Trademarks 101

If you’ve ever had that “what if someone takes my business name?” feeling, this episode is for you. I sat down with trademark attorney Sarah Waldbuesser of Destination Legal to cut through the legal jargon and get real about protecting your brand. We talk about what a trademark is (and isn’t), how to know when it’s time to get one, and how to avoid common mistakes that could cost you big down the road.

You’ll hear:

• The difference between trademarks, copyrights, and patents (without the law school headache)
• The “gut punch” test for knowing when it’s time to trademark
• How to avoid building your brand on land you don’t own
• What the trademark process really looks like (cost, timeline, and what to expect)
• Why DIY-ing your trademark could be a risky move
• How trademarks become valuable business assets you can sell

This episode is all about giving you the knowledge to protect what you’ve worked so hard to build. And if you’ve ever Franken-Contracted your way through the legal stuff… you’re in good company, and it’s time we seek professional help!

About Sarah: 

Sarah Waldbuesser, Esq., is a trademark attorney and owner of Destination Legal and TWIST Law. After several years at a law firm and a few career jumps, she ended up falling in love with online business and loves helping entrepreneurs achieve their dreams in a smart and protected way. She is also an adventurer, traveler, and food and wine lover. When not at her computer, she loves hanging with her 2 little kiddos, having wine with friends, flying around the globe and connecting with other online business owners.

Sarah’s Links: 

instagram.com/sarahwaldbuesser

destinationlegal.com

twistlaw.co

Learn more about BizMagic or the BizMagic Podcast.

Transcript

Patti: Welcome back to another episode of the Biz Magic Podcast, your place for all things tech in your online business with solid. So General Biz Chat two. My name is Patty Meyer and I am the CEO and founder of Biz Magic, where my team and I support entrepreneurs who are overwhelmed by the backend tech of their business.

We create, implement, and teach the tweaks that help our clients make a bigger impact with less stress. Today I am really excited to talk with our guest because we're diving into a topic that I know that I need to better understand and that I have pretty much avoided in my business, which I know is not a good thing, and that is trademarks.

So. Whether you've been in business for years or you're just starting to build your brand, protecting what you're creating is a really crucial part of setting yourself up for a long-term success and protecting your. Assets. So today we're breaking it all down with a trademark attorney named Sarah Buer of Destination Legal.

Sarah Buer Esquire is a trademark attorney and owner of Destination Legal and Twist. Law. After several years at a law firm and a few career jumps, she ended up falling in love with online business and loves helping entrepreneurs achieve their dreams in a smart and protected way. She is also an adventurer, traveler, and food and wine lover.

When not at her computer, she loves hanging with her two little kiddos, having wine with friends, flying around the globe and connecting with other online business owners. In this conversation today, we're gonna cover the basics of what a trademark is. When and how to file common mistakes to avoid and how to know whether DI ying it is enough or, uh, when it's time to bring in legal support.

So this episode is packed with practical advice for pretty much any online business owner looking to protect their brand in a smart way. So let's get into it. All right. Welcome to the podcast, Sarah. I'm so excited to chat with you today. Thanks so much for having me. Yeah. Um, can you start by telling me and the audience a little bit more about you?

I know I read a little bit about from your bio, but I'd love to hear kind of in your words how you kind of got into doing this and just a little bit about you. 

Sarah: Yeah, absolutely. So my name is Sarah. I am a trademark attorney and I own two businesses. One is a trademark law firm, the other is a legal shop for online coaches, business owners and service providers called Destination Legal.

And I've been doing this for almost 10 years now. And, you know, it, it, it is an interesting story because. I didn't like being a lawyer. Like I was a lawyer in Washington DCI was miserable outta law school. I went right into a firm and I realized within six months that I was like, no corner office for me, no partner track for me.

It was just not what I was interested in doing. So I had like a few career pivots and was in my supposed dream job where I got to travel a ton, travel's a huge passion of mine. Um, and I still wasn't happy and I was just like, why aren't I happy? I really. You know, this was, I was single, you know, now I have a husband and kids, but like at that time I was like, I just wanna travel, so how can I.

Work and travel. I started Googling and, and I found this podcast all about online businesses, and this was back in 2012 when this was just not even a thing yet. Yeah. And I started listening it to, uh, my commute from work to and from, and a few months into that, these two guys were like, Hey, anyone wanna come to an island on the Philippines and learn how to run an online business?

And I was like. Sure. I wanna, yes, please. Yeah, so I quit my job. I cashed in my 401k and haven't been back to a nine to five since. And you know, it's interesting, like I. My first business was called the Bootstrap Lawyer, and it didn't last long. I just, I didn't know what I was doing. I wasn't ready trying to run a virtual firm or, or legal business, you know, that long ago it wasn't a thing.

It was so new. How are we doing this? We have licenses and state laws, like how are we gonna make this work? Right? So I had a few pivots and had a drop ship store, and I did, you know. Digital marketing, consulting, things like that. But the more online business owners I met at this point, I had achieved my dream of being a digital nomad.

I was living in Thailand. The more people I met, once they found out I was an attorney, they were like. I need a contract, I need a privacy policy, I need a trademark. Can you help me? And so finally, almost 10 years ago, I just gave in and haven't looked back since. And I have actually loved it because it's not that I hated being a lawyer, it's that I hated being a lawyer at a law firm.

I actually really love what I do now because I get to help mostly women who are bringing these businesses to, you know, to life. And they are passionate for what they do. And I. Love helping them protect their passion, which is actually one of my trademarks. Protect your passion because you know, I think legal is one of these things that is so scary for a lot of business owners when they're just starting out and it doesn't need to be.

And so I feel like it's my mission kind of to change the story around legal and not make it scary, but make it empowering. And you know, once you have legal in place and have your contracts and your trademarks, you. Feel confident and that you can really, you know, just scale and grow your business from a really protected place.

So it's really been an exciting journey to see, you know, how the space has changed over the past many years and definitely the legal space has changed. When I first started Destination Legal, the template shop, there was like one other template shop I saw from a, an attorney, and now there's dozens, which is great because.

You know, 15 years ago if you wanted a contract for your coaching business, you would've probably had to hire an attorney for $5,000 and they wouldn't even know what an online coach was, right? So the fact that you can now buy a template written by an attorney for a couple hundred bucks is really awesome.

So that's kind of how, how we got here. 

Patti: Yeah, that is so amazing and it is something that is incredibly useful. And I know so many people who do exactly that. They go to lawyers' websites or like this template shops, and that's where they purchase a lot of their contracts because then they, at least we know that it's okay and like, okay.

Like, if we don't have the, the resources to hire a lawyer, we at least know, okay, this has been created by a lawyer. So at the very least, like my butt is basically covered, you know? Yes. 

Sarah: Not, not created, you know, by bot, no offense to ai, not created by, you know, what I would call a Franken contract, which is when people try to piece them together.

Patti: I don't what you're talking about. Never, ever. 

Sarah: Because you dunno what you dunno. Right. You don't know what you don't know. So, um, it is nice to have that resource these days for sure. 

Patti: Yeah. I love that franking contract. I a hundred percent have made franking contracts early in my business. Yeah. 'cause again, we don't know.

And I started in 2017 and was trying to figure out to make contracts then, and it still wasn't a point with online business where there, you know, online business really grew, grew. In more recent years. So even then it was like, well, how do I, okay, well I'm Googling contracts and online and I'm picking pieces.

And so I love that there's a lot of options out there that are, um, affordable, accessible, I think is maybe a better way to say that. So people, um, and it feels a little less intimidating. 'cause I think that's another thing. Sometimes the idea of working with a lawyer can feel really intimidating in a lot of ways.

Sarah: A hundred percent. A hundred percent. And so that's why I love, you know. When people tell me that, it's just like, oh, you're like a normal person and you don't sound like a lawyer. And I try, even my contracts, I try to make quite simple without all this legalese, messiness that, you know, I just, I think some lawyers just, you know.

Think very highly of themselves. Not that I don't, but there's this air of whatever. I think it's mm-hmm. That mostly exists in maybe the older male generation, but, um, I think it's, it's different these days. There's a lot of different looking lawyers and, and I, for 1:00 AM glad to see the industry changing.

Patti: Yeah. That's awesome. So, so as we talk about trademarking, can you kind of. Talk about the difference between what is a trademark versus copyright versus patent, and like how do we understand what all of this actually means and what is relevant for our online businesses? 

Sarah: Yeah, absolutely. So you just named the three types of intellectual property that exist in the world, and we can just cross out patents because it's very not relevant to us.

99.9% of us. Right. So patents are a way to protect an invention that you make. So they have like utility patents and other kind of patents. This is like if you made a software or you made. A new way to develop a straw or like something I, I can't even talk about it because it's the most complicated area of law.

Mm-hmm. Like patent attorneys are like engineers on the side. Right. It's just like a whole different kind of brain. Okay. Um, and, you know, typically not relevant to what we're doing, so we can just cross that off our list. But copyright and trademark very much are, and they're often confused because it's like, which is which.

Yeah. So I like to use. You know, one way to remember is that copyright protects your content. So cc, copyright content. Ah, copyright protects. Blog posts that you write, pictures you take, you know, signature courses, books, eBooks, songs, music, art, you know, basically anything that you're creating and putting out into the world is automatically protected by copyright, which means we as a society have decided once someone makes something, it's theirs.

Like, I can't take it. I can't steal it, I can't resell it, I can't slap my name on it. All of that. Now we know that. People do still unfortunately steal content and copyright and things, especially on the wild, wild west of the internet, but they're really not supposed to. So if somebody does take your content, you can send them a cease and desist letter for copyright infringement.

You can go to the website, ask them to take it down. You can also register your copyright with the government. And what that does is give you the extra step of being able to sue for copyright infringement if someone does seal your stuff. But you know, unlike trademark, which I definitely think is a really important business step, I only think registering copyright is necessary.

If you meet two criteria, one is. Your content is in final form, so your course is done. It's not changing at all. Your book is done. It's not changing at all because if you register the copyright and then add a chapter, it's nullified basically. And so that's why not everyone should do it, because we're all updating courses and content all the time.

And then number two, would you actually sue someone for copyright infringement, right? Are you actually gonna take that step? Now, if your whole business is a signature course and you know you are running it and that's your livelihood, then maybe you would like, maybe you would take the steps to do that.

Because what's nice about copyright infringement is damages are automatic. So if you can prove someone took your course, changed the name, and is selling it. Then you automatically will get money from, you know, the court will reward your damages. Now the thing that's tricky about copyright is it does have to be like exact, like 98% same.

Mm-hmm. So if they take your course and just like steal the outline and then create their own no dice, right? It, it has to be like. The exact same. So that's why it's, yeah, you know, often not worth it. And you know, I think when it comes to content, we just have to do our best to create our own. And you know, now we're getting into a very strange world with AI and, and copyright and content and all of that, and it's still rapidly developing.

The law is always behind technology. So there's cases right now figuring out what. To do with AI content and that kind of thing under copyright law. You know, as of now, if you create something on AI and don't make any changes, like you don't own it, copyright is only if a human actually creates it. So then the question is, well, what if you change it a little bit and how much do you need to change?

And so all of that is being worked out in the court. Oh my gosh, how messy. 

Patti: Yeah. 

Sarah: Yeah. It's super messy. Um. So, so that's content, you know, it's just good to be aware of that, um, or that's copyright. And so one thing to just keep in mind is that because copyright is automatic, you need to be really careful about, you know, this isn't so much an issue now, but using other people's images.

Like if you, if someone has, has registered the copyright for their image and, and you use it without, you know, you can have a copyright infringement claim end up on your doorstep. So just when you're using stock photos and licenses, just give it a read. Make sure you have the right permissions to do so because.

Ignorant in this case, ignorance of the law is no excuses. We say, if you're like, well, my VA gave me that photo, I didn't know. Like, sorry, you're, you're still to blame, so you're responsible. Yeah. It's your responsibility. Yeah. Something to be aware of. Yeah. So, yeah, so that's copyright. And so then trademark is what protects our brands, our brand names, our logos, our slogans, and so registering a trademark.

F Protects allows you to own your brand, so typically in the online space, that means owning your brand. Name, your podcast name, signature course name. Coaching package, service package, you know, whatever you're selling, you do have to be selling goods and services in order to register a trademark. So it can't just be like my free Facebook group or this phrase I like to use a lot.

It actually does have to be tied to something that you're selling. Mm-hmm. Um. And again, it, it allows you to own your brand and they exist so that people in the marketplace can distinguish who's making what goods and services. So when I walked down the street with a white cup in a green circle, like, you know, I was at Starbucks, it would be problematic.

If Duncan and Starbucks both had a white cup with green, like how would I know what, you know, what I was getting? And so that's why trademarks kind of exist. So to avoid confusion between consumers and there's, you know, 45 different classes of goods or services that exist. So most of ours in the online spaces, education, but then, you know, you have clothing and you have books and audios and you know, journals and e-commerce and legal and accounting and all of this stuff.

And you can have the same trademark. In two different classes. So a good example is like we have dove chocolate and we have Dove soap. Ah, those are both trademarked, but it's okay because if I'm like, I just had the best piece of dove after lunch, like, you know, hopefully you're not chugging body wash that I was not eating.

So. Soap, right? Like then we have a problem so they can, you can have two trademarks that exist as long as they're in different classes, that wouldn't cause confusion. You know, if I am registering something in health coaching and there's a competing one in business coaching that's like a finer line where that's really up to the trademark office, and trademark law is quite a gray area because the United States Patent and Trademark Office.

Is staffed by individual attorneys. Mm-hmm. Who if one is having a bad day, they might decide that your trademark is conflicting with another one. Even if the next day they might not, I'm, it's not quite that bad, but there, there are times where you're like, what is this person thinking? Um, so that's why, you know, it's often you wanna be working with an attorney that can kind of help you maneuver the path through that process.

Patti: Yeah. Okay. So, so at what point in somebody's business is it beneficial to move towards getting something trademarked? And you know, what is the trigger for that? Like, okay, I've had this course, or like in my case, right, so I've got my business, I've got my podcast, I have things that I do like at what point along the way should I have, or should I potentially start thinking about trademark?

Sarah: Yeah, so you can trademark it anytime in your business, even before you're selling something. Some people trademark to reserve the name for future use called Intent to use. It's a different type of application. The Kardashians do this all the time. They have like 800 trademarks for things they hope to sell in the next three to five years, right?

Um, some people wanna go ahead and trademark a. Or they even hit market to make sure that they own it and have the trademarks. So Sarah Blakely, you know, filed the application for SNY a year and a half before she ever went to market. So you can do it anytime, but I think the actual real reason is, is way more emotional.

And so there's really two kind of tests. Like one is, are you putting a lot of time, money, energy into this name? So that's one. And then two, maybe the more powerful one is something I call the gut punch test. So if we're talking about biz magic, you have it in your mind. If you got a cease and desist letter in your email box tomorrow, that said you had 10 days to rebrand, right?

Your entire business. Ouch. How would you feel? Yeah, if you get a gut punch. It's time to trademark. Right. It's an emotional, like, oh my God, I've invested years in this. Like, yeah, yes. I, I wanna own it so that nobody else can. Right. And if you're like, oh, well I was thinking about a rebrand anyway, then, then it's not.

And so I think the gut punch test is really the most powerful. Mm-hmm. It's really about how, how important is this name to you? You know, in my own story, like I. Trademarked, protect your Passion. Even before I trademarked Destination Legal, because I was more emotionally attached to protect your passion, I was like, I love this.

I want this name. And then eventually I did Destination Legal as well, but it was like I wasn't as emotionally attached. So I think, you know, it's just own, not owning a trademark is like building a brand on building a house on land you don't own. It could be taken at any time. So trademarks are really an offensive move because not only is it like I own my brand, but that means nobody else can.

Patti: Yeah. And 

Sarah: so as long as you don't own it, there's always that little fear of getting that cease and desist in your inbox and having to rebrand in the next two weeks. And it, it happens. I've seen it happen. It's really an unfortunate scenario. So, so that's kind of how to think about. Is it time? Anytime is fine and I think it's the time when you get, you know, either really emotionally attached to the name or when you're putting a good amount of marketing and branding and energetic dollars into it.

Patti: Yeah. Yeah, so, so what does it look like? So when I hear about trademarking, I hear that it's thousands of dollars and takes and can take years. So what realistically, and that may be accurate. So what does it look like when we look at sort of the time and the financial investment in trademarking in your business?

Sarah: Yeah, so that actually is pretty true. So it can take. Up to, I'd say eight to 12 months if there aren't any issues. So it didn't use to take that long. Ever since COVID and the online business boom, like it's taking a lot longer because they've been flooded with more applications and I don't think they have enough attorneys reviewing them.

So. It definitely can take eight to 12 months, and that's on a good day. If you run into an issue, if there's an office action, which basically means they're refusing the mark initially and you need to fight it, um, because they found confusion or they didn't like the specimen you submitted, or your class description was wrong, you know, for all of that, then you submit legal arguments.

You know, that's a step that an attorney has to do. Um, and sometimes you win those and sometimes you don't. But having those delays. A while and, and so that could mean it's more like 18 months. I have one I'm working on now that we've been doing for four years. Wow. 'cause it was suspended. Mm-hmm. Because there was another prior mark that they were working through.

So even though it can take that long, the date of filing the application. Start your legal protection. So like if I file tomorrow and you file three days from now, U-S-P-T-O won't even look at yours until mine is processed. So, you know, you can have some reassurance that once the application is filed, you know, your legal protection starts as far an investment, it can really range.

So you have some, you know, you can hire an attorney around a thousand to to 1500. Up to 5,000 7,500, right? And so it really depends on the attorney and the package and what's included. And so some of those on the cheaper end. You know, would baby file your application but then not do anything else? So they wouldn't respond to office actions.

They wouldn't, they just kind of leave it. This is what legal, this is what LegalZoom does. They just leave it. Um, and, you know, anything extra, they're stacking on fees right now, so like. You know, at Twist Law, my firm, we have a full service trademark package. It's 2,500 that includes everything. So it includes the class fee from U-S-P-T-O, it includes any and all office actions, everything from start to finish.

And so, you know, when you're thinking about this process, you just wanna kind of research, make sure to kind of ask those questions, well, what's included in the package and what if, you know, we do get an office action and there's two different kinds of office actions. One is. Easy to address and one's more complicated.

And so some attorneys will include the easy one, but not the complicated one, and then they rack on an extra fee for that. So, um, that's just something to keep in mind. But again, it can, it can range. And then, you know, if you're using a top 10 law firm in New York City, you're probably looking at 10 to 20 K for one.

Trademark or Correct. 

Patti: Right? Yeah. Right. And each trademark, so it is its own thing, so Right. If I were doing, I'm just using Biz Magics as an example. Yeah. This isn't like a one-on-one session. Yeah. But like if you know, I was doing Biz Magic, the Business Business and then Biz Magic, the podcast, those are two separate trademarks.

Right. That would go into two separate trademark packages? 

Sarah: No. So that would be one. Okay. Because it's the same name. And so that would be. One class of goods or services. So you know, you would be in the education class, which would cover your services, you know, podcast. It covers courses, membership coaching.

Oh, so all of that is in the education entertainment class. So that's one trademark. One, one class. Fee. Now, if you're like, I have my podcast and services, and then I'm also selling t-shirts, that's an additional class, so an additional class fee of another $350, but it's still the same application. I see. So you wouldn't have to like separate that out.

Okay. Now, if you had, you know, biz Magic and then Personal Magic, that's a different name. So that would be a separate application, right? 

Patti: So. Is it like everything that falls underneath and so let's say for example, right, a lot of company businesses have like their business, but then they have like a a, a signature course, right?

Is the signature course because it's under that business count, or is that its own trademark because it's own name and that sort of thing? 

Sarah: So if it's, if it's the same name, so like if my, if my business name is Destination Legal and then I have an online course called Destination Legal, that would all be one class.

Again, education. So that would be one application. Right. But if it was like I had Destination Legal is my business, and then my course was like, you know, destination trademark or something, that would be a separate application. Mm. Okay. Is that the question you're asking? Yes, that's exactly 

Patti: right. Yeah, yeah, yeah.

I'm just trying to make it clear for everyone of like, okay. When we say it's all under that umbrella. Yeah. But like there are things, 'cause I've seen people say, okay, oh, I've got a new program or a new course. So I've trademarked that because they have a bunch of trademarks that fall in their business because they're different things.

Sarah: Yeah. And so, you know, the caveat I think I see sometimes with clients is like. You know, I have Destination Legal course, and then I have the Destination Legal Mastermind, and then I have the Destination Legal Template shop. Do those all need to be different? They could be, but no, because what you could do is just say Destination Legal Trademark Mastermind course, you know, and those words, course Mastermind Academy, don't significantly change the trademark.

So you're protected. Yeah. If I have destination legal. And you come in and try to trademark Destination Legal Mastermind, it wouldn't fly because mastermind is not a word that's going to change the word enough to cause it to look like an entirely different trademark. 

Patti: Got it. Got it. Okay, so. Can you talk through like what types of things, like what does that process look like?

Right? If we're hiring somebody, what does that process look like? When we're trademarking, what kind of information do we need to have? What do we need to really think about to be prepared so that we have it move as fast as. They will allow it to move. Right on that? Yeah. 

Sarah: Yeah. So whenever you, you know, whether you decide to trademark or not, whenever you're naming your business or podcast or program or services, you wanna do a little due diligence on your own first, just to make sure that you're not diving in when you know another business has the registered trademark.

So first step is just to Google it, like, see who else is using it, see how they're using it. You know, if, if you, you Google it and see someone in your same industry with the r with the circle, that's a big red flag. If you, you know, someone came to me the other day, they're doing health coaching in Nevada and they found a restaurant in Texas.

That was the same. And I was like, do not worry that that's not an issue. Right, right, right. And so you just wanna see, kind of get an idea how it's being used. Go to social media again, just see like, is the handle available? Is someone using it a certain way? You can also go to uspto.gov. They have a free search engine where you can type in the name and see what other pending or, you know, uh, applications or registered trademarks are out there.

Now I caution people because. U-S-P-T-O doesn't just look for exact matches, it's also is there a likelihood of confusion? Meaning are, is it backwards and forwards? Does it look the same? Does it sound the same? You know, it's not, it's not just that black and white of like, oh, there's nothing with the exact same thing.

So I'm in the clear. And that's when an attorney, having an attorney is very useful in this process. So, you know, making sure from the beginning that there isn't gonna be. A conflicting mark. And so the way that we do this is we do a really comprehensive search of all pending registered trademarks, making sure there's no issues, and then we actually give our clients a scale based on our, our, you know, research, a legal opinion of whether this is gonna be successful.

And I, you know, do something very complicated with a stoplight, right? It's just red, yellow, green. If I do the search and it looks okay, we're green light, we're good to go. In all likelihood, this trademark will be granted if I find a few. Potential issues. Like there's, there's another registered mark. It's not in the same class, but it's similar and this word is a little bit different.

We're like at a yellow. And so at that point, it's up to the business owner to decide the risk that they want to take or not. You know, some people are like yellow, like let's go for it. 'cause we can always argue, you know, why it's different. Um, but if there are two significant issue, you know, if it, there's an exact match or too similar and it's a red.

I'm not filing, I'm not wasting your money. I'm not wasting your time or my time. If there's no chance, we're not gonna do it. And at that point, I work with clients. How can we slightly modify the name? Can we add another word? Like how can we distinguish between it to make it go from a red to a yellow or a green?

And so when you apply, you know, you show. You have to show how you're using it in the marketplace. So you know, if you are doing a podcast, you have to show the podcast on Spotify. If you are doing a, a coaching package, you know, we need to submit a snapshot of your coaching package. Basically, what they're looking for is, is this out in the marketplace?

You know, podcasts, like people can advertise on them. They're doing marketing for you, for a coaching package. Can someone buy it? Can someone talk to you about it? Um, that kind of thing. So you submit that evidence. And then another big piece is working through the class description, which we've talked a little bit about.

What are you selling now? What are you planning to sell potentially if you're doing intent to use, how are we describing this? And that can be really important because you wanna be as broad, so you get the most protection, but also narrow enough that U-S-P-T-O isn't like, you know, you're saying you're doing this, but really you're only doing this.

So it's kind of like a fine line to get the best protection that you can, and you know, you have to. Describe your class in a certain way. There's a whole system that they use of, of wording, and they can be so nitpicky. Like sometimes they come back with these things and it's like, this is, you know, you used the word consider in here and you should like crazy stuff.

Wow. Um, so, you know, once you, your specimen, your class description and then basic business information is, is all that you need. So whether. You know, you can own a trademark as a sole proprietor. You can own a trademark as an LLC, um, you know, or a corp depending on what your business entity is. And then, you know, you file and then you just wait.

Patti: Hmm. So a lot of it's waiting. 

Sarah: A lot of it is waiting. Once it's done, a lot of it is waiting. Right. 

Patti: So when it comes to like right, a lot of people out there, let's say they don't have the financial resources or they're just sort of like. I can do this by myself, like realistically. What does it look like to do it on your own to like DIY, the process?

Or are you like, Hmm, really it's worth it to have a lawyer do this, you know, what does that, what does that look like? 

Sarah: Yeah. I mean, obviously I do think it's worth it to have a lawyer do this. Um, people certainly try, I think it's like over 60% of people that try on their own, don't they fail? Hmm. What's, what's hard for me to see is they fail, but they didn't have to.

Like people will come to me like, I tried this on my own and this is what happened. And it's like, if you were an attorney, this would've been an easy fix. Like easy fix. And so, you know, this is like. I don't fix my own toilets. I can try, right? I don't do my own plumbing. I can try, but I didn't go to school for that.

Right? And so it's almost like one of those things where it's like, stay in your own lane. This isn't your area. Right? Um, so you can certainly try to do the initial application and hope for the best. People do succeed, but if you get an office action, you will not be able to respond to that without a legal education.

It's just, you're, it's basically you're writing a legal brief, you're citing case law. You're making these arguments like, you know, so, so at that point you would have to hire an attorney if you wanted to continue on the process. So, you know, and some people have come to me at that point. They're like, I did it.

This is what they said to me. Now I don't know what to do. Right. Can I hire you? 

Patti: Right. You know, it's kind of like using your analogy of like, you can watch a general YouTube video to fix a toilet and you can start, but as soon as you hit a problem, you're like, well, I don't know actually how to troubleshoot this at this point.

I've reached the end of my ability based on these basic instructions. 

Sarah: Exactly. And it's like at that point. What's gonna cost you more, right? Like the time that you put into that, then you have to pay a lawyer anyway. So it's that kind of thing, you know? Um, there, it's, it's not that the, the process is so difficult that you couldn't learn some things from a, a few videos.

You certainly can. There's just certain nuances. Yeah, that you wouldn't ever know unless you've been doing this for a long time and seen hundreds and hundreds of applications. So yeah, so that's kind of, that's, that's kind of the answer I have is it's like you can try, but then it's like. How important is it to you to, to have it and to own your brand?

Patti: Yeah, yeah. Absolutely. So are there any, like, as people come to you or you hear stories anecdotally or, or anything like that, are there any common mistakes that you hear about entrepreneurs making when they're moving into train, barking, anything in their business? 

Sarah: Well, I would say two. One is just waiting too long because I have so many people come to me and they're like years later, and then someone just trademarked it like six months ago, right?

So I would say waiting too long and then being really disappointed and upset. Or worse, like going through a huge rebrand, you know, and then deciding to trademark, realizing that it's actually already taken and you can't use it. Yeah. And so then you're like forced into a rebrand and so that's no fun.

Yeah. Um, the other is, and I'm guilty of this, is once you, you know, trademarking is kind of fun. Once you start to own your name, you're like, oh, well I wanna own this and I wanna do that. Like, I think I'm on my like. Fifth right now. And you know, one of them, like, I just, I never did anything with it. And so it's like, you know, I do have clients that like, get a little trigger happy and then don't end up using the trademark.

And so at that point it is kind of a way. So I would just like, you wanna, you know, be certain that this is something that's gonna be used in your business, at least for the next 3, 5, 7 years. 

Patti: Yeah. Um, and so what are the costs, like if you are doing it by yourself, what is the cost to actually file a trademark?

Because I mean, if you're doing, you know, five trademarks, assuming, I mean, you could be rolling in thousands of dollars all the time. Yeah. I don't know, but like, what does that look like? 

Sarah: Yeah, so the cost to actually file the application is based on the number of classes, and so each class is $350. So if you're just doing one class, it's $350 if you're doing two, 700, and so on and so forth.

And so that is, if it's an initial normal application, if you're filing an intent to use, which means you're reserving the name. You have the initial fee, and then there's another smaller fee when you decide to file what's called a statement of use, which means you're now using it. Mm-hmm. And so then you have to file that before it will register, or you, this is getting a little bit complicated, but you can file a series of extensions and all those have fees as well.

Um, so it really depends on which type of application and then how many classes that you have. 

Patti: Yeah, so when you're looking for a trademark lawyer, you mentioned really pay attention to their packages, pay attention to, you know, what's included in that. What else do we need to be thinking about before we hire somebody?

Like I know in certain cases you need to make sure that they can practice in certain states and things like that. Is that true with trademarking or what? What are the things we need to look at? 

Sarah: Yeah, great question. So it's not true with trademark 'cause it's federal, so you can, you can hire an attorney from any state, they can be in any state.

So like, I'm actually licensed in Washington, DC you know, I currently live in Wisconsin, but last year I was living in Thailand. Right. So it's like, it's, it's, it's, that's one reason that it makes having a virtual trademark practice so great is that there aren't any state issues. Um, what I would really look at is, is this their primary.

Occupation. So I've seen lawyers that are trademark lawyers, real estate lawyers, criminal defense lawyers, you know, like, right, all of them. And so I think you, you know, you want someone that really focuses on this area. So just someone whose primary practice is like business and trademark law, and then, you know, you're probably good, you.

Be like, who are your main clients? Right? If I spend all my time, you know, trademarking apparel and someone comes to me with a podcast, you know, I'd probably be able to figure it out. Um, but you know, someone that's kind of in your space and industry works with a lot of those clients would probably know some of the nuances, um, that that might be needed to be, to be aware of.

So, you know, I primarily do. Online, but, you know, I've done a restaurant, I just did a, a vodka brand. I've done solar lights. Right. Like I've, I've spun the gamut, but I'd say 80% of my clients are in the online space. 

Patti: Okay. Got it. Um, this is super fascinating and super helpful. Is there anything else that I haven't asked you or tips or anything that you wanna share that has, that you haven't yet been able to share about this process?

Sarah: Yeah, I mean, I think just keeping in mind that a trademark is an actual like business asset that, that you can sell, you can trade, you can buy, right? Mm-hmm. If you know, if, if selling your businesses anywhere in your plan, like you need to have the trademark, right? Like a buyer, that's the first thing the buyer's gonna be like, is this trademark?

Do we own this? So, you know, I would. Just to keep that in mind and then, you know, a trademark is never guaranteed. I can't guarantee it. Another attorney can't guarantee it. So, you know, doing a lot of these steps early on in the process, making sure it's available and there aren't any, you know, real issues can, can help save you time and money.

I've seen people file for clear trademarks where there's already a registered trademark the exact same, and they just didn't know to look right. And so, um, just making sure, I think listening to this, you probably have a, a few things on your list to do now in your own business to make sure that, that you're doing and so you're gonna be ahead of the game, um, in certain aspects for sure.

Patti: Yeah. I love it. That's so great. So, um, because I'm a, I'm a tech person and I love tech, do you have, and it can be related to your trademark work or not, but do you have a favorite tool that you use in your business? 

Sarah: Gosh, I mean, this is gonna be so cliche, but right now I'm kind of loving chat GPT, I'm not gonna lie.

I mean, you know, it's, it's been really an interesting learning process. Um, otherwise I did just make the switch to a go high level platform where is, previously I had been on many, many others. You know, stringing them all together. Yeah. Um, so it has been nice to kind of be more streamlined, which I know isn't a fit for everyone, but, um, I've trying to simplify things in my life and that has helped.

Patti: Yeah, that's great for some people. It's great. It's great option. Yeah. That's awesome. Well, thank you so much. This has been so amazing. If anybody wants to work with you to trademark their business, um, or business name or anything in their business or. Follow you or anything like that? Tell us how we can find you.

Sarah: Yeah, absolutely. So Twist law.co is my trademark law firm. You can find me on Instagram at Sarah Wall Buser, and then if you're interested in any of the legal contract templates or bundles that we have, that's at destination legal.com. 

Patti: Awesome. And I'll share all of this in the show notes as well. And, uh, this was so awesome.

Thank you. Yeah, thanks for having me. Thank you for listening to another episode of the Biz Magic Podcast. Like most small businesses and podcasts, we rely heavily on word of mouth. So if you like what you heard today or in any episode, please share with your friends and colleagues. And rate, subscribe and comment on your favorite podcast platform.

Till next time, cheers to your magical biz success.