When Should You Trademark Your Business

March 7, 2024

In this episode, we continue expanding on the building phase of a business. Join us as we discuss Trademark law and the importance of protecting your intellectual property. We will take you through the journey of applying and filing for a Trademark and provide our insights on what to be aware of during this process.

Listen to the full episode using the player below, or by visiting one of the links below. If you have any questions or would like to learn more, email us at info@byrdadatto.com.


*The below transcript has been edited for readability.

Intro: [00:00:00] Welcome to Legal 123s with ByrdAdatto. Legal issues simplified through real client stories and real-world experiences, creating simplicity in 3, 2, 1.

Brad: Welcome back to Legal 1, 2, 3 with ByrdAdatto. I’m your host, Brad Adatto with my co-host Michael Byrd.

Michael: As a business and health care law firm, we represent clients in multiple business sectors, especially health care. This season, we are diving deep into the exhilarating and terrifying process of opening a business. Our theme this season is starting a business.

Brad: You know, Michael, we’ve said this already, but starting a business is really just one season of a business. Let our audience know what some of the other seasons are.

Michael: Our four seasons that we’ve been talking about throughout the beginning of this year, and we’ll be talking about throughout the rest of this calendar year are the building season, so starting a business; the operating season, so we’re talking about running a business, and we’ll be getting that into the next podcast season, [00:01:00] the scaling season, growing a business, and the buying and selling seasons when you’re ready to sell. So, as we said, this season, we’re going to be living and have been living in the building season.

Brad: Yes. And Michael, today we do not have a guest, for the first time in a long time. I mean, I feel like we can finally let our hair down and be the 13-year-old inner-self boys that we are.

Michael: Yes. I agree that this is so tempting, Brad. We do not have to behave ourselves or at least that’s the temptation. Yes, but we’ve made so much progress this year.

Brad: Have we?

Brad: Well, I would like to think so, so let’s try to keep it on track, but I will make you happy.

Brad: Okay.

Michael: I’m going to talk about a movie that is a documentary on music from a time or era that is your wheelhouse. We’re going to cover the late sixties, seventies, and even the eighties, Brad.

Brad: The eighties?! This is awesome! Michael, we’re getting the band back together.

Michael: [00:02:00] Yes. Speaking of bands, my wife and I recently watched the Bee Gees documentary. It is called “The Bee Gees: How Can You Mend a Broken Heart?” It is on Max.

Brad: You know, Michael, the first thought that comes to my mind is, did you lose a bet? But the second thing is, Michael, did it mend your heart?

Michael: That’s so touching and caring, Brad. It’s going to take more than a movie to fix a 13-year-old heart.

Brad: Oh, true.

Michael: But let me ask you this, what do you think of when you think of the Bee Gees?

Brad: Two thoughts pop into my head. First one, John Travolta in an all-white suit.

Michael: Hold on. So, for those who are not following, Brad’s referring to a movie from 1977, so his prime, called Saturday Night Fever, which Travolta stars as a young Italian American who spends his weekends dancing and doing [00:03:00] disco in Brooklyn. And he is dancing to the music of the Bee Gees, including one of their hit songs, “Staying Alive”. And yes, you are old Brad, if that’s the first thing you thought of. I hate to ask what’s second.

Brad: But you did ask. Secondly, I was thinking about when disco stopped being cool and the backlash against it a few years later after Saturday Night Fever came out, I think it was 1979, and part of a major league baseball promotion. In Chicago, they had a Chicago disco demolition night. Sounds really fun. And at the climax of the event, a crate filled with disco records was blown up on the field between a double header. By the end of the night, it ended in riots. So, pretty good. What about you? What do you think of?

Michael: Well, and I’ll say they covered the baseball promotion night.

Brad: Oh, did they really?

Michael: And the deal, yeah, it was crazy. And as it turns out, most of the [00:04:00] records that were being destroyed were not even disco. Like, people were just bringing stuff, but it completely killed the disco craze. Well, Brad, I too also think about John Travolta when I hear the Bee Gees. I can picture him doing his dance moves, pointing his fingers down and back up. But I realized in this documentary that they are incredibly talented and had multiple eras in a 20-year period or so.

Brad: Well, I guess, Michael, since you’re the context guy, can you give some context on the Bee Gees?

Michael: So, the Bee Gees is a family band. They have brothers; Barry, Maurice and Robin Gibb that all started the band. And then later in their career and kind of sprinkled in throughout, they had a famous little brother named Andy Gibb, who officially became part of the group kind of towards the tail end of the Bee Gees.

Brad: All right. I’m curious. You can add anything else you want here. [00:05:00]

Michael: Okay. Well, so before the disco era that you and I think of, they actually had several albums and several hits. The genre of music before that was more in line with the Beatles. That was kind of their sound. And they were actually living in Great Britain for much of the time. P.S., they were actually originally from Australia, which I don’t even think I realized that, and they started hitting it big. They started hitting it so big that they were infighting, even though they were brothers, about who should be the frontline star because they all have these voices of angels, especially Barry, and I believe Robin, if I remember right, were like just angelic voices, and so they started fighting and they actually broke up over egos.

Brad: Oh, sounds like maybe they – is there a comeback story? We’re, we’re getting to? [00:06:00]

Michael: They had multiple comebacks, Brad.

Brad: Oh, okay.

Michael: I also learned that they actually didn’t try to create disco. They kind of started slumping. They broke up, they started trying to get back together, and they weren’t getting it, like it wasn’t picking up where it left off. So they were actually recording, and the disco era was launched when they were trying to perfect the ending to one of their songs. And this was in 1976, and I think it was Barry, was messing around trying to figure out the end. And that’s when he broke out for the first time in his falsetto voice that we all think of. It was that really high pitch that ended up being the ending to the song, and this catapulted them. I mean, the whole disco era can be attributed to that moment. And then [00:07:00] the club started playing their music because it kind of went with that sound.

Brad: Well, I guess they not only helped launch disco, but I guess they helped the new attire that went with dancing to those songs.

Michael: So, in the documentary, I also learned that they changed the music industry forever, kind of inadvertently with the drumbeat for the song, “Staying Alive”. When they were recording the album, the drummer for the band had to leave when they were recording, to tend to a sick parent. He was gone for a few months. So the Gibb brothers and the engineers thought, okay, as a placeholder, they will figure out how to record the drumbeat and kind of put it on repeat or a loop so that they could then record the rest of the song. And the idea was that once the drummer got back, that then he would actually record it. And so, it sounded so good that they kept it. And the iconic sound, [00:08:00], and most of us can kind of picture the beginning of the song…It ended up changing the industry on how music was recorded forever. The industry started adopting this kind of looping concept.

Brad: Yeah, and I can’t stop hearing that drumbeat now in my head, Michael, thanks a lot.

Michael: I know, me too. I’ve got it going too. But I’m so thankful that you did not just start singing. The final thing I learned, Brad, before we get into our real content for the day, is that the Bee Gees are prolific songwriters.

Brad: You mean they wrote all their own songs?

Michael: Yeah, and actually, so much more. When the Bee Gees fell out of favor, and when Disco got a bad name after this famous baseball game, artists started asking them to write songs for them because they had written so many number one hits.

Brad: I mean, I kind of remember a little bit that they had written some songs, but I can’t think of all of them off the top of my head, do you?

Michael: I had no idea, I had to write it down when I heard it, but “Islands in the Stream,” [00:09:00] by Dolly Parton and Kenny Rogers, “Woman in Love” by Barbara Streisand, “Greece” by Frankie Valli , “Heartbreaker” by Dionne Warwick and “Chain Reaction” by Diana Ross are all big hits that the Bee Gees wrote.

Brad: Well, very cool, and things I didn’t think we would discuss today was the history of the Bee Gees, so thanks for making that happen. I’m assuming this enlightenment of the life work of the Bee Gees will tie into the today’s story. So, Michael, let’s jump in.

Michael: Well, I may have hard coded to make it tie in, but our protagonist today is named Dr. Barry Gibb.

Brad: Barry Gibb, what a random name there, Michael.

Michael: Where did I come up with that?

Brad: Whatever, you thought of that. Oh, so is this doctor a songwriting doctor or a just an actual MD doctor?

Michael: Fair question, he’s a doctor, doctor, but he does have some creative qualities and is passionate about intellectual property.

Brad: [00:10:00] Oh, I think we might have our first vocabulary word today, Michael. What is intellectual property? Also known as its street name, IP.

Michael: I’ll try to make it not sound too legal. Kind of think of the word property, like an asset or something of value. So, when lawyers use this word, we’re describing intangible creations of the human intellect. The best-known examples are patents, trademarks, and copyrights.

Brad: Man, tangible creation, that’s a cool way of describing it. You may continue with your story about Dr. Gibb.

Michael: So, Dr. Gibb has been a hospitalist for much of his career and struggled with the lack of resources he saw provided for patients that are nearing the end of their life.

Brad: Okay, well you’re moving fast today. I think we have a second vocabulary word. What is a hospitalist?

Michael: You’re paying attention, Brad. Good job! A hospitalist is a physician who cares for inpatients. In other words, the hospitalists work inside a hospital and treat patients who are admitted for care in a hospital. [00:11:00]

Brad: Yes, and I think we can all assume that he’s helping these hospital patients with their night fevers.

Michael: Okay, dad joke number one for today. I hope you’re not trying to catch up with the number of definitions that we have. Gibb also had an entrepreneurial spirit that was crushed by being an employed physician for so many years.

Brad: Yeah. Unfortunately, this is a common theme we hear with employed physicians who have that entrepreneurial spirit, they often really feel suffocated by their employees.

Michael: Yeah. Dr. Gibbs over the years became a subject matter expert on this kind of end-of-life care, and he became really good at helping end stage patients not only survive but thrive.

Brad: Oh, I guess he was also teaching them how to disco dance.

Michael: Okay. You’re getting confused, Brad with our opener when we were talking about the Bee Gees. This is not a Bee Gee; this is Dr. Barry Gibb.

Brad: Oh, okay. Sorry. [00:12:00] Dr. Gibb, yes, I got it now.

Michael: And so, Dr. Gibb constantly ran into bureaucratic issues with wanting to implement his techniques, which combined medicine and some wellness treatment protocols.

Brad: Yeah. Hence the suffocation we were talking about earlier with some employers. These large systems can take forever to move on something new, even if it’s improving the health care treatment of the patients.

Michael: You’ll be happy to know Brad, Dr. Gibb decided to start his own business.

Brad: I’m relieved that since this season we are talking about starting a business and not the Bee Gees, that you’re now talking about that we had a depressed unemployed physician, who was stifled by his work culture, and it ended poorly.

Michael: It was a long play, Brad, to get you from the Bee Gees to a hospitalist, to starting a business. But we’re here, so let’s go. His plan was to open a hospice facility where he was going to bring his techniques to patients at this stage of life. [00:13:00]

Brad: Well, good for him. And I’m sure it’s tough, but he did get to release his entrepreneurial spirit.

Michael: Yes, Brad. And he named his – he’s been dreaming about this his whole life – he named his business Staying Alive. LLC.

Brad: Well, first off, of course, I love the LLC’s name. I think it’s very original. I’m not sure if “Staying Alive” works with the hospice, but how did you start talking to Dr. Gibb?

Michael: Well, Dr. Gibb reached out and he wanted help with starting a business. He had heard that two of the best health care attorneys worked at ByrdAdatto, but he decided he only wanted to talk to the best.

Brad: Well, that makes sense. I guess I was busy that day. And Michael, thanks for covering for me and Jay.

Michael: Okay, that backfired on me a little bit. Seriously though, Dr. Gibb wanted help with corporate structure, but he was also super proud of his “Staying Alive” name. It felt so original, and he wanted to copyright the name.

Brad: [00:14:00] Copyright is another vocabulary word. I’ll take this one. Copyright is really like the legal right to the original creation of literature artistic or musical material. It is the protection of the words. Like I think of a book or the words of a song, maybe by one of the other Gibbs.

Michael: Yeah, Dr. Gibb was probably thinking about the Bee Gees when he asked the question. I don’t know. He really needed a different type of IP protection called Trademark protection. And Brad, will you do the honors to describe this? I think it’s the fourth vocabulary word. I’m going to outpace your dad jokes today. Okay, this is the fourth vocabulary word of the episode.

Brad: Yeah, I do feel like I’m a teacher today, so behave Michael. Like you said, there’s a lot of vocabulary words here. A trademark is a type of intellectual property protection for a symbol, phrase, or word that denotes specific product or names of a business, also known as a trade name. [00:15:00] So think of the word like Nike or the Nike Swoop. And both of those you can see in shoes and apparel, and both of those are trade marketable.

Michael: Yeah, and there are a host of issues that have to be navigated when you’re thinking through a trademark application.

Brad: Yes, many different options to consider.

Michael: So, we’ve kind of built up the story and we’ve got Dr. Gibb ready to start his business, asking about trademarks. Let’s go into a commercial right now, Brad. And on the other side, let’s hone in on this trademark application process and share the rest of the Dr. Gibbs’ story.

Access+: Many business owners use legal counsel as a last resort, rather than as a proactive tool that can further their success. Why? For most, it’s the fear of unknown legal costs. ByrdAdatto’s Access+ program makes it possible for you to get the ongoing legal assistance you need for one predictable monthly fee, that gives you unlimited phone and email [00:16:00] access to the legal team so you can receive feedback on legal concerns as they arise. Access+, a smarter, simpler way to access legal services. Find out more, visit byrdadatto.com today.

Brad: Welcome back to Legal 123s with ByrdAdatto. I’m your host, Brad Adatto, with my co-host, Michael Byrd. Now Michael, this season, our theme is starting a business. We’ve been camping out in the building season, and there’s a lot of things that can happen when you start a business. And as we heard today for the first half, we talked about Dr. Gibbs and his love for the Bee Gees – I mean, his options to consider when he was trying to start his business. Now Michael, give the audience an introduction to how Trademark Law works so that we can have some context for the rest of his story.

Michael: Absolutely. A lot of people have a perception that you just go apply for a trademark and you’re good to go, and the law’s a little different. The most important thing I tell people about Trademark Law is actually using it. [00:17:00] So an analogy I will use is kind of thinking back to the land grab days when the United States was being formed.

Brad: What was that like, Michael?

Michael: Touche again, Brad, you’re on fire today. So, the way of course that would work is that people were going west as fast as they can, and you would claim the land by sticking your flag in the ground, and that became your land. It belonged to the first one there to put their stake in the ground. That’s the same way it works with a trademark or a trade name. And so, it becomes really important when you’re thinking about starting a business to think about being the first one out there to use it and the trade. Think about the trademark application and the protections that come from that as things that enhance or support this first use concept.

Brad: Okay. So, this begs the question, Michael, [00:18:00] was Dr. Gibb using the “Staying Alive” trademark?

Michael: Well, you’re listening, Brad, so gold star for you. You are on fire on multiple fronts today, but he was not yet. Brad, talk to the audience a little bit and kind of getting into the trademark concepts, talk about actual use versus this concept of intent to use.

Brad: All right. Well, to answer that question hold on with me because I’m going to need to give a lot of legal jargon as the process to actually file a trademark.

Michael: Short leash, but let’s go, keep it tight.

Brad: So the reason for a trademark is obviously, as Michael is kind of describing, is to protect the mark and hopefully prevents disputes between parties as to who actually owns the mark. And trademarks are then filed with the USPTO.

Michael: Okay, another vocabulary, we’re trying to set a record today. USPTO, audience, means U.S. Patent and Trademark Office. This is the federal agency charged with overseeing the registration of trademarks. [00:19:00]

Brad: Correct, Michael. The USPTO looks at two aspects to protecting Mark actual use versus intent to use. So, under the actual use, an applicant is letting the USPTO know they’re actually using the trademark in commerce, and this can be using it by providing a specimen to the USPTO or samples of how they’re using the mark in commerce.

Michael: Okay. Can you give some examples of specimens?

Brad: This could be some good examples, like a photo showing your trademark on the bottom of a coffee mug, or on the cover of a software instruction manual, or labels and tags that are again, a photo from that, from your trademarks being used, sewn into a shirt or a neckband or something of that sort.

Michael: Now, how is that different than this concept of intent to use?

Brad: Well, intent to use, means an applicant has not really started using it yet in commerce, as such, they can’t really produce a specimen in commerce. They tell the USPTO also [00:20:00] that you’re not using the trademark yet, but you want to reserve that name, kind of like putting your stake in the ground because you potentially will be using it soon. And once you reserve it, you basically have six months to prove that you’re using that specimen in commerce. And there’s a little bit more to that but keeping it tight.

Michael: No, that’s good. So kind of bringing that back to Dr. Gibb, he wasn’t using it yet, but he also decided that he was not ready to file an intent to use trademark. He first wanted to conduct some due diligence and take some stealth mode steps first.

Brad: Oh, that sounds so mysterious, Michael. Ok, first, what do you mean by due diligence?

Michael: Well, remember this whole land grab concept, right? Like if he used this concept of “Staying Alive” and there was another hospice that was in a different county that had the same name, they would have a superior right, and so [00:21:00] you don’t want to step into that problem. And so, you we kind of call it a level one clearance search where you go to Google and search and see – if you look for “Staying Alive”, what do you find when you go there? And then there’s actually a search mechanism inside the USPTO website where you can actually search for trademarks. And so, you’re looking for kind of a lay of the land of the use of that particular name.

Brad: And maybe you should explain to the audience why that matters.

Michael: Well, because again, if they’re using this name, they will have had the stake in the ground. They will be the first using it in commerce, which is kind of a concept in trademark law, and so this means they would have a greater right to the name. So, once you get through that first clearance, we kind of talk about a level two, which is, it seems clear, let’s invest [00:21:00] in really digging deep to make sure it actually is clear. And so, you do what we call a level two search, where you actually go hire a third-party service and they go into kind of nationwide databases to really dig into that name.

Brad: And besides the hit song by the Bee Gees, did you find anything on for “Staying Alive?”

Michael: Well, no. We found the song, but no, nothing connected.

Brad: So, the USPTO is just to understand that just because someone else is using that name doesn’t always mean something. And for our audience members to understand, the USPTO divides marks into 45 different categories, 34 products, and 11 first services. These categories are known as classes and as used to help keep track of the many thousand of new marks that are registered each year with them. Consider that some word or logo could appropriately qualify in different [00:23:00] trademarks for different classes, so obviously we just talked about the Bee Gees, but another example is Dove. It’s a well known shampoo and soap, right? So everyone knows about their Dove shampoo or soap, but Dove is also a popular brand of chocolate. So again, that would mean that these are coming in different categories or classes. A trademark owner may choose that class Michael or classes to apply to that mark.

Michael: Yeah, and so, audience, think about the laws are built to avoid confusion for the consumers, and so that’s why you’re not going to likely confuse Dove chocolate with Dove soap.

Brad: Yeah, and you’re covered that the due diligence was required. You just talked about that, but you also mentioned the stealth mode. What did you mean by stealth mode?

Michael: If you’re not actually ready to go live with a use of a name yet, there are still steps that can be taken [00:24:00] to start securing your position. So, Dr. Gibbs secured domain names and social media handles, for example, to kind of start the process. And he also started pulling together his content so that it would be ready when it was launched.

Brad: Yeah, and a couple weeks ago we talked at length about securing domain names and social media handles when ByrdAdatto’s Brand Marketing Manager, Stephanie Torres, was on here. For those who are not familiar with those terms, I think you should listen to that podcast. But let’s jump into today’s story still. So, whatever happened with Dr. Gibb, did he receive the trademark?

Michael: I’m going to answer a question with a question, Brad. I want you first to talk to the audience kind of about this concept of the spectrum of trademarks and what the USPTO considers a good mark. So even if you have a stick in the ground, is this something that’s even considered protectable?

Brad: Yeah, and it kind of falls into different buckets here. Some is never protectable, some is not [00:25:00] immediately protectable, and some are immediately protectable depending on what they fall in. So, the categories are kind of generic. So, the easiest answer is you try to, you know, beer company, that’s never protectable. Not immediately protectable, would be something that could be descriptive which is, we can use American Airlines. Everyone knows who that is now, so it’s protected now. Suggestive, is a mark that is immediately protectable like Burger King. That’s a suggestive mark. Another immediately protectable one is one mark that’s more arbitrary, so think of the Apple symbol, and then fanciful means that it has nothing to do with the product or the industry, but they just come up with a cool name. Like in this case, I’ll just use the word, Exxon. Like it has nothing to do, but everyone now knows what it has to do with, but it doesn’t really – and so that’s going to be a fanciful term.

Michael: Yeah, and so audience, you can think about, if it’s a unique name that has nothing to do with the service or product you’re doing, then that increases value. So, another example is Google, [00:26:00] and arbitrary is Apple, it does describe something, but it doesn’t describe computers, and so it kind of works there. The common trap, that especially most small business owners fall into, is this descriptive mark. Because when you name a business, you want to name it after what you’re doing. So, Northwest Plastic Surgery or Southeast Spine Care or insert name… if you think about it, that’s actually what our client, Dr. Gibb did. He named it “Staying Alive,” and that’s what he was trying to do, was to keep his patients alive. And so, when he went through the application process, the USPTO came back and said, this is descriptive of the service it was providing, and they denied the mark initially, Brad.

What was interesting is that not a lot of [00:27:00] people know this. There is a kind of a secondary registry, trademark registry. Think of it like, kind of like the stepchild. It doesn’t give you as much protection, but it does give you something. And sometimes you can get a descriptive mark that’s not quite ready due to its notoriety, like American Airlines. For full protection, you can get a registration on the secondary registry, and we were able to get that for Dr. Gibb. And it does have some level of protection. But even with all that, just from a business perspective, even if you get it, a descriptive mark is not a valuable asset. And it’s more likely that you’re going to have other trademarks that are approved and they kind of dilutes the value of what you have. But it really didn’t matter to Dr. Gibb all that points because he just loved the name. And he wanted some validation that it was a good name.

Brad: Yeah. [00:28:00] And for audience members to understand, sometimes when you do have a descriptive mark, you might have some really cool logo. Like, again, let’s go back to the Nike Swoosh that makes it so unique that that is something that you can then try to go through the process of getting it trademarked. And you can also do that with the name on top of it so that no one else can use that same mark that you have and the utilization of the name in the mark. And so, understand that’s two different applications, but at least now you’re having some protection of the mark being by itself and or the mark with the words. There are some other ways that you can go through the front door, but you’re not protecting the name, which is the trade name that he really wanted “Staying Alive” to protect. So just understand, just as Michael’s describing, if it is descriptive, you can work with your attorney on other avenues to try to find other ways to protect the mark and or name. Final thoughts, Michael?

Michael: Yeah. As we wrap up, [00:29:00] I think about our audiences thinking about starting a business. I would encourage in light of all of what we just talked about, that when you’re coming up with the name of your business, that you do at least this level one search. Look and see what domains available, social media names that are available, and look and see what’s out there. Because not only are you potentially building an asset and building value if you pick correctly, you also don’t want to step in a landmine and name your business after something that’s out there to where you’re the one getting a cease-and-desist letter saying, you’ve got to stop using this name.

Brad: Yeah. I mean, we have stories of people who built it up, put it on their signage, had printed out mailers and put it on a giant sign. And it turns out there was a very similar place up the road even though they never even thought about it, and then they get a cease and desist, and they literally had to go spend another [00:30:00] $20,000 of redoing the signage and destroying all their mailers. So, Michael, as you said, really important. But how does this tie to Dr. Gibbs again?

Michael: Staying alive, Brad

Brad: Staying alive. All right. Well, Michael, next Wednesday we will have doctor and Mrs. Steven and Sara Camp on to give us their story about starting their practice. Thanks again for joining us today. And remember, if you like this episode, please subscribe, make sure to give us a five-star rating and share with your friends.

Michael: You can also sign up for the ByrdAdatto newsletter by going to our website at byrdadatto.com.

Outro: ByrdAdatto is providing this podcast as a public service. This podcast is for educational purposes only. This podcast does not constitute legal advice, nor does it establish an attorney-client relationship. Reference to any specific product or entity does not constitute an endorsement or recommendation by ByrdAdatto. The views expressed by guests are their own, and their appearance on the program does not imply an endorsement of them or any entity they represent. [00:31:00] Please consult with an attorney on your legal issues.

ByrdAdatto founding partner Michael Byrd

Michael S. Byrd

ByrdAdatto Founding Partner Bradford E. Adatto

Bradford E. Adatto

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