur, if you’re a new startup, if nobody knows you, you don’t have that reputation. So it’s harder to say you have built secondary meaning in something when you haven’t, you know, been out selling it very long or much at all. So descriptive trademarks are great marketing tools, but again, it can only be a protectable trademark, something you can own, if it’s acquired that secondary meaning, if you have that reputation, then a third category, the third category is suggestive trademarks. And so I feel like I’m going into law professor mode a little bit, but some of this stuff you just have to know.

So suggestive trademarks suggest characteristics or qualities of a product. And with suggestive trademarks you don’t have to prove secondary meaning at all. So if you file a federal trademark application for a suggestive trademark, the United States Patent and Trademark office isn’t going to make you prove secondary. Meaning if you file a trademark application with the United States patent and trademark office for descriptive trademark, then you do have to prove secondary meaning. So suggestive trademarks are better for you as an entrepreneur, business, startup company because you have a lower barrier for getting that mark.

And then the final category is something called arbitrary and fanciful trademarks. And these are the strongest trademarks from a legal standpoint. So I used Apple as an example. Earlier, an arbitrary trademark would be taking a word that already exists and using it in an arbitrary way. So like using the word Apple, which is a word that’s been around since the beginning of time and applying it to laptops, using the word Apple is an existing word, using it to laptops.

There’s no connection between apples and laptops. Then with the fanciful category of trademarks, the fanciful kind of designation is where you’ve made up a word. So words like Xerox. So the Xerox Company made up the word Xerox, Kodak made up the word Kodak. And so doing that is also a way to get a really strong trademark out the gate because you’ve made up a word. But the challenge there is you made up a word and nobody knows what it is. So you’ll have to do a lot of work on the backend, marketing and explaining to your clients and customers, this is who I am, this is what I’m doing and this is what this word actually means. So those are all the requirements for trademarks. You have to be the first to use it in commerce. The trademark can not be functional and it has to be something called distinctive.

And distinctive has those four categories that I just mentioned. Generic words and phrases, never trademarkable descriptive designations, words, phrases, logos symbols, whatever songs, whatever, have to have secondary meaning, suggestive trademarks, arbitrary and fanciful trademarks don’t need secondary meaning. They’re pretty strong trademarks right out of the gate. But you will have to balance some of that marketing stuff with how you’re going to communicate with consumers and educate consumers about your products and services. So at a very high level, that is fundamentally what you need to know.

But then the next question is the question everybody always has, which is how do I go about protecting this stuff? And bigger picture question, how much does it cost? So the how much does it cost question is so deep, it requires probably its own episode. Attorney’s fees in general probably require their own episode. But let me just tell you a couple of things about trademarks really quickly.

So first common law, trademark protection, second state trademark protection, third, federal trademark protection. And then fourth, there’s some international options too. Those are the ways in which you can start to establish and lay claim of ownership in your trademarks and that word phrase, symbol, color, song, vertical motion, whatever…that you’re using to identify yourself in the marketplace. And I’ll do future episodes that fully run through all these things, but one of the things people don’t know is that with common law trademarks, that starts automatically. You don’t have to pay a lawyer, you don’t have to register anything, you don’t have to file any paperwork anywhere. Common law, trademark protection happens immediately. Once you meet all those three requirements I just ran through. If you put a “TM” superscript or subscript on your logo or your name or whatever, that’s good enough. In fact, you don’t even have to use the “TM” superscript, but people do so that they can start to communicate that they believe they have a trademark in this thing, in this designation.

So at minimum you can start claiming common law trademark protection for whatever the thing is that you’re using to identify and distinguish yourself in the marketplace. State trademarks and federal trademarks are a little bit more complicated because they do require you filling out an application of some sort and filing it with somebody. So with the state trademark in particular, every state is a little bit different. If you go to my website at shontavia.com I’ve actually written about where you can find the secretary of state and your specific office and what types of things they do. So most secretary of state’s offices have like a one or two page form you fill out. It might be $10 it might be a hundred or $200 probably more like $10 or $50 for most States. File an application with the state and you have trademark protection in that state. Federal trademark protection is a little more expensive, a little more detailed because you get protection in all of the United States states and territories.

They are a little bit more complicated. Most times when you’re going to a lawyer and saying, Hey, I want to trademark something. I want to get a trademark for something and they charge you, you know, probably a few hundred to a few thousand dollars. This is what they are getting for you, a federal trademark. You can find that application at uspto.gov but at any rate doing that gives you protection across all 50 States and US territories and it is pretty complicated. We’ll talk about that a lot more in future episodes, but do you realize that you know there are multiple ways to protect the trademarks that you want to use in your business.

Thank you so much for listening to this episode of The Shontavia Show. If you enjoyed this episode, please be sure to like, subscribe and leave a comment wherever you’re listening. You can find me on social media everywhere, Facebook, Instagram, Twitter, LinkedIn, and wherever else @ShontaviaJEsq. You can also visit me at shontavia.com to find a transcript of this episode along with other show notes. While you’re there, please be sure to subscribe to my email newsletter.

The information shared in this podcast and through my other platforms is designed to educate you about business and entrepreneurship and I love to do this work. While I am a lawyer, though, the information I provide is not legal advice and does not create or constitute an attorney client relationship.

The Shontavia Show is a LVRG Incorporated original. The show is recorded on site in South Carolina and produced at Sit N Spin Studio in Greenville, South Carolina. Original music and sound design is by Matt Morgan and Daniel Gregory. Mixing and mastering is by Daniel Gregory and the video is by GVL Media.