Intangiblia™
Plain talk about Intellectual Property. Podcast of Intangible Law™
Intangiblia™
Erik M. Pelton - Building a Bold Brand: The Foundations of Trademark Protection
Unlock the secrets to crafting a brand that not only captures hearts but also stands firm in the legal arena. Join us as Erik Pelton, a renowned trademark attorney and former examiner at the US Patent and Trademark Office, shares his expertise on building memorable and legally protectable brand names. With Erik's guidance, learn how to avoid the common pitfalls that many businesses stumble into and discover the strategic advantage of securing trademark protection early on. This episode promises to equip you with the knowledge to lay a solid foundation for your brand's future success.
Navigate the emotional and strategic challenges of small business branding with us. Through personal stories and real-world examples, we delve into the complexities of trademark protection and the importance of a strong brand name. From addressing trademark infringement issues to exploring resolutions outside of court, we highlight how proactive intellectual property protection serves as essential insurance. For small businesses with limited resources, investing in trademark protection isn't just wise, it's crucial for sustainable growth and partnership opportunities.
Visit: http://www.erikpelton.com/
It's not easy to come up with a great brand name that's available and creative and strong from a legal protection standpoint and communicates with your customers. Right, because we could make up a word. You see on Amazon a lot of these days, a lot of brands that are just made up combinations of characters. They're sometimes even impossible to pronounce so they don't actually mean anything, right? But for most businesses, you want a name that your customers can remember and that when they see your name, they know something about what it is that you do or some quality or nature of your business. So to come up with a great brand name is not easy.
Speaker 2:You are listening to Intangiblia, the podcast of intangible law plain talk about intellectual property. Please welcome your host, Leticia Caminero, Overnight success is usually years in the making.
Speaker 3:We talked today about brand creating one from the idea, from the first thoughts and conception, to choosing the right name and finding the best way to communicate with your customers, with your clients, with your intended audience. This all needs care, thought and planning. So let's welcome our guest to talk about building a bold brand.
Speaker 1:My name is Eric Pelton. I'm located just outside of Washington DC in Virginia in the United States, and I am a trademark attorney who specializes mainly in working with small and medium-sized businesses in both trademark registration and prosecution of trademark applications, as well as trademark disputes and agreements and contracts and litigation. I run my own law firm, eric M Pelton and Associates. We're in 2024, actually celebrating our 25th year of the law firm. I started it on my own after I had been an examiner at the US Patent and Trademark Office, so my first job after law school was with the US Patent and Trademark Office as an examiner, reviewing applications, and that was a wonderful training, wonderful people, wonderful experience. I got to learn in detail the trademark registration process from the inside, from the government's perspective, and then, ever since then, I've been working helping people manage that process from the other side as their attorney.
Speaker 3:So you have the inside information, how the logic works and everything, how the language that they speak. So you have a great advantage in that sense.
Speaker 1:Yes, and it is. You know, it certainly can be a very complicated process. There's lots of specific procedures, forms, policies, and so having that background really can be helpful and in times of situations where an application gets stuck or there's a very rare occurrence knowing who to ask, maybe, or where to look for the right information is a nice tool to have.
Speaker 3:Oh, that sounds perfect. I would love to be your client with all that information. So now we're going to turn. How I got to know you, it was through your book Building a Bold Brand, the Foundations of Trademark Protection. So on this book you really go into detail and tackle the main parts of brand protection, from the creating of the brand, protecting the brand and so forth. So what would you say are some prevalent pitfalls that business should be mindful during the crucial process of creating a brand or deciding on a brand name.
Speaker 1:Yeah, I love that question because a lot of people think about trademark protection later on in the business's life cycle and that's valuable and important. It's better to think about it and work on it later than never, for sure. But the most important time you can work on it and think about it and learn about it is at the beginning of starting a business, or starting a new product or a new service and the name that gets attached to it. So I wanted to take or starting a new product or a new service and the name that gets attached to it. So I wanted to take. This was a few years ago when I wrote the book Building a Bold Brand, and I wanted to take my years of experience, both as an examiner and as an attorney and write a book that was for business owners or marketing managers, people doing business and working with brands. There's lots of content written for other lawyers, written for governments, written at that type of level, with that type of language, and it's not really accessible to the business owner. So I wanted to write something that was more accessible to the business owner. So I wanted to write something that was more accessible to the business owner and that's how I developed the book and thought of the audience when I wrote it.
Speaker 1:And to your question about the beginning of the process and launching a brand, the most important thing is the name itself that is chosen for a company, a business, a product, a service, and taking the time to choose a bold and creative name, because it's going to be much more unique and stronger and more protectable, and to do the research to make sure that it's available in the appropriate industry or industries, and to do the research to make sure that it's available in the appropriate industry or industries and to begin the registration process. So you know, if I had a magic wand and could educate every business owner before they launched, that would be the message you know is, before you launch, as you think you've come up with this great name, pause, work with an attorney, do the research to make sure it's a great name, because it's the foundation for your business in many, many ways and if you build it on a more solid foundation, of course it's going to be that much easier for the business to grow bigger and bigger and quicker and quicker, as opposed to the opposite.
Speaker 3:Of course, and before you do the big investment, before you start making the labels, putting out the promotion, all I say, oh, maybe I should protect this, so maybe I should hire an attorney to help me out.
Speaker 3:So before you do all that, it is important to make sure that the brand that you're using, it is available in the legal sense and also it is registrable, because it may be available but it maybe is too generic, maybe it's too descriptive, maybe it doesn't fit into the categories that needs to be, that needs to be met for registration. So, yeah, it's important to do the thought before the action. And with that, moving to now, we have the brand, we are bold, we decide to make this a distinctive, unique brand and make that registration and go through all that. And we know that life is not the same as it was 10, 15, 20 years ago. The way that a brand grows and gets to the consumer, to the user, is very different nowadays and of course, we have technology to thank for that and in that also realization. The protection of a brand is not as simple. Or it doesn't have the same structure as it used to be, or it doesn't have the same structure as it used to be, so how do we find protection?
Speaker 1:How do we find protection in this new world? Yes, there are many interesting aspects of this the way that commerce has changed and how it affects the world of trademarks. There's the speed at which a business can launch and grow and be public, especially if it's a service-based business. Now it's so much quicker to set up a website or a software and deliver services. And then there are all the other technology things related to communications, like social media, artificial intelligence all these other things that also interact with the world of trademarks and intellectual property and that's actually how I first got so excited and interested in intellectual property was the change of technology At the time when I was graduating law school. It was the explosion of the internet and websites and domain names at the start of that, and I built my own website when I launched the firm to market the firm and at the time, many, many websites, many, many. At the time, many, many law firms did not have websites, and so that helped set me apart and helped make it easier for people to find me.
Speaker 1:Back to your question about today what are things that brands want to think about in this environment of doing business today? Is it really is more important than ever to start the protection as early as possible. When possible, start it before you go public, before you launch. Ideally it's six months or a year before you launch, right. But like I said, for many industries you can get up to speed and launch a business much quicker. That's okay. But it's still better to start the process a month before you launch or even a week before you launch than it is after you launch. Once you're already out there, it's more costly to make changes right and your risk you may have already taken, risks that you didn't realize you were taking because you didn't stop to do the research about the name.
Speaker 3:Of course you may be infringing someone else's trademark without knowing, without the intention, but in this case intention doesn't matter. If you did it, you most likely would have to pay for it or at least find an agreement to settle for it.
Speaker 1:At a minimum. It will be a big headache. It will probably cost money money on lawyers, maybe money in damages and that's why a lot of times, we have to deliver bad news to people. Right, we love this name. We've been planning it for the last six months. We're launching in two weeks. We want you to go ahead and protect it. I say well, actually you might want to think about this name and maybe alter it, but that news is much better to receive before you launch it than it is to receive a cease and desist letter a month after you've launched it, and it's that much more expensive and burdensome to deal with of course, uh, it's, uh.
Speaker 3:No one wants to receive a notification saying, hey, you are in violation, so please stop. So it's, it's, uh. That is why planning and and being surrounded by the right people that can guide you and counsel you is very important. Especially something as an entrepreneur, you put your heart and soul in your business. You put everything you have in your business, so it is crucial to protect that, because this is where you're putting your, your blood and sweat, so and and your dreams and hope and your future. So it's very important that you make a, a wholesome protection of everything, not just the the typical things that you need to formalize your business, but also protect your identifiers, protect the way that you're presenting yourself to the users, to the consumers. It is crucial because that's going to make or break your business.
Speaker 1:Yeah, and I really wish that in business school or business classes that they taught more about intellectual property, because it is such a fundamental thing, and I think maybe many such classes briefly mention intellectual property, but I don't think they really give it the time and the attention and highlight it as how important it is from the outset for those businesses, and so that's another reason that we're trying to always educate people with our books, podcasts, videos and things.
Speaker 2:You are listening to Intangiblia, the podcast of intangible law playing talk about intellectual property.
Speaker 3:Discuss about real world examples. So in your book you touch a few of them, and I would like you to tell us one that is particularly intriguing or challenging, in which we can understand the different complexities and colors in the Tregman Law.
Speaker 1:Wow, complexities and colors in the trademark law. Wow, there's so many examples and it's hard to share stories because of attorney client privilege on a lot of matters, of course. But you know, I can tell you, for example, working with a business and watching it grow from an idea and a trademark filing to then growing in success, and this happens all the time. Without having to give a specific example, you can imagine almost any business that grows successful. Here we say the American dream. A lot right, Starting your own business out of your basement or your garage, right. But I know that that dream exists in lots of places. It's not limited to the American dream and sometimes everything goes 100% smoothly, right, they make up a word or pick a brand new, completely arbitrary, creative word and they're off to the races. But much, much more frequent is there are roadblocks, there are obstacles, whether it's a challenge at the trademark office getting registration. A challenge at the trademark office getting registration, or whether it's the fact that the application process in the United States went off smoothly but the company expands and they look at filing internationally and they learned that somebody has already filed in China or in Europe for something very similar, and what options and obstacles they have to address there.
Speaker 1:And so one of the things I love about my job is that I get to work with all different types of businesses all the time, so I get to learn a little bit about whether they're in the beverage business or the software business or real estate business.
Speaker 1:I get to learn a little bit about all these different industries and businesses. And then the other aspect is that there's always something new and unique. You know that's challenging for a business that we've never seen before, Because things there's just so many different possibilities in the world of intellectual property that there's always new challenges, new issues that arise. And even though we're lawyers and we're dealing with this technical area of trademark registration, there's a lot of creativity that goes into how do you formulate a strategy to address this situation or to negotiate with another company to try to find a resolution that's beneficial for both sides. And I love that I get to use the analytical side as well as the creative side of my brain, and I never knew that when I got into the world of trademarks that that would be something that happened so frequently and that I would enjoy so much.
Speaker 3:Yeah, ip law, trademark law, is extremely creative and you get to really explore the full spectrum of the human brain with it, because, of course, it's not only following the process, not understanding the law and so forth, but it's also understanding the business, understanding the person behind the business and what they're hoping to achieve, and translating that into the brand that they're looking to protect. Translating that into the brand that they're looking to protect. So it's a very beautiful companionship that this kind of law lets you do that. You really are with the business owner, with the business creator, from a very beautiful perspective and you can understand the whole of the business, not only one transaction, one here, one there. It's just this. It's the entire, what makes the business, the mission of the business, the vision of the business. So it's. It's quite a challenging, of course, uh, but also, uh, interesting. It's a. That's why well, I'm partial, of course, because I'm an IP lawyer, it's hard for me to be impartial in this sense, but, yes, I truly believe it's the most beautiful part.
Speaker 1:Yes, I could add two things to that briefly. You mentioned before when you were talking about businesses creating their brands and their products and services and the emotion that they have involved in it, and that can make it complicated when there's a problem with the brand right, but it makes it wonderful when you see it succeed because you know how much passion and emotion goes into it. And we are also a small business as our law firm, and so we completely understand and get that. And then the other thing I wanted to add was over the years because what we do for the vast majority of trademark work is in the United States, federal, and so we can work with clients all over the country and all over the world is that we get to work with so many different types of businesses, so many different places around the world. And when I'm traveling, whether it's for work or even for vacation, sometimes I get to try to meet with clients who sometimes I've worked with for many, many years that we've never met in person. We've seen each other on Zoom perhaps, but we've never sat down and had a cup of coffee together or gone out to dinner. And it's great. I've made so many great relationships through the world of trademarks.
Speaker 1:No-transcript.
Speaker 3:Yeah, it's beautiful to make that relationships and get to see the full spectrum. So, in that, you are a small business, you work with small business, so you really understand the realities and the challenges that they face, because those are similar to the ones that you face as well. Can you identify some of those main challenges and which strategies would you recommend to overcome them?
Speaker 1:One challenge, like we talked about launching a brand and how it's not easy to come up with a great brand name that's available and creative and strong from a legal protection standpoint and communicates with your customers. Right, Because we could make up a word. You see on Amazon a lot of these days, a lot of brands that are just made up, combinations of characters. They're sometimes even impossible to pronounce, so they don't actually mean anything, right? But for most businesses, you want a name that your customers can remember and that when they see your name, they know something about what it is that you do or some quality or nature of your business. So to come up with a great brand name, To come up with a great brand name, is not easy and we have gone through that in coming up with names for the name for the book Building a Bold Brand, or the name for our newsletter or our podcast Tricks of the Trademark. So we've gone through that process and then gone, of course, because we love to practice what we preach, and gone on and registered those names with the US Patent and Trademark Office.
Speaker 1:And then, of course, another challenge for small businesses is what do you do when you find that somebody is infringing it or possibly infringing it right. You don't have a legal department or a budget that built in thousands or tens of thousands of dollars for litigation and trademark protection. And so how can you try to address those situations fairly and protect your brand? Because if you don't protect it, you could lose your rights or weaken your rights right, but without breaking the bank and without spending more money than necessary. So we've dealt with that with some of our brands and we help clients deal with that all the time, almost every day. Right, that's an issue that comes up.
Speaker 3:So you have to find different ways of how making your right effective, and not everything has to be solved in a court of law. Some things and sometimes better outcome comes out of a meeting room, comes out of a good settlement, a good conversation. At the end, businesses are not in the business of suing each other. They're in the business of whatever industry, whatever sector they're focused on. It is sometimes even more enriching to find ways, and some people have started fighting and end up even being business partners later on or accompanying each other in different ways in the business, because they realize that there's some synergies that they can take advantage of.
Speaker 3:Underline message that I'm seeing here is about being open to make the change, to make the protection, to make all that and also being bold in the whole sense of the world. So it's not only being bold on you're already being very bold by creating a business and by being an entrepreneur is already quite a big step but also being bold in the rest of how do you identify yourself, how do you protect yourself, how do you go on about your business and how you carry on in the digital era of having a business in this nowadays. So, eric, any final wise thoughts to share?
Speaker 1:Well, first, thank you for having me, I guess, and for helping to spread the message to different audiences about the importance of intellectual property, and that it's, you know, one of my messages would certainly be you don't have to be a big business to take advantage of intellectual property protection and, in fact, protection. And in fact, it's probably more important if you're a small business to protect your trademarks and your other intellectual property upfront, proactively, because you don't have that litigation budget. So, amazon or Nike, if they trip up and make a mistake, or Nike, if they trip up and make a mistake, they can afford to pay somebody or pay lawyers to sue or defend a suit and deal with it. Small businesses cannot. So it's even more important for them to invest. It is an investment, but it's a reasonable investment, and it's a reasonable investment and it's a type of insurance to help strengthen their brand, reduce the odds that they get caught up in a situation that's going to cost them money, time, emotion, and that it's well worth that expense at the outset. Thank you.
Speaker 3:Thank you at the outset. Thank you. Thank you, Eric, and can you tell us how can we get in contact with you, your social media handle and also the full name of your podcast or anyone who would like to listen?
Speaker 1:Thank you so much. So my podcast is Tricks of the Trademark, and you can find that everywhere you listen to podcasts. You can find me at Eric Pelton, that's E-R-I-K-P-E-L-T-O-Ncom, and on there you can see all links to all of our social media. Our handle on Instagram is Making Trademarks Bloom and you can find all of my videos. I have more than 500 videos on trademark and intellectual property topics, and you can find those at Eric Elton dot TV.
Speaker 3:Perfect. So there's a whole lot of information to keep understanding, to keep discovering, to keep discovering and, eric, you are part of the great minds that are making that work and approaching trademarks and IP to the rest of the world. So, thank you, thank you for your time and thank you for your words.
Speaker 1:My pleasure.
Speaker 3:We have reached the end of our episode. Greetings from Switzerland.
Speaker 2:Thank you for listening to Intangiblia, the podcast of intangible law plain talk about intellectual property. Did you like what we talked today? Please share with your network. Do you want to learn more about intellectual property? Subscribe now on your favorite podcast player. Follow us on Instagram, facebook, linkedin and Twitter. Visit our website wwwintangibliacom. Copyright Leticia Caminero 2020. All rights reserved. This podcast is provided for information purposes only.