Should I trademark my brand, and if so, when?

by | Jan 24, 2022 | Grow Your Business

I recently received confirmation that my ‘Colour Brand’ (and also ‘Color Brand’) trademark has been officially approved.

Hooray it’s official and it’s mine and that little ® looks so damn sexy.

 

Colour Brand® Color Brand®

 

But you might be surprised to find out, that although I’ve launched dozens of brands myself over the years – it’s rare that I actually go through the process of trademarking them (you’ll discover why as you read on) but Colour Brand® is my legacy work and I have VERY BIG plans for it.

 

Before we dig in, I have to say I am not an attorney, and what I’ve written here is not meant to be construed as legal advice.

This is simply what I’ve learned as an entrepreneur over the years dealing with protecting my own brands in the US and the UK – and helping to create and manage other global brands.

 

Should I trademark my brand?

 

This is a question I pondered constantly in my early years of business and since then have been asked hundreds of times by entrepreneurs who have discovered a ‘great big idea’ and wanted to protect it.

Whether you’re the visionary, always dreaming up new ideas, or the ‘doer’ – the person more concerned with systems, processes and legal protections (described by Gino Wickman as the ‘integrator’)  – I’m sure this question has crossed your mind.

You know that tendency we entrepreneurs have to have an idea and buy a dozen domain names (I don’t even want to know what my annual costs are for URLs I’m ‘saving’ )?

Well for us business owners who are always on the lookout for opportunity (or peeking over our shoulder at competition) – after the domain binging, trademarking seems like the next natural step in ‘protecting’ our idea.

 

But is it?

 

 

One VERY IMPORTANT thing you may not know…

 

One little nugget I learned early on in the branding game (circa 2007 when we started the trademark process for Dog is Good) – is that (in the US at least), if you want to trademark something, it has to already be ‘in use’.

 

In Use

 

‘In use’ basically means – already out there. You’ll need a website, a product, or a few other items of ‘proof’ that you are actually USING this name/icon BEFORE you can protect it.

I actually really like this rule, because it means no one can just hoard good ideas with legal protection (like we do with domain names). You have to be at least committed enough to the idea to have brought it to life in some way before you get to slap a sticker on that says “mine”.

In the UK it’s different – not only is it a MUCH easier process to navigate (and therefore way less expensive because it’s easy to do it yourself) but you don’t have to have this proof in order to protect a name.

 

Classes

 

But one thing you DO need in the UK as well as in the US – is to know what you want to protect? In most trademark processes you need to pay separately for the ‘classes’ or ‘categories’ you’d like to ‘own’. Digital courses are in a different category to paper products, which are in a different category to mugs, or technology.

With Colour Brand®, I have protected 6 different classes, ranging from paint to planners to new technology.

 

Countries

 

You ALSO have to file for your trademark protection in each country where you’d like it to be protected. With the internet still in its wild west days where legal is concerned – this is obviously a bit problematic.

 

My advice is start in the country where you live and expand from there if you have the budget / time to not only keep the protection updated – but to have an attorney do regular searches for you to ensure no one is infringing or trying to file a potentially problematic /competitive trademarks.

 

The ONLY two reasons to trademark

 

Now, to answer the initial question this post seeks to address…

 

In my opinion, there are really only two good reasons to go through the expense and faff of the trademarking process.

 

1. To license your brand to other businesses in order to receive compensation (royalties).

2. To protect your brand from competitors and copycats in court.

 

 

1. Licensing

One of my FAVORITE sources of passive income is receiving royalties for licensing.

Most of us are familiar with this idea when it comes to authors and books. In traditional publishing when you get a ‘book deal’ – you’ll agree a royalty rate with your publisher, and then they will give you an ‘advance’ ( essentially ‘pre-paying’ you some guaranteed royalties).

Once that initial ‘advance’ is paid off because you’ve sold enough books – you’ll start receiving additional royalties.

The same goes with music (both the writing/lyrics and the ‘talent’ or performance). Recently in the news artists have been selling rights to their entire catalog to investors – Bruce Springsteen just bagged a cool $500 million for his – that’s how viable IP can be as income-producing assets!)

 

But you can also leverage just your brand word marks and logos for companies to pop them on products, events etc and you receive royalties

(like we see all the time with brands like playboy, Harley Davidson, and NFL and Premier League football teams).

 

Recently I saw some brilliant collaborations from one of my past clients FreshPawz (street wear brand for dogs) including a collection of pet accessories with Death Row records * genius  *

 

The whole POINT of building a brand is to build TREMENDOUS value in its reputation: what it MEANS to people.


J.Nichole Smith, Founder, Colour Brand®

The whole POINT of building a brand is to build TREMENDOUS value in its reputation: what it MEANS to people.

This intangible asset is exactly what that businesses who aren’t so good at the brand building but ARE good at production and distribution can capitalize on.

Usually this is a fantastic win-win and one of my favorite business models.

 

If you intend to make use of this delicious revenue stream in your business (and you have good reason to believe that your brand has or will have enough good will or deman to entice another business to pay to leverage it) – then yes – trademark everything, and do it now.

 

2. Protection

 

Aside from licensing, the main reason most businesses trademark their intellectual property is so that they have the right (and the upper hand) to legally protect their word marks or logos.

 

Let’s be clear: having a trademark cannot stop people from infringing  (copying / passing it off as their own) – but it DOES mean if you take those people to court for those infringements– you’ll probably win. Probably.

HOWEVER (and this is a HUGE however) – to protect your trademark you have to be willing to take people to court, or at a minimum to threaten legal action (cease and desist letters from your attorney are sometimes enough – but not always).

 

It is not cheap to have a lawyer on retainer to do this for you, and SERIOUSLY not cheap to engage in a lawsuit – so definitely think this one through.

Also, annoyingly, even if you DO file a lawsuit there is NO GUARANTEE you’ll win (even you obviously SHOULD)… and even if you DO WIN, there’s no guarantee you’ll receive compensation… so it’s all a gamble.

 

 

I had the unfortunate experience of filing a lawsuit the VERY WEEK my first business should have been opening its doors. It’s a long story – but let me just sum it up by saying…

We did eventually WIN the lawsuit, but in addition to the initial 50k we lost from the people we were suing, we spent 4 PAINFUL, stress-filled years full of drama spending another 60k on legal fees… and in the end, the people who owed us all that money ultimately just filed bankruptcy – so we never got paid.

Yay!

So, having suffered that fresh hell for years on end – I can tell you with supreme certainty that you need to REALLY be committed to the reasons you are pursuing legal action before you start.

 

In my opinion – VERY RARELY is it worth it.

(especially when you think about all the positive, profitable new things you could put that energy into creating!!)

 

I know this is a bit depressing… We do all have the right to protect our intellectual property – trademarks and copyrights included. We also deserve to have that ownership honoured, but it just simply isn’t always the case.

 

My heart especially goes out to those visual artists who have had their drawings and photos stolen by big companies, who instead of just licensing the art like they should, copy it and profit on it with no credit or payment to the artist.

This is despicable and disgusting, and sadly there is SO LITTLE legal protection or justice for artists who try to take these giants on.

 

Sometimes it gets called out in the media when a company tries to sneak the product off the shelves (like Target did here).

Sometimes the company is classy enough to make a public apology (like Anthropologie did here )

 

But even in those cases, the artist usually gets zero except a lot of anguish and huge legal bills.

So, what are we to do to both protect our legal rights AND get on with our life without all the stress, headache, COST and unfairness of enduring the broken legal system?

 

We get creative.

 

My secret, easy, FREE strategy to protect your brand RIGHT NOW

 

We want to protect what’s legally ours… AND we maybe are not feeling compelled (or can’t afford) to trademark everything.

 

I have a lovely little secret solution for you.

Have you noticed that sometimes brands have a ™ and sometimes it’s an ®

Well the only brands with the ® are the ones who have filed and had approved, legally binding trademark protections.

The ™ on the other hand, is something brands use to protect their word marks or logos while they way for the full ® status… but the secret is… sometimes that status never comes.

 

Sometimes the paperwork hasn’t even been filed!

 

Sometimes the status has been denied (seeing the TM on Starbucks’ mermaid above makes me wonder if they can’t actually trademark the graphic?) – but there is nothing to stop them (or you) from using the ™ to indicate to the world that ‘this is proprietary’… this is OURS.

 

So my super simple, secret, FREE protection strategy, is to put a ™ on EVERYTHING you want to protect.

Then file the necessary paperwork on JUST the stuff you want to license, or are willing to spend loads of time, money and energy on protecting in court.

 

Then once the trademark comes in, don’t forget to update your logos and copy everywhere to change that ™ to a  ® !!

 

Happy Medium

 

I find this a wonderful happy medium between feeling like you need protection straight away on your shiny new thing– and actually having to file the paperwork, pay for all the classes, and wait the months (and sometimes years) it takes to have a trademark fully approved.

 

I also expect you’ll look at brands a bit differently now that you know this – that the ones sporting that sexy little ® are all-in on protecting their property!

 

Want a brand and logo worth licensing & protecting ?

 

If you think you’re ready to uplevel your existing brand into one that could someday make you loads of passive income through licensing – then we should talk.

 

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