Your Grey Matter Matters: Protect and Monetize Your Intellectual Property

Welcome to Your Business, Accelerated! Digitally remastered with AI, Your Business, Accelerated! is the go-to podcast for entrepreneurs ready to scale smart. Hosted by Attorney Shaune B. Arnold, it delivers strategic business insights, legal frameworks, and real-world solutions to help you operate with clarity and confidence. Get actionable guidance to protect, grow, and optimize your business—one smart move at a time.

In this episode of Your Business, Accelerated!, Attorney Shaune unpacks the essentials of protecting your intellectual property—trademarks, copyrights, patents, and more. Learn how to safeguard your creations, avoid costly mistakes, and leverage IP to generate residual income and long-term value. A must-listen for every serious entrepreneur. 

Transcript

Hello, everyone. And welcome to Your Business, Accelerated! I’m your host, attorney Shaune B. Arnold. This is a podcast series where we are covering a number of business issues that are the type of business issues that I get a lot of questions about from clients.  

Tonight, we visit the topic of your grey matter matters. This discussion will show you how to create residual income by utilizing copyrights, trademarks and patents to protect your rights, enlighten the public, and license your intellectual property to others. That is what we are going to discuss this evening. I'm very excited about that. Tonight, we're talking about developing and protecting your intellectual property. Next week, it will be something else.

This is a very exciting topic for me, I do not do patent law because those tend to patent attorneys tend to also have engineering degrees, or they're also physicians or RNs or something that's very, very eggheaded.

In addition to being an attorney, I am none of those eggheaded things. I am a simple Egghead, just an attorney, a California attorney. I’m a former Series 7, Series 65, Series 63 and California Insurance licensed. That’s technical speak for I was a stockbroker, or financial advisor. These days, I practice law in Los Angeles. I have business clients who are basically spread out all over the country and quite a few in foreign countries.  

I recently received an email where someone said, “I am considering getting a trademark for the name of a group of solutions to problems that customers in my niche face. The trademark cost, however, is prohibitive. At present, I will be launching my website soon and the name of the group of solutions will then be made public. Is there another way to protect myself against competitors using the name for my solutions as their own name?” Also, Karen asks, “Is it illegal to use the TM symbol before I actually register the trademark?” 

Well, there are a number of things in operation here that I want to make sure that we touch on for Karen. If you are experiencing budget crunches and you want to register your intellectual property, here are some things that I think may help you curb your costs.

Be sure to start with just one classification of goods and services. That will streamline your application. There are some other things Karen can do to maximize protection and minimize costs. She can actually file her trademark application on her own, and that would also help her maintain her budget. 

I would suggest that if she's really budgeting tightly, that she might want to start with business cards and letterhead as her very first classification of goods and services. That is going to allow Karen to do business without incurring a lot of expense for trademark registration.

Now, Karen does need to be prepared to give specimens to the USPTO, and specimens are just samples of the mark being actually used in the marketplace. So, for Karen's solutions? Well, it's kind of hard to tell from her email what she means by solutions. Are they going to be software solutions? Are they going to be business process solutions? There are some things in business that are trademarkable and some things that are not. 

At this time the business is trademarking certain business processes that can show themselves to be new, useful, novel and unique. Those processes adhere to certain other standards that the Patent Office requires. It is possible that she may be able to patent her solutions. Now, the trademark that she's actually asking about would really go more to Karen's logo and her tagline. For example, you heard me say my tagline earlier this evening, and that is, I encourage you to MAXIMIZE your COMPETENCE to get the CONFIDENCE YOU NEED to succeed.  

If the solution that Karen is presenting do come with a tagline attached, then she will want to look at separately, trademarking the tagline as well as potentially trademarking the solutions. Again, the email that Karen sent to me is a little bit vague as to what she means by solutions. 

So, it's an assumption on my part that we are talking about a group of solutions that are trademarkable. So, and Karen actually asked me another question. She inquired as to whether it’s illegal to use the TM symbol before she actually registers the trademark? 

Now, the point of the TM symbol is that you have actually filed an application for trademark, so you don't want to use that TM designation, unless you have a pending application. Remember, the entire point of the trademark application is to give notice to the world that you have this trademark that you're using in commerce. So, you don't want to pull any punches with that. You don't want to go to the marketplace with a mark and then change it, and you don't want to tell the world that you have a trademark application pending when you don't. For this reason, while it’s not strictly illegal to use the symbol before you actually register the trademark, it is definitely not something that I would do. 

In fact, I would have to do some more research for you, Karen to know whether the term illegal is actually a proper term to describe using that symbol before you actually register the trademark. But I do know that it's not proper, and you want to avoid the appearance of impropriety, and so the trademark that TM symbol is actually to be used for marks that have been filed with the trademark office when your application is pending. I would not use it unless you actually file the application. Now mind you, filing your application for trademark is not the same thing as registering your trademark. You have to go through the entire 12 to 18 month application process before you can actually say that your trademark is registered.  

Let's talk about what it takes to properly develop intellectual property. in general. I guess the first question that we really need to ask is, what is intellectual property? Well, folks, intellectual property is the invention, the process and/or the product that results from your creative talent. 

In the case of Karen, this evening, we were talking about her business solutions, and those are processes. Intellectual property might include copyrights, trademarks, and patents. A company may also have trade secrets, but they are not registered. As such, they need to be very closely guarded. 

You may be wondering what kind of things can generally be trademarked. Well, if we think about Karen and the new company that she's getting ready to launch, if she has a logo for her company, that logo can certainly be trademarked. And if she has any taglines for the processes that she's bringing to the marketplace, those taglines can also be trademarked, and her packaging and design. Karen is going to want to trademark those things. If her solutions have a certain look and feel, she's going to want to trademark them.

What then is involved in the trademarking process? It is a fairly simple process where you go to the United States Patent and Trademark Office and you complete and submit the application. The best way to complete and submit that application is online. You would also submit your specimens online, so make sure that any specimen that you have that shows the trademark actually being used in commerce.

Once you upload your application and submit your specimen, in about six months, your application is going to get assigned to an examining attorney. Your examining attorney is going to review your application. They're going to review it for completeness and correctness, and they're going to review it to see if it possibly infringes on another mark that's already in commerce, and they may require you to make changes or corrections to your application or mark. 

If the examining attorney accepts your application, they will publish the mark for thirty days in the Gazette. If no one objects, your trademark will issue. If someone objects, then you enter into litigation over who gets to own the mark within the USPTO. 

So, what are some of the common mistakes that people make when applying for a trademark? And Karen, I want you to pay particular attention to these if you're not going to use an attorney to help you with your with your trademark application. 

I would suggest that you talk to some attorneys and see if you can find one that will do an a project fee with you, and that way you can actually have somebody who is experienced and knows what they're doing and yet still saves some money too. Some of the common mistakes that people make when they are applying for a trademark include making changes after your application has been submitted and not having any trademarks on the books except actual series of books.

So if you're planning to create a series of books, you're not going to actually be able to trademark that series of books until the second book is in existence. And another common mistake that people make when they're applying for a trademark includes failing to file for the proper goods and services categories. 

You heard me mention that Karen can streamline her costs by using business cards and letterhead as her initial classification of goods and services. And that's a very good idea for her to do, but she needs to make sure that she doesn't then go out and create a bunch of T-shirts, because T-shirts are a separate classification of goods and services. So, she wants to be very sure that whatever trademark she files her actual use in the marketplace supports that filing.

And then, of course, you always want to make sure that you meet all of your statutory deadlines. Because if you don't, it can be fatal to your application. In some cases, you can actually revive a dead application, but why go through that? That costs some money and it's a lot of hassle and a lot of stress. So, what happens then, if someone then infringes on your trademark?   

If someone does actually infringe on your trademark, we would send a cease and desist letter to them. If you have not registered your trademark, then it doesn't make any sense to send someone a cease and desist letter, because they have no way of knowing that you are functioning in the marketplace under that trademark so be very careful in that respect,

if someone sues You or if you sue someone else for trademark infringement, then you can get the court to expunge the profits that they made. And sometimes you can get punitive damages if the if the infringement was blatant enough. 

And you really, really, really want to make sure, however, that once you file that trademark application, that you zealously defend your intellectual property worldwide. Because if you fail to zealously defend your intellectual property, and somebody is out there infringing on it, and you know about it, and you're not doing anything about it, then you just might forfeit your rights to do anything about it at all. 

So those folks are some of the major issues that you would run into when filing a trademark application. I really want to thank Karen for sending in that email that got us started on Your Business, Accelerated! 

Ladies and gentlemen, I also want to thank you for joining me today on this week’s episode of Your Business, Accelerated! I’m attorney Shaune B. Arnold. I invite you to follow me on Facebook, LinkedIn and Twitter X. In all of those places, I’m known as S.H.A.U.N.E dot Arnold.

In the meantime, and in between time, I am, …as always, reminding you to MAXIMIZE your COMPETENCE to get the CONFIDENCE YOU NEED to succeed.

I’ll see you right back here next week, on Your Business, Accelerated! Bye-bye, friends.