Trademark Protection For Growing Brands

A great brand can be stolen quietly, one search result at a time, until your customers can’t tell who’s real anymore. That’s why we sit down with trademark attorney Justin Clark, who helps business owners protect the names and logos they’ve worked so hard to build, especially as marketing gets more digital and competition gets tighter.

We dig into the biggest misconception we see in small business branding: that using a name, registering an LLC, or buying a domain automatically protects you. Justin explains the difference between common law trademark rights and a federal USPTO trademark registration, why nationwide protection matters even if you only sell locally today, and how a trademark search can save you from an expensive rebrand after you’ve already invested in websites, signage, and customer awareness.

Then we get practical about intellectual property and online brand protection. We compare trademarks vs copyright vs domain ownership, talk through who actually owns a logo when a designer creates it, and why contracts and assignments matter when you grow, sell, or get acquired. We also cover the real risk of using images, fonts, or designs you “found online,” plus what changes when you expand into multiple states or franchising and need consistent brand standards.

If you want to protect your shed business brand, construction brand, or local service brand the right way, hit play, subscribe, share this with a business owner, and leave a review. What part of your brand protection plan is the most unclear right now?

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This episodes Sponsors:
Studio Sponsor: Shed Pro

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Transcript

Welcome, Community Updates, Guest Intro

INTRO 0:00

Hello and welcome back to the Shed Geek Podcast. Here's a message from our studio sponsor. Let's be real. Running a shed business today isn't just about building great sheds. The industry is changing fast. We're all feeling the squeeze, competing for fewer buyers, while expectations keep climbing. And yet I hear from many of you that you are still juggling spreadsheets, clunky software, or disconnected systems. You're spending more time managing chaos than actually growing your business. That's why I want to talk to you about our studio sponsor, ShedPro. If you're not already using them, I really think you should check them out. ShedPro combines your 3D configurator, point of sale, RTO contracts, inventory, deliveries, and dealer tools all in one platform. They even integrate cleanly into our Shed Geek marketing solutions. From website leads, to final delivery, you can quote, contract, collect payment, and schedule delivery in one clean workflow. No more double entries, no more back and forth chaos. Quoting is faster, orders are cleaner. And instead of chasing down paperwork, you're actually running your business. And if you mention ShedGeek, you'll get 25% off all setup fees. Check it out at shedpro.co/ShedGeek. Thank you, ShedPro, for being our studio sponsor and honestly for building something that helps the industry.

From Marketing To Trademark Law

Shannon 1:33

Okay, welcome back to another episode of the Shed Geek Podcast here in Sunny, Metropolis, Illinois today. And today I'm joined by Justin Clark. We'll get to him in just a minute and uh and uh talk about what he's here discussing with us today on the podcast. Before we get rolling, a few ways to stay plugged in with us over here is to give us a call, 618-309-3648. Email us at info@ shedgeek.com or uh contact us uh on our website at www.shedgeek.com. And uh feel free to like and follow us on our Facebook pages and our YouTube, any social media you see out there, we really appreciate it whenever you guys click that follow button uh or subscribe. Uh also check us out in the Shed Sales Professionals group where we try to bring engaging conversations to those that uh sell sheds in the industry and even our plain community friends that are looking for the landline number to call in and listen to the podcast. That's 330-997-3055. Hot item of the day. Shout out to Graceland Portable Buildings. I was out at the Oklahoma BBQ this past weekend that's hosted by Travis Parks, JD Perry, Melody Troutman. Always a fun time to go out there. And I picked up one of these nice little Graceland hats. So, shout out Greg French, John Rentfro, all the guys over there at Graceland that I know really appreciate you guys in the 20 years of raising the roof, as the hat says, uh, you guys are awesome and we appreciate you. Uh, welcome to the show, Justin. Tell us, uh, if you would, sir, a little bit about who you are and what you do, if you don't mind.

Justin Clark 3:14

Yeah, thank you, Shannon. And uh good to be with you and your your audience today. Um, yeah, so I am a trademark attorney, but if I'm at a cocktail party, I like to tell people that I help protect brands. That seems to resonate a lot better than attorneys. You know, attorney use that word and it kind of has negative connotations, people kind of turn off. So, I try to talk about what I do in a more I guess entertaining or interesting light because it really is uh an interesting area. And I'm glad that I get to be in this area and counseling people on it. So, I uh actually got my start in a different field entirely. I used to be in marketing and um sales, and I worked for my dad's business. Actually, he was a printer, and uh I got experience pretty much doing everything from building their website and then uh eventually transitioning into client relationships and sales, and that's kind of where I got my passion for marketing. I really enjoyed kind of putting together messaging, figuring out what resonated best with um customers and what got people to basically call and place orders. Uh, so, I learned a little bit about that uh working for him. I didn't do any formal training and marketing, you know, I took some classes in college, but I think my ultimate goal was law. I just like the analytical and kind of writing aspect of law. I can't say that I like the adversarial part. It is, you know, unfortunately comes with the terrain. Um, but I find in you know, trademark law there's actually a lot of room for uh kind of cordial negotiations, discussions. And um that's kind of my goal. I like to advise clients ahead of time on how to avoid the really sticky adversarial situations. As a business owner, you don't like those, you want to avoid them as much as possible because they're very time intensive and they also are expensive. Um, so I like to advise clients on the front end, and that's kind of my kind of brings my marketing background and the law kind of marries them, you know, together. So, but yeah, I've been doing um trademark law for about uh 15 years. Um went to law school out here in Arizona um at ASU and uh started working for a company initially in-house and then transitioned into law practice with a smaller firm and then eventually my own firm. I come from a family of entrepreneurs. So, I think owning my firm was kind of always in my blood, so to speak. Uh, and uh it's great because I I get to kind of level with other uh small business owners who are pretty much in the same boat, different fields, um, but we all have the same concerns. You know, we're all trying to promote our product or service, um, serve our customers or clients in the best way we know how. Um, so that's just kind of a little bit of my backstory.

Shannon 6:28

That's excellent. Well, welcome to the show. Great introduction. And uh if there's ever an industry I feel like that needs protection on logo and uh and uh just you know their brand content and uh branding in general, we actually offer some marketing services ourselves, so like we're very familiar with like creating those branding guidelines. And one thing that that happens quickly is you start thinking about the little trademark and the little copyright symbol and different things like that, and what all does that mean and how much does that protect me? So, that's what we're hoping to talk about today. Of course, you know, our Friday host, uh Cord Koch, you know, has uh GrowthOps Ally, and that's one of the things that they like focus on is these fractional services, whether it be CFO, CMO, CEO, uh basically hiring someone at a fraction of the cost and a fraction of the time. And one thing that that comes up almost immediately in that marketing conversation is like, how is your brand protected? Um you know, uh what steps have you taken? So, I did something different today. I normally just take uh off the cuff uh sort of like thoughts. And I actually use Chat GPT to give me a host of questions that we're never gonna get through unless we do a three-hour conversation here today, Justin. Um, but you know what? We'll run down and let's see what their question how their questions line up against the things I'm thinking. Uh, you know, you've already told us how you kind of got into marketing and law uh and then into brand protection. Uh how about this? Let's just start off the top. What made you focus specifically on trademarks and brand protection?

Justin Clark 8:08

Yeah, so I've always had an interest in um how companies are represented in the marketplace. Uh growing up as a kid, I really enjoyed, you know, Legos. Um, and back in the 90s, you know, Legos were a lot different than they are today. I don't know if you remember how absolutely kind of basic the sets were. I mean, but even then I came to understand as a kid when you walk into Toys R Us, which you know unfortunately doesn't exist anymore, uh KV Toys too. I mean, you'd go through the mall and you go, you'd have your favorite store you'd always go to, and you always looked out for the imaging. So, Toys R Us, they had Jeffrey, the giraffe, they had that distinctive uh font and layout and lettering that you could see from a mile away if you were a kid on any one of those marquees, you know, on the side of the road. So I knew as a kid, you know, hey, I like colors, I like logos, they're fun. Um, and it was a way to help me find the products that I really liked. And uh maybe it was just all the imagery. Um, I don't know, maybe that's common among kids. But for me, it was always I used to design like logos just for fictional companies. Um, sounds kind of nerdy, but it was uh it was a way to blend art and commerce in my mind. Um, so even from a young age, I didn't even really know what a trademark was, of course. And I didn't really know the significance of trademarks, even doing marketing and branding work. Trademarks to me were just kind of always something in the background. I mean, you always see that TM or circle R, and you assume that they mean something important, but I think when you're uh when you're in the marketplace, you're so focused on selling your product and um just getting the messaging out and these kind of legalities, if you will, are just kind of like an afterthought. Um so I think just growing up, I knew there was something to logos and branding that really fascinated me. Um, and didn't really understand the legal significance of that until I actually sat down, you know, a little bit before law school and even during law school when I realized I wanted to be in the field of trademark and copyright law and understood, okay, here's why these um legal protections are so important.

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Shannon 11:50

I can tell you it's the first time I think I've had a reference to KB toys on the podcast in near 500 episodes. Oh, really? Also, the first time I've thought about it in 30 years, but I totally remember our local KBs. And then uh Toys are Us, you know, even you know, we you know, now here locally, the uh Ollie's came in and took over where the Toys R Us was. But when you think about that brand, even in general, the traditional backwards R and how other things have begun to become an R Us, uh, and think about even that the dynamic of that protection. So very awesome story. Um, what's one mistake you see business owners make over and over when it comes to their brand?

Justin Clark 12:29

Yeah, and I'll just preference this, uh Shannon, by saying, you know, what I'm talking about is general, it'll be general legal knowledge. Uh, anybody in the audience, though, I mean, they they should talk with their own legal counsel. Um, I'm just here to kind of share the good news, as it were, of trademark law and just share some principles on that. Um and I would also just caution people be careful about going on places like ChatGPT. Um, I think there's a big push to show that Chat GPT does uh actually provide legal advice, and it unfortunately doesn't provide good advice most of the time. And hopefully, if it's worth it solve, it'll tell you at the end, yeah, there's um you should consult your own attorney on this. So, I would just uh caution everybody, you know, talk to legal counsel about any particular issue that you might have. But with that being said, let me let me get back to the original question and just remind me again, Shannon. I'm sorry, I went off. No, you're good.

Shannon 13:29

No, you're good because you know it's really good for things like this with giving us questions, but you're absolutely right. And I've actually had a conversation with a lawyer recently that told me the exact same thing. We're friends with the local city attorney, and that is the problem, is a lot of people will go to chat GPT and sort of use it as their legal resource. Well, it's great to give me some questions for for an interview, but I don't want to trust Chat GPT to give me legal advice. So I'm glad you uh I'm glad you said that here. But so yeah, uh original questions just kind of you know, what's a mistake that you see in general that people do or don't do to, you know, to protect their brands?

Justin Clark 14:08

Uh well I would say number one is they actually don't protect their brands, and what I mean by that is they don't file uh the appropriate applications for their brands. So, um generally in the United States, in order to get um what we would call a registered trademark, you have to file an application with the U.S. Patent and Trademark Office. Um and the reason why that's important is because it gets you kind of your solid rock -solid recognition that your brand is protected. It meets all the legal requirements for a trademark. And, if you were to ever need to sue anyone in court, it'd be federal court. Um, that trademark registration, it automatically out of the gate tells the court, okay, this application or this trademark has been reviewed by the federal agency in charge of granting trademarks. So, we're automatically going to presume that it's valid, which does a lot of legwork for you in a trademark lawsuit. Um, that's one of the benefits. Another benefit is that it gets you registration in all 50 states. So, when you put a trademark into the marketplace, you acquire what's known as common law trademarks. And it's just kind of an old school way of saying you're actually claiming rights in this mark by purposes of you're using it in commerce. So, that's really how you get a trademark right to even protect. It's you have to put a logo or brand or some other identifier that points to you as the owner, you have to put that on a product and a service and put it into the marketplace. But, your trademark rights, if you don't register them with the US Patent and Trademark Office, only go so far as your product reach. So, let's say you're a shed manufacturer in Texas, and you maybe, maybe you market very niche to a very niche market in Texas. Maybe it's only for grain farmers or um for some other type of niche uh agricultural industry in Texas, and there's not really a big following outside of maybe Texas, Oklahoma, um, your rights are only going to extend to that specific geographic area. Um, so the reason why you would file a trademark in that example is because you want your trademark rights to extend nationwide. So, even though you're based in Texas and maybe your market's only Texas and Oklahoma, anybody in any other state, if you file and get your trademark registration, they're not going to be able to use that mark in that state, in the state that's maybe, you know, thousands of miles away from Texas. But, that's not the case if you don't register your trademark. So, that's probably the biggest mistake I see is people don't actually register their trademark. Um, they just use the mark, and you know they kind of forget about it, or it's another cost item, so they just skip it entirely. They're worried about getting the product to the market. Um, and you know, maybe for like a year or two they use it, and then somebody else pops up in let's say Washington and they're using the same mark. Well, now you have a problem because your customers might be going on the internet doing a search, and they they're getting they get pointed to this um company in Washington, and well, they're selling sheds as well. There's probably some confusion there. Maybe your customers start contacting that company in Washington, then they probably should have been contacting you. And um, without the trademark registration, uh it's gonna be a lot harder case to bring against that Washington entity. It might you can probably still do it, but it's gonna be very expensive, and the results or the outcome is anything but certain. Um, so that would be the biggest mistake is not registering the mark and not doing all the things that come along with the registration, which you know, a trademark search is one, you want to make sure the trademark is available. Typically, you do that before you file the trademark. So, that's an important step that kind of is subsumed with the trademark registration. So yeah, number one, not registering the trademark.

Shannon 18:36

I feel like um, yeah, I definitely remember whenever I first got started, you know, with our brand and went through the whole process of trademark and copyright. And I think the question, you know, for me starts to become, you know, uh at what point, I love this question, at what point should a shed company or small business owner start thinking about trademark? And you may answer some of these in some of your in some of your uh dialogue there, but feel free to put, you know, put whatever uh other emphasis is necessary on that.

Justin Clark 19:11

Yeah, so I would say um it's never too early to start thinking about it. Um, especially nowadays where there are so many other, I mean, a lot of people are filing trademarks. There's more trademark applications than ever before. And in fact, that's why the trademark office is backlogged. Uh, it used to be, you know, a couple months period for you to file, then then they would review it. Now it's you know potentially up to five, six months, which is double or triple the amount of time in some cases than it used to be, even just like six or seven years ago. And that's because so many people are filing trademarks. Um and I think when you're when you're starting a business, uh, I would like to think that one of the first check boxes on your list is the name. A lot of people, in fact, that's maybe how they even got the idea to start the business. They had a family recipe or a family uh business, a heritage business that was started in the home, and they want to expand out into the marketplace, and they want to bring kind of that heritage along with the business, and they incorporate that into the name somehow. So, a lot of times it's the first box you check off. Um, and really, I mean, as I said before, I think when you do evaluate names, uh you should be checking for other names that are out there. And, whether you know it or not, when you're when you're seeing if there are other names that are already taken that are similar, you've already kind of started the trademark process. Um, because your number one concern is, well, is this name available? It's like when you go on and do a um a search for domain names and you want to register the domain name, which by the way, I would probably also advise that you do relatively early on in the trade trademark or business um formation process. You should definitely see if there's any domain names that are you know usable and register as many as you can, you know, within reason. You know, you can't buy a thousand domain names, but um, that's another important step. And I think um the reason maybe business owners gloss over it is they just think, well, I've got the name, it's unique to me, there's no possible way somebody else could be using the name. But the other thing to um think about in a trademark sense is it's not necessarily the exact same name, it could be a name that's similar or it sounds the same. You know, there's a lot of different examples, like Apple could be spelled A P P L E, but it could also be spelled A P P L. And if somebody were to roll out A P P L trademark with phones, you know, they'd probably be getting a cease and assist letter from Apple. Um So it's not just the exact name, it's similar names. So, I think, yeah, you want to be doing this from an early point, uh, probably before you put certainly before you take it to market at all and you start printing logo tags or uh developing a website and basically anchoring everything to that name, you want to make sure it's available. Um, because otherwise you're spending a lot of good money after bad potentially. And it's a lot harder to rebrand once you're a year in or two years in and you get a cease and assist letter. Oh no, somebody else is using the same mark or similar mark, and you know, they have a lot of firepower behind their name, and then you end up uh spending tens of thousands of dollars to rebrand, you have to re-educate your customers, and it's just it's a real nightmare. And a lot of that can be nipped in the bud early on if you just do that trademark search and get your trademark filed, you know, so you know that you've got the name locked up.

Shannon 23:02

In many ways, I've said whether this is a good metaphor or not. It's like life insurance, you know. Uh, you hope to not have to use it, but it's good to have it whenever it's uh time to use it. So, that's to me, that's why they matter so much. And you mentioned domains. So, like I feel like I'm gonna skip straight to this question and it may be sort of uh uh asking the question in a different way, but uh this is important to me, especially for somebody who works in protecting it's not just the brand now, it's the digital assets, it's the digital landscape and like what does it mean protecting your brand online? What does it mean? Um, so and people see this all the time, even this industry from other people selecting a name, it makes it harder to get to turn into an LLC or S Corp or C Corp or however you're running your business. Um, but this this question I'm really curious at uh what's the difference between a trademark, a copyright, and just owning a domain name?

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Justin Clark 24:57

Yeah, so uh trademark is any brand. Well, it's formally it's a source identifier, which is a fancy way of saying it's something that a consumer uses to find that you are the source of the product or service. So, traditionally, that's a logo. Um, it's a word, it could be a phrase, like a tagline, like Nike's just do it. That's an example of a trademark. Um, it can even be colors, you know, brown for UPS. UPS owns a registered trademark for the color brown on its trucks. Um and colors even uh cents. Um, yeah, there's some scent marks. Those are very non-traditional, not many of them out there, but the biggest. Sound, yeah. So MVC, the tritone, um, the 60 minutes kind of intro, that's a sound protected trademark. Um, and pretty much probably 95% of businesses, they're probably either worried about logos or uh words or trademarks. Um, colors, you know, maybe if you've got a shed company that's very using a very distinctive coloring on their sheds, other than maybe you know, steel or uh the standard colors, maybe like a turquoise color. You know, it takes many years to develop trademarks like that, but um it can be done. But that's those are kind of examples of trademarks. Copyright is any creative work uh of expression. So the easy ones are books, movies, uh songs, um websites are another one. Um, most of the time, if you're a business, you're probably protecting original images that you take, stock, not like stock photos, but if you hire a photographer to take a bunch of photos for your business, and maybe they're uh pictures of your product, for example, sheds. If you have a very nice uh line of sheds and you want to get it kind of recognized and promoted, you might hire a photographer. You know, those are copyright protected works, um, instruction manuals. I mean, a lot of copyright, it's more for the fields of the creative arts. That's where it's really more important. I would say businesses, the if you're buying and selling goods, you're probably more concerned with trademarks. Not to say copyrights aren't important, they are, um, but it's more important than you focus on the trademarks. Copyrights, you know, there's a place for them everywhere, but mostly they're in the creative works realm. So, artists, designers, if you're designing furniture, there's actually a lot of furniture designers that that try to get uh trademark or uh copyrights rather on their furniture designs. Um, so you know, but uh those are the two kind of IP buckets. There's also patents. Um, we won't talk about those because I'm not a patent specialist, but that's another type of intellectual property, and that protects uh useful um kind of inventions and designs, methods. Um, there's design patents that protect the designs of things. You know, if you had a shed design and let's say you had a very um interesting maybe configuration of the corrugations on the metal siding and you wanted to protect that with a design patent, you could do that with a design patent. Um and websites, I mean, domain names, I think they're I always consider them a subset of trademarks. Um, you don't register a domain name as a trademark usually because the name, the trademark is in the domain name. And dot com's, you know, with the exception of a very few companies, I think hotels.com is kind of the big one, um, who actually battled for many years to get that uh trademark because it was what we call in the business descriptive. It hotels describes uh what you're selling, basically. And generally you can't get trademarks on those types of words because they're not distinctive, they're not unique. Um, but you know, if you were a website, let's say you're a company that owns a couple trademarks, and really important part for um your protection for uh domain names and I would say probably account names as well on social media sites like Facebook, Instagram, it is gonna be your name. You're gonna want you know to lock up the rights in the dot com, this the Instagram handle that you want. Um X. I don't know if a lot of people are on X. I think bigger businesses probably get a lot more bang for their buck on X than uh standard kind of smaller B2Bs. I think it's more B2Cs on X, and even then I think X is more of an echo chamber, um, to be honest with you. So, it's probably more important that you focus on uh Instagram and um you know maybe Facebook. But yeah, uh that that's pretty much the gist of those three areas. Um yeah, I would say obviously I'm biased, but trademarks are most important, and um everything flows from that uh in terms of like domain name protection.

Real Rebrand Stories And Famous Fights

Shannon 30:14

So, it gives me four options here in real world scenarios. Um, I'm gonna pick the one that I think uh, because there's so many options here to just talk about that I think might make for the best conversation. Have you ever seen any real cases where someone lost a brand or had to rebrand? And what happened, if so?

Justin Clark 30:34

Um, yeah, so I'll just kind of reference a couple real world uh scenarios. Um these are not my clients, um, but they are you know real world cases that I think might be illuminating. Um so Burger King actually is an interesting one. Um, and this kind of goes abroad, but it it's still a good example nonetheless. So, Burger King, obviously very well known in the United States, um, but in Australia, there actually was another Burger King that predated the United States Burger King. Um, and when Burger King, you know, the big US entity sought to go into Australia, um, they were basically locked out of using that name because somebody else was already there. Uh, they figured out a way kind of around it, rebrand it. It's kind of a special sub-brand in Australia. Um, but uh that the same thing could happen to anybody here, just on a local biased basis. Uh, you could have, you know, a name that somebody maybe has been using, didn't bother to register, but they're in they're in a market that you'd like to be in, um, geographic you know, area, for example, and uh you go into that market and then it's kind of well, you get a letter back from them saying, well, hey, we were using the name first. Um, and you know, sometimes if you're feeling, you know, I guess uh ambitious enough as the later entrant, we which we call the junior user, you know, the senior user is the one who was there first, junior user is the one that comes in after. You might try to work out some kind of a deal, um, but those are harder to come by. So that's a pretty common example. Um, I think I spoke to you previously about uh the case of the Iceman trademark in the um well, you've got the you've got one player in the uh in NBA who was using that name for a while. He played for the San Antonio Spurs. His name escapes me, but if you just Google Iceman, you'll be able to find it. Um he started using the name, or he was given the name rather, I think, by his fan base, uh, back in the 70s and 80s. And then recently there was a uh quarterback for the Bears who also wanted to start using the name Iceman and actually filed the trademark application for it. And that's still pending. Um, the original NBA star who was using Iceman never registered it. Now he's fighting the NFL player who filed for the mark. Um, and it it's probably gonna get a little messy. I don't know. I would like to think they'll try to work out some kind of a deal. But um, another example of just not to sit on your rights. If you have a name, you know, get it registered um because somebody else can come in and file the trademark, and then you're kind of playing from a defensive position there. So, you know, that's another example. Um, Taylor Swift is actually very active with her trademark activities, and she recently, I think, had a dispute with a fan. Um, anyways, I I'm not remembering the details, but Taylor Swift will actively get trademarks and then send out letters to other fans um who might be generating the mark on like fan art. Um and you know, I think that's kind of bad PR, but it happens a lot when you have aggressive trademark owners. Um so yeah, that that those are just a kind of a snippet of some of the issues I've seen. Um and it really kind of ties back to not registering the mark to begin with or not doing a trademark search uh that would uncover you know potential conflicts. Um because once you get into litigation, uh it all bets are off. Um and you're not gonna want to be in that in that position if you're a business owner and you're trying to build up you know a business. Um, last thing you want to be doing is spending lawyers on attorney's fees.

Shannon 34:56

So, I g I gotta tell you, I think there's an MMA fighter out there with the nickname Iceman too. So it's just in the sports worlds. Yeah, yeah. Lots of issues in sports for sure. Logo's marketing content. Uh, if someone pays uh uh a designer for a logo, do they automatically own it?

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Justin Clark 36:11

Well, it depends. That's so that's a uh key phrase in the law. It depends. A lot of people get mad about it because it's wishy-washy. Um, but yeah, and it's interesting. Um, I actually just read a case about this very issue yesterday. Um, I can't remember the name of the specific company. I think it was Sunshine. Um, but it was a brewery who had uh it was a group of friends who had designed a logo and gotten this brewery together. One friend designed the logo originally, and it was very informal. I think there was maybe a handshake like, hey, yeah, I'm gonna design this logo for you guys. The business gets to use it. You know, I'm technically a partner in the business. Well, fast forward to you know, 10, 10, 15 years later, that company gets acquired, and um there was no formal transition of those trademark or the logo rights, uh, which would be at this point, I think he was asserting that um it was a design, so it was a copyright. He claimed the original designer claimed a copyright on that logo design, and it didn't get transferred cleanly over during the acquisition, and negotiations between the designer and the new company fell through, and now there's a court battle over basically copyright infringement. Um, so yeah, I mean um I think it all comes down to what's in the uh contract between the designer and the company that designs um or that uses the logo. So um, because designs, copyrights, depending on how they're kind of set up or how the arrangement works, some of them might be works for hire, or they might just be um works that the copyright owner is creating. They're considered the the author and the owner, potentially. So, you want to make sure that there's an assignment of those copyrights in the logo over to whoever got the logo made. Um, and in terms of trademark, trademark works a little differently. Um, but you know, trade this is one of those areas where trademark and copyright can't kind of overlap because you have the design part of it, which might be separable from the trademark rights. Um, trademarks are they accrue to the person who uses them. So, if you put them on the product, the designer is not designing the logo and putting them on the product, but the company who got the design is. Um, but I think you would want to make sure as the company that's using that logo that you have both the copyright and the underlying logo locked up, meaning it got transferred over to you. And in terms of what you'd be protecting on the trademark side, I think if I were that company, I'd probably get the assignment of the rights in the logo itself. And then trademark it. Um you're gonna get more, I think you're gonna get more protection on the trademark side in that situation than if you were just getting a copyright on it. I mean, copyright's only gonna protect that design itself, it's not gonna protect it as a uh source identifier, so to speak. So yeah.

Using Online Images And Fonts Safely

Shannon 39:42

Really, uh, really good info. Um I'm enjoying this. There's a question that's very relevant to us in the industry because I feel like we see this a lot. Uh social media, websites, a couple different things. Can you get in trouble for using images, fonts, or designs you find online?

Justin Clark 40:01

Uh yes, you can. Um, and it's something you should be very careful about when you're using, you know, a um a picture. So, just because it's on Google or any other platform, even if it's not on a um like a stock photo website, and those are pretty easy to spot. Usually, they have watermarks on them. Just assume if it's online, somebody owns it. And um, you may or may not be protected as you know, fair use. It's just kind of the phrase that people throw around for defending against you know, use of uh an image uh that they didn't pay a licensing fee for. They they could try to dress it up as a fair use. But the fair use in most pretty much all commercial contexts, it's not available um as a defense, or uh, I should say an effective defense. So yeah, I I would assume if you're a business and you're online and you're looking at content, you know, an image and you really like it, um, I would either try to get the rights to that image. Um, and maybe that entails going to the rights owner, negotiating a license, or if it's on the stock photo website, you know, read the fine print, because even on stock photo websites, they have different licenses. Um, some of them allow for the things that you want to do, others don't. Um, typically the more expensive the license, the more you can do with it. So, that's probably the more cautious route to take if you're going to be using these images on marketing and stuff like that. Uh, fonts, same thing. Um, fonts are technically copyright protected. And whatever the license uh that's tied to the font says is pretty much what you can do. Um and any creative work, so videos, you know, you see a video clip or a sound clip you really like. Same rules apply. Um, assume it's owned by somebody and that it's copyright protected. Because copyright, um, unlike trademark, you don't necessarily need an application to protect the creative work outright. Uh, there are benefits to filing a copyright application, um, but copyright applies as soon as you create the work. So, somebody could own you know a copyright in something, it's not registered, um, but it's still, you know, you would still be liable for damages or you know, infringement if you were to take that work and use it um, you know, in something that you were doing. So yeah, I'd be very careful online. I know it's very tempting. You see a lot of information, a lot of assets online, sometimes without even a um like a byline or like this is owned by this person. And it's honestly, it's a it's a pretty big mistake a lot of uh people make. Um, and it's what it's a blessing and a curse for the internet. You know, you get a lot of content out there. Um, but you know, you have to assume if it's like a library, uh, you walk into the library, each one of those works was created by somebody, they're all protected by a copyright. Uh, same thing applies on the internet.

Scaling, Franchising, And Brand Control

Shannon 43:07

Yeah, great. That intellectual property is so, you know, from when someone's working with you or working for you, and then what parts of those, you know, IPs are protected if they're an employee versus when they leave. There's these I feel like these are conversations I see uh pop up on, I don't know, uh they they hit my algorithm whenever I start searching for this, and then you start seeing the horror stories or the you just want to be protected. Um growth and scaling, you know. Um you know, t take any one of these that you want to. How does brand protection change when uh they start expanding into multiple states? You know, what's uh what what should someone know before franchising or opening multiple locations? If someone wants to sell their business, how important Is having a trademark in place. Any of those you want to tackle?

Justin Clark 44:03

Yeah, so I think I can tackle all of them and hopefully not bore everybody to death. No, I these are very I think these are very interesting topics uh because they are highly practical. Um unfortunately, legal uh kind of information can be overwhelming because it seems impractical. And you know, it's not a very interesting topic because people don't like lawsuits. Um, they're expensive. But I think this is all helpful, kind of, I guess if you will, due diligence work that you should be doing um on the front end. And a lot of it just comes down to planning at the beginning stages of the business. So, if you have a small business, I think you want to assume that it will grow. I mean, most entrepreneurs start a business, they want it to grow and scale. Um, and in the trademark realm, you know, that doesn't necessarily your strategy doesn't necessarily change um too much if you're growing from state to state because you've already done all the front-end work. So, if you're, let's say you're a new business, you've just filed your LLC paperwork, um, you're looking at a name now, and you're doing you know a search to see if that name's available, and you find that it is, great. You know, next step should be a trip to the trademark office to file your application. Um, and at the initial stage, you know, you may not know all the things that you're going to be selling or offering. And sometimes your products, you know, scale over time. Maybe they're not the same. Uh, maybe they're they're they're different um at aspects of you know a company um or what they offer.

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Justin Clark 46:53

Yeah, so let's say you're a shed company and you initially start by selling, you know, sheds. Um, but maybe you have other components that you want to start selling, and maybe that only comes into kind of existence in the second or third year of business. Maybe you have electronic components that you're going to be incorporating into the sheds, um, and you're you're selling those kind of as separate pieces. You know, maybe you have um, I don't know, GPS units that you want to attach, and you're, you know, you built them, they're proprietary, and you don't want people selling them um, you know, apart from the company or you know, an authorized distributor, because uh they are aftermarket parts. Um, those are different products entirely, obviously, from sheds, and that might be a situation where you say, okay, maybe it's time to file another trademark application for these goods because they're not covered by you know our initial application, which was only for sheds. Um, so that would be an example of scaling, and sometimes that comes in you know the second or third year after the business. Um the good thing about scaling or growing your company from state to state is if you have a trademark registration, it already covers all those states if it's through the U.S. Patent Trademark Office. So, you don't have to file a new application if you open a new branch office or have a new distributor in another state and they start selling your product because your trademark already covers that. Uh, I think for franchising, um you also, if you start up and you know from an early stage that you are going to franchise, you do want to make sure you have all your trademarks in a row registrations-wise. Um, because a lot of mistakes that I see are you know, companies that maybe have loose terms with a franchisee, and the franchisee might take advantage of some of that IP and file their own trademarks if you know the franchise or has not trademarked their brand already. Um, the other thing you have to be careful of as the franchise or is to keep tabs on what your franchisee is doing with the brands. Um, I think we've all been in cases where, and I saw this one time and it made me laugh, but it was a Dairy Queen, and somebody went in there in the middle of summer, and the menu board had an item on there. This was before you know the digital menu boards, obviously. Uh, but the menu board had an item on there that was from the previous Christmas uh holidays. So um obviously that that wasn't a good look for Dairy Queen. It showed kind of, well, what is this? This company, they're inconsistent, you know, they're kind of a cracker jack operation. Um, but franchisees, if you're not monitoring how they're using the trademarks, you can actually lose a trademark. Um, it's called basically abandonment through non-enforcement or non-uh compliance. So, have standards as the franchiser, if that's maybe like color um or sizing or placement of the marks, you know, set those out in standards and guidelines that you give to the franchisees and do check-ins with the franchisees and make sure that they're using you know the marks properly. Have them provide you with proof, you know, images, um, pictures of their products or the products that they're selling, there's their storefronts. You know, I think that's that's all important because you never want to lose the the trademark that you've worked so hard to gain.

Shannon 50:28

Very very informative. I love the educational segments that we get to do on these podcasts. This gives me a rapid fire option, which kind of works good with our time. We've got just a couple more options here. Um, yeah, if I buy a domain name, I own the brand, true or false. We kind of covered that, but it's not true or false. That would be false.

Justin Clark 50:48

Yeah. Trademark, it's usually the other way around. And I shouldn't say that because you could get a trademark and the domain name might not be available. But yeah, trademark should come first, then the domain name in terms of make sure the trademark's available and you know, domain name availability kind of works into that a little bit. Obviously, a domain name might not be available, but the trademark might be. I would focus more on the trademark because that's ultimately the more important part of the business. You can try and come in later and acquire the domain name through, you know, a purchase, for example, if it's owned by somebody else and they're just sitting on it.

Shannon 51:27

Uh great advice. And because I've been through this where you know there's so many questions about who owns a domain, and that's just another question altogether inside of the actual digital world that we've we've gone through over the last two or three years pretty extensively. Uh, if I register my business with the state, I'm fully protected, true or false.

Justin Clark 51:48

Uh well, truly I would I would ask follow-up truly protected from uh trademark sense or just yeah, it doesn't really give any any any explanation as to where we're talking trademark or or copyright.

Shannon 52:02

And really, what does register mean other than like an LLC, you know, or registering yourself as a getting an EIN or something along those lines? But uh, I mean, I think the obvious answer is not fully protected. There's other steps you have to take, even if you register your business.

Justin Clark 52:18

Yeah. And there's a difference between a business name and a trademark. They're not the same. Business name is usually just the legal identifier for the company, and it'd be, you know, designating that company as an entity, which has nothing to do with the trademark because trademark acquire acquire trademark rights when you put the mark on the product or the service. A lot of companies might not even put their company name on the product, it's just something that they put in contracts, for example, or um when they're uh uh filing applications for licenses or something. Um, so yeah, it's not a company name or company registration with a state, you know, it might be an important part of your business, but it's definitely not a trademark and it shouldn't be thought of as being one.

Three Actions To Take This Week

Shannon 53:03

There's so many questions on here. We're probably about 47 minutes. I got a few more that we can go, and then we want to make sure to give the audience a way to reach out to you. I'm gonna skip down to a couple of these things. Uh, what are three things every business owner listening should do this week to protect their brand? One, two, three, whatever you got.

Justin Clark 53:21

Yeah. First, um, if you haven't looked to see if your trademark is being used by somebody else, uh, I would do that. Um, ideally, you've already done a search before you started using the mark, but if you haven't, do one now. Um, see if your trademark is registered already. And if it's not, I would probably register it or start the registration process at least. Uh, second would be make sure any websites you want to use domain names are locked up. Um, there's a lot of spoofing going on nowadays, just third parties going in and registering in mass, you know, hundreds or thousands of domain names and across different uh extensions now. We don't have just dot com or dot us, we've got dot blog, we've got dot live, dot shop. I mean, there's tons of them now. Um, and any one of those could be used to spoof, you know, the real trademark owner or the real company, um, get people to buy products that are not even that don't even exist. So, I would probably you know check that as the second item. And the third item is just make sure that you're aware of what's going on, you know, in the marketplace. Are there people that are using your um trademark on their products? Are there people that are you know using something that's similar to your trademark on a product or service? Um, and you know, if they are, then you should think about how you're going to stop them from using that name because it might be causing problems with your customers or prospective customers.

Shannon 54:58

There's so many, there's so many more to go here from what does it roughly trademark cost to what should people look for in hiring an attorney and where can people go to check and see if they're available. All questions I think that are best answered. Uh, you know, uh obviously you've taken the time here today to give people free advice. So, you know, uh we're promoting the episode as a way for people to reach out to you. And then, of course, you can discuss those prices with them. In closing, um, it ask a couple different things here. Let's get through those since we're just going with this model. We're uh normally I go uh just conversation for conversation, but I'm really liking what chat gave me here as an option. I feel like sometimes uh maybe I value these questions more than the questions I would even ask you. Um I think you've kind of given the advice on what some advice you would give for someone starting their brand from scratch. Um, what's something you wish more businesses understood about protecting what they're building?

Justin Clark 56:01

Yeah, so I wish they understood the value of their business. Um and there's value not only in the product you're selling now, but also what your product could become. Um a lot of companies they don't understand that products can scale. Um opportunities, licensing opportunities, or co-branding opportunities can arise. Um, and that matters from a trademark perspective because it'll really focus you in on what to protect. So maybe it is just a name or a logo, but maybe you should be thinking long term. Maybe you do have a very unique um kind of marketing, I guess, plan or platform that you're using, you're using different colors. Um you know, those are non-traditional trademarks. Maybe you're making a shed that's a particular color or you would like to, so people recognize them. Um uh really seeing that it's not just the product you're making, but it's how your customers find you. Um, I think that's one thing that I think companies should recognize and really sell themselves better at, if you know what I mean. Um, I think a lot of companies undersell what they're actually offering to their clients and how valuable their brand is. Uh it's not just trademarks aren't just about you know you as the company. They're about you know your customers and the transactions and the purchases that they make over and over. And each time they buy something and they have an experience with your product, they're having, you know, hopefully a positive experience that all builds over time. And that's you know, trademarks can be very, very valuable. They could be tens of millions of dollars. Um, in fact, the Twinkie name, I think a number of years ago when the original maker was uh going through bankruptcy, they were auctioning off just the Twinkie name itself, and it sold uh for 20 or 30 million dollars, just the name. Um, so yeah, names. Every time you know they start off as a small piece of your business potentially, you just think, well, I'm just putting them on the product. The product is the big ticket item because that's what the customers are buying. That's what you might think. But they're buying more than that, they're buying the experience with you, and that experience is encapsulated in the trademark or the logo or whatever you're putting on your product to help people find you as the as the seller of that product.

How To Reach Justin And Wrap-Up

Shannon 58:39

Man, if there's ever been an industry that is in the wheelhouse for the uh service that you provide, it is the shed and uh and post-frame and steel building industries, I believe. I've traveled around to 30 or so different states interviewing uh different shed manufacturers, haulers, and suppliers, sellers, and products, you know, providers and services to the industry. And it's just it's very needed. Uh and uh I think the most important question here is where can people connect with you if they want help or have any questions?

Justin Clark 59:14

Yeah, so uh best way to get in touch with me is email um jmc@ jclarklaw firm.com. Um, I post a lot on LinkedIn actually. Um that's a if you want to follow me on LinkedIn. I try to do a couple posts a week and they're very interesting stories. They're about trademark-centric stories, which most people find interesting because they're dealing with everyday products they use or um pop stars like Taylor Swift. So, uh they're interesting, but I also like to make them informative so you can kind of apply them to your business as well. Um, so yeah, emails great. Um, all of my social media accounts are posted on my website, jclarklawfirm.com, as well. Uh, so yeah, if anybody wants to reach out to me, love to have a conversation with you about trademarking, copywriting, and uh, you know, learn more about you. It's really you guys are the creatives out there. I'm just kind of your counselor, I'm an advisor. Um, you guys have all the great ideas. So, that's one of the great things too. I enjoy about talking with clients is they they're the idea powerhouses. Um, and they're what give me, you know, things to post about on LinkedIn. Uh, not about their business per se, but they might be, you know, the next uh multimillion dollar company that everybody's talking about, you know.

Shannon 1:00:43

So very good. And if you don't see it in the uh in our um uh newsletter, and if you don't subscribe to our newsletter, just let us know. Contact uh me at info@ shedgeek.com or Deanna D-E-A-N-N A @shedgeek.com. Uh give us your email address. We'll make sure to get you included in that. There's always uh different ways to connect with people in the industry from software designers, uh uh paint suppliers like our friends over at Pittsburgh. Um there's just a lot of information there, including blogs on the newsletter. So, you can go there, find out more about today's guest, read about it, but you can also just contact us over here at Shed Geek and we'll be more than happy to put you in touch with Justin. Uh Justin, thank you for being on the show today. Very, very educational show about uh a very much needed service that I know uh this industry uh uh would welcome and can use. And honestly, very educational for myself. Uh even having a trademark and copyright, there's so much more that I still have to learn. And really just trying to protect your intellectual property and figuring out how you can protect others as we market them in the in the industry, creating logos, creating these brand guidelines, and you know, hoping to get them in touch with someone to protect their digital assets right out of the gate, because uh an ounce of prevention is worth a pound of cure in this situation. And it's really nice to have this thing solved before you actually have to use it, and it scaves off a lot of unnecessary costs.

Justin Clark 1:02:16

Yeah, well, Shannon, it's great being with you. I appreciate the time and uh great conversation.

Shannon 1:02:22

Well, thank you. I appreciate it, Justin Clark. For anybody who wants to know, give us a call over here at Shed Geek. We'll put you in touch. Thank you so much, Justin. Thank you, Shannon.

OUTRO 1:02:32

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