3 Trademark Tips with Katelin Kennedy
Branding with Friends | Episode 17
Featuring Expert Guest: Katelin Kennedy, Business Lawyer and Owner of Brevity Legal
Watch or listen to the video interview below or scroll down to read the transcription.
Meet Katelin Kennedy, Business Lawyer and Trademark Expert
Annie: Today I am super excited to introduce you to one of my friends in the business world. If you have been curious about trademarking something, whether that's the name of your business, the name of your program, or your offer, and you want to make sure that that's something you can use in perpetuity. You're going to love today's episode and my guest. My guest today is the incredible Katelin Kennedy. Katelin is a business lawyer and the owner of Brevity Legal.
She started Brevity Legal to make legal, less intimidating, and less painful for startups and small businesses. She genuinely enjoys demystifying contracts and trademarks and tackling all the other legal stuff. But her absolute favorite pastime is bragging about her true crime legend dad. Katelin, thank you so much for being here.
Katelin: Thanks so much for having me, Annie.
Annie: Absolutely. And whether you're new to Branding with Friends or not, I want to remind you that today, Katelin is going to share with us three incredible tips about how to take action on trademarks, and how trademarks relate to branding. So as you know, we're going to sort of go through the first two tips. And then we're going to save that third tip for the end. So make sure you stay all the way to the end so you can hear how you can connect with Katelin and that special little nugget of truth that I know you're going to share with us.
Katelin, you and I recently connected just a few months ago, and I've had such a joyful time getting to know you. And she really does demystify the legal stuff, as you say. So many people asked me this question because I am a branding, strategist, and consultant. And I'm usually creating branding for people, including hopefully naming their business or writing their taglines. And I get this question about, well, can I trademark this? And you know, what is a trademark? And, you know, I always say, well, I'm not a lawyer, I speak to the things that I know. And I always take that to heart because I have trademark my own name Greatest Story Creative. But can you just for sake of argument, kind of tell us, what is a trademark and when and why would you register one?
Katelin: The most common thing that you're going to think of as a trademark is a business name in and the definition of it is a source identifier. So a trademark is something that identifies your goods and services and distinguishes them from the goods and services of others. So, you know, Nike, obviously, is one that comes to mind, the Nike swoosh, which is not a word, but it's a logo. That can also be a trademark. And then there are a few other things that are like really interesting trademarks, like, the Tiffany color, that blue color can be a trademark, because when you see the blue box, you automatically think, oh, it's Tiffany jewelry. Because it's been so associated with Tiffany and their brand for so long. That it's it's basically an identifier that distinguishes your brand from other brands,
Annie: It is something that I was very surprised to learn many years ago when I was learning about trademarks, in the context of branding was this idea that, as I understand that trademarks are not so much about kind of protecting your genius idea so much is it's about allaying confusion from the general public.
So could you also talk about that side of trademarks that it's not necessarily about your, your genius, so much as it is making sure that the public can distinguish your goods and services from someone else's?
Katelin: Right, that's actually a really good analogy, the allaying confusion thing that you just said, is really perfect. Because the key is, you know, you don't want to pick a trademark, (and this kind of gets into our first point), you don't want to pick a trademark that's not going to be recognizable, or that's going to be confused with other trademarks or other companies. So, you know, if you wanted to do delivery service because you know, everyone's getting everything delivered right now with the changes in the world. But if you wanted to do a delivery service and call it Star Brews, consumers might be I mean, what do you think of immediately when I say Star Brews? Starbucks, right? Right. And so even if you are not if you're not selling coffee, the delivery service is in what's called a different class. And that's kind of a side point there. trademarks are classified in one of I think, 44 or 45 classes based on like what is covered so, and that's kind of explains why you can have delta faucets and Delta Airlines.
Annie: Or Dove Soap and Dove Chocolate?
Katelin: Because consumers, you know, it's based on what is the lane of your goods and services? And then what are the differences in the marks. And that will get a little bit more into that in, in my second point, but the distinctiveness is really important. And I know that helps make your brand more memorable. If you have a really distinctive mark.
Annie: One of the things one of the big action tips that I know you wanted to start us off with. So the first tip for today is what is the first thing as a service business that we need to keep in mind about trademarking?
#1 Action TIP
Get Creative
Katelin: I think for branding professionals like yourself, sometimes, and for anyone, it's hard, because you want to think of the name, that's going to be good for SEO purposes. But a name that's going to be good for SEO purposes might not be as strong of a trademark name. Because if it's generic or descriptive, you cannot register it. And you can't protect it as much as you can if it's arbitrary or fanciful. And I'll give you an example of each of those. So a generic mark would be Bike Shop for a store that literally sells bikes. That's totally generic is there's nothing distinctive about it. It just identifies exactly what they're doing. A descriptive mark is similar to a generic mark, but it would be something that includes a descriptive element. So, of course, I'm blanking on an example right now, but like, Sam's Ice Cream, okay, well, that's kind of, it's a step up from just being Ice Cream Shop.
But, you know, it's really still kind of a descriptive mark, there's nothing very distinguishable about it. Whereas an arbitrary mark is a word that's totally made up. So Roku, or Hulu.
A fanciful mark is totally made up an arbitrary mark is something that is completely, like, unexpected for what the goods and services are. So think Apple before everyone knew Apple, as you know, computers and phones, when you see Apple, like, it doesn't make you think about computers and phones before Apple got big.
Annie: Or it's like you took that bike shop analogy, but it was like Bike Shop for like a stationary company. Right?
Katelin: That would be arbitrary.
And so the arbitrary and fanciful marks are really stronger trademarks. And of course, the downside there is, you know, your SEO might not be as natural or organic. You know, and you might have to, until you acquire that brand notoriety, you might have to kind of like, tell the story behind it or explain, you know, why you chose a specific name, my name my law firm Brevity. And, you know, that is an example of an arbitrary mark, because when you see the word brevity, you don't think of a law, I definitely don't think of a lawyer. But it's not like a typical word that's associated with law firms. It's usually like their last names. And so something like that's really going to give you stronger brand notoriety and a stronger trademark that's more enforceable and easier to protect against potential infringers and, and really set your brand apart from others as well.
Annie: Right. And I think that that's, you know, I think you've hit on something where branding becomes really important in you know, concert, working with a lawyer or getting creative, one. But then also, if you pick something that is so fanciful, or creative, being able to sort of explain that more, and being able to tell the story, because if it doesn't speak for itself, in sort of an SEO or basic way, then you have to speak for it to build up the reputation of what you're trying to create. So I love that's where we started. What is the second thing that we really need to keep in mind as service business owners?
#2 ACTION TIP
The Scope of Potential Conflicts is Bigger Than You Might Expect
Katelin: This scope of potential conflicts is very important, and it's much bigger than you might expect. A lot of times people will come to me and say, I searched on the USPTO website, and I didn't find anything identical. So I think I'm good to go with this name. And unfortunately, it's not quite that easy. So if I were to do a trademark search, I would look beyond just the USPTO website. But let's start with the USPTO website. What people are describing when they say I didn't see anything that was identical is what's called a direct hit conflict. And you cannot register a mark that is likely to cause consumer confusion, we've kind of hit on that. But if consumers would think that your goods and services are coming from the same source as goods and services represented by a similar mark, you're going to have a really hard time getting your mark registered. So that's kind of the Star Brews example there. Star Brews, is never really going to fly.
Annie Because it's, even though it's not a direct hit. Exactly.
Katelin: There's one that I can think of where I was doing a search for a client, and this is I'm not disclosing any client information here. I just sort of happened upon this when I was doing another search. I was searching in class five, which covers goods involving dietary supplements. And I found an application for Mermaid Latte in that. And I'm going to make sure I don't misquote this. But in that search, or in that application, when you submit an application, the examiner like reviews it and looks at the field of other marks that are registered. And if there's another mark that they see that is similar to your mark, in connotation, in how it looks aesthetically, in sound. And the goods and services that you want to cover are similar to the goods and services that are covered by that similar mark. There's going to be what's called a likelihood of confusion issue. I'm pulling this up. So this in this example, I found an application for Mermaid Latte. The examiner in the Mermaid Latte application responded that the following other marks were likely conflicts and so the mermaid latte application was rejected because of the existence of Rowdy Mermaid which obviously sounds very different than Mermaid Latte, La Sirène, Rowdy Mermaid Kombucha, Mermaid Lemonades, and Maiko Mermaids. Maiko Mermaids to me like, that one's the almost the most different because mermaids is not even the first word in that one. And so that just kind of gives you an example of like, if there's nothing out there and you're trying to get Mermaid Latte, you might do a search and find that Mermaid Latte is not registered. But the scope of what we need to look at is a lot bigger than that.
Because it's about consumer impression. And so what I like to tell people is if consumers might think that this other existing brand, just did like a spin-off product or a spin-off service, then that is where you kind of have a problem. And so you want to think about like, what's the consumer impression behind this one compared to this? And if there's some subjectivity in it, there's no way of getting around the subjectivity. But, you know, and we also want to look beyond just the USPTO website.This is kind of, from the legal perspective, and from a business and branding perspective, can you get the social media handles that you want? Or does somebody have them? Can you get the domain names that would go with this? Or does someone have them like, and if, if those are already taken, that's another indication that you might be there might be a potential conflict, even if it's not yet registered. Because it doesn't have to be registered to be a potential conflict, either.
Annie: That was an eye-opening point, it doesn't have to be registered to be a reason why there could be confusion, and that someone could kind of speak up basically if you apply for the trademark say, “Well, actually, I've been using this for five to 10 years. And you can't, you know, tread on my, on my land here.”
We talked a little bit about, what a trademark is, we've talked about the advantages to picking something that is more fanciful or arbitrary versus something that's sort of descriptive, in sort of that realm, and now we're talking about this idea of that there can be more complex than you realize that just typing something into Google looking for the domain doesn't mean you're in the free and clear, but could you talk about sort of, I know I've worked with clients. I work with clients who've trademark things. I work with clients don't. Many people sort of want to get started on using their branding, kind of feel it out. And I totally get that I myself didn't trademark my name for three years. When I did trademark Greatest Story Creative, which is a federally Registered Trademark, I did it because I never wanted somebody to knock on my door and say you have to change the name of your business. Can you talk to us a little bit, you know, kind of in basic language about why, even if we're not, you know, maybe married to something or totally in love with it or not sure why should someone go through a trademark process? What are the benefits of doing it? And what are the possible risks if we don't do it?
Katelin: Sure, there are quite a few benefits. So the first one that you mentioned is obviously, trademark rights begin based on the use of a mark in the public realm to sell goods and services. If you start using a mark that you don't get cleared, which we'll talk about later, or you don't get registered, someone can come behind you, and possibly get that trademark, because when you apply for federal registration, they only look at what's been applied for or registered on the federal level. But like we just said, it doesn't mean there are not potential conflicts out there that are just kind of flying under the radar for a while. And if those people file an application, and they can prove they were using it before yours, like they're gonna win. But, you know, the benefit to going ahead and getting it done is you get that exclusivity. So if you get yours registered, and then someone comes behind you, and tries to register theirs, they're going to have like, they're going to be blocked or have a really hard time.
And so it gives you like some peace of mind about your ability to keep using it. And if you get it registered and someone has been flying under the radar, like it's not, they're gonna have to go jump through some hoops to be able to get it canceled and prove that they were using it first. And if they just send you a cease and desist, and they don't have it registered, and they say, hey, we've been using this for five years, but you know, and you look, and they don't have it registered and yours is registered, it's a lot easier to respond to that cease and desist and, and tell them like, you know, I have federal trademark rights to this. And if you want to challenge it, you can use the proper, method to do so.
Annie: So it sounds like it's a big piece of mind. So if you're gonna go build up a coaching Empire consulting empire, or, you know, just want to you really love what you're doing in your practice. And again, you don't know when someone to knock on your door and say, actually, you need to completely change everything. This could be worthwhile, right?
Katelin: And there's a couple of other benefits. If your mark is registered for goods, you can register it with the US Customs Service and prevent counterfeit goods from getting into the country. This is really huge for people who are selling goods, you can use it as an asset for licensing. So, you know, if you are selling, you know, teddy bears and you have this like wonderfully branded teddy bear and Kohl's or, you know, Walmart says, Hey, we want to make those and sell them that you can license the mark to them and make money off of it. So it is a business asset as well.
Annie: Yeah, I think that's a really great point. It adds it's, it's about formalizing assets. And when you ever service-based businesses, many people who watch Branding with Friends are, it can feel hard, you don't have like tangible inventory. But having a trademark is an asset to the business, which, you know, so eye-opening for me. So we've been talking a lot about why trademark is and we got to get creative about it, that we've definitely got to be much more aware of the sources. I'm sure more people are going to have questions about trademarking. So, what would be the, you know, before we get to our last tip of the day, which I know is a really, really good one. What is the best way to get in touch with you, Katelin?
Don’t miss this special opportunity for “Branding with Friends” fans…
book a free consult with Katelin at Brevity Legal.
Katelin: My website is brevitylegal.com. And I've got I will do free consults, especially for Branding with Friends, friends. So there's a request to consult button on the top right. And you can reach out to me there and I'd be happy to set up a call and talk about getting some trademarks solidified.
Annie: Excellent. So wherever you're listening to this, or you're watching this, there's going to be a link to Katelin’s website and I encourage you to check her out. She really does take a lot of the pain out of the legal stuff, which unfortunately is part of our lives as business owners. But as we've been talking about today, there's great opportunity there as well. You know, before we get to that, that third tip, I do just want to say like you know, it is Branding with Friends branding interacts with topics and different way, but this is a big one. Trademarking is a big deal.
I think if you don't know how to kind of come up with something that you think could possibly be free from conflict, you want to work with a branding professional to help you get that creative edge to have something bigger to work with. And you can take some of that brainstorming work that you do with a professional and take it to somebody like Katelin. So if you're thinking about branding or rebranding, or if you sort of have the right program names in place, that's something I can help you with, you can also set a free consultation with me on my website, big red button up in the top right, so GreatestStoryCreative.com. So with that, we talked about getting creative. We talked about making sure we are very well aware of the other source conflicts. But what is the third thing, and the final thing that we should all keep in mind about trademarking and the service business?
#3 Action Tip
Talk to a Lawyer EARLY (ideally before you name your business/launch your website
Katelin: So I'm going to give this in kind of two parts, you want to talk to your lawyer and branding expert early, because it's a long process to get a trademark, it takes at least six months. And the earlier, I mean, there's no way to know whether there might be issues with a mark that you want to get, until like the fourth or fifth month. And the last thing that you want to do is fall in love with a brand name, and go, you know, just off to the races and start using it. And then like you said, someone comes along and they say, Hey, we have that Registered Trademark, you're infringing on our trademark rights, and you have to rebrand. rebranding is very costly, it's so disruptive to your business, as I'm sure that you know. And so you want to talk to the lawyer, like, honestly, like before you pick the name. And that also goes hand in hand with finding a really great branding expert like Annie, who is very well versed in trademarks. And she's one of the most well-versed branding experts I've ever talked to when it comes to trademarks. And she, I mean, it makes a huge difference. Because if you're working with a branding expert who can come up with a great name, but they don't have any knowledge or context about whether or not you can even use that name. You're just wasting resources. And then you might have to rebrand down the road. So if you find a branding expert, like Annie, who knows what they're talking about, and knows to at least do a little bit of diligence, before coming up with a few options and then saying, okay, now maybe it's time to talk to the lawyer about these three that we really like, you're gonna save yourself money and kind of give yourself a head start.
Annie: Yeah, I think that that's a really great point. And I also, you know, share with you that I've heard in consultations with past clients, whoever you work with, if you work with a professional to help you come up with a name that could be a lawyer, like Katelin, it could be a professional branding person, like me, read your contracts. And I know, Katelin, we could have all upset about contracts, you just did one for Branding with Friends on with a different expert. But you know, in this world, like I've heard from people who, you know, don't realize that they don't own their own business name, because they hired a marketing agency who kept the rights in the contract, they didn't own the logo, the name, the website. So just be careful. If something if pricing sounds good, too good to be true, something like that. Look at what you're getting and ask, you know, whoever you're going to work with for branding if they're going to help you with naming. Ask them what they know about trademarks and sort of what their perspective is on it. Because the last thing you do is that you know, they set you with Just Do It. And you're right, you know, it's like the Quicker picker-upper. You don't you don't want to be given something that's so obviously taken, because that sets you behind. So Katelin, thank you so much for sharing your wealth of knowledge with us clearly the tip of the legal iceberg when it comes to service businesses but thank you so much for being here.
Katelin: Thanks so much for having me.
Annie: I hope that all of you really enjoyed this episode of Branding with Friends. My many special thanks to Katelin Kennedy of Brevity Legal for being here. I hope you will tune in next time when we're going to tackle yet another topic where branding meets business. Until then, I am Annie Franceschi of Greatest Story Creative. You can find all our episodes more branding resources and so much more including that free consultation on our website at Greateststorycreative.com.
“Branding with Friends” Episode 17
Show Notes + Resources
Here are 3 key tips on how for trademarking to grow your small business:
Get Creative
The scope of potential conflicts is bigger than you might expect
Talk to a lawyer about trademarks EARLY (ideally before you name your business/launch your website)
Dive deeper into branding and growing your greatest business with Annie Franceschi:
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--- Facebook - facebook.com/greateststorycreative
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--- Instagram - @annie.franceschi
To learn more about trademarking or to seek Katelin’s help:
• Visit Katelin at brevitylegal.com
• Grab a free consultation at katelin@brevitylegal.com
• Follow Katelin on LinkedIn: Katelin Kennedy
