We have seen trademark disputes play out in the media, from stolen concepts to logos and even counterfeits. With so much confusion how do you make sure you and your small business are protected? On today’s show, we’re pleased to welcome an expert on trademarks and brand protection, Charis Dorsey aka ‘The Brand Attorney’, and owner of The Dorsey Law Firm.
Transcription:
Jim Fitzpatrick:
Thank you so much for joining us on this show, Charis.
Charis Dorsey:
Thank you so much for having me, Jim. I appreciate being here.
Jim Fitzpatrick:
Sure. So tell our audience a little bit about yourself and then how you got into becoming somebody that’s an expert in branding and trademark law.
Charis Dorsey:
Sure. So I started my legal career wanting to be a fashion attorney. At the time that was about 2011, 2012, there were only just number of schools that offered that as a practice area in terms of creating a curriculum around it. I believe Fordham was one and Howard University School of Law actually had a Fashion Law Week program. So I’ve ventured to D.C. and I attended Howard where I tried to soak up as much information as around fashion and the law.
Jim Fitzpatrick:
Sure.
Charis Dorsey:
And in the space of that learned a lot about intellectual property, learned a lot about real estate, and just general matters that impact the fashion community that grew into a love for other areas as well in other industries. So beauty, fashion, the wellness space, product businesses in general. And I took all of that information and in parsing through everything realized that the core of what I was practicing in or interested in was being a business lawyer. So like some reverse engineering there.
Jim Fitzpatrick:
Sure, sure.
Charis Dorsey:
I went there with one specific goal and then ended up finding this broader area for me to flourish as an attorney.
Jim Fitzpatrick:
Right, right.
Charis Dorsey:
I then went to Howard, as I mentioned before, graduated and then went directly to in-house, which was an unusual path for most attorneys starting out because most times we go to the firm first and then after that we’ll go into the in-house role. So I kind of did it backwards. I served anywhere from entertainment to government affairs. And then after a while, and not necessarily finding the perfect space for me where I could touch on the businesses that I wanted to touch on and reach, I decided to start my own practice. I hung my own shingle in 2018.
Jim Fitzpatrick:
Wow. Congratulations. That’s great.
Charis Dorsey:
Thank you so much. And now, and since about September of 2018, I’ve been in practice and I haven’t been looking back, so.
Jim Fitzpatrick:
That is fantastic.
Charis Dorsey:
Thank you.
Jim Fitzpatrick:
So let’s switch gears a little bit or not switch gears, but let’s kind of drill down a little bit. At what point should a small business get a trademark? I know a lot of people ask that question because they say, “Well, if I’m making cookies at home and I’m selling them either on the internet or at storefronts or what have you, do I need a trademark at that point in time”, right?
Charis Dorsey:
So I know that a lot of clients, they like to wait and try to figure out what this baby is. They’re putting time into it, they’re marketing to an audience, and trying to see what sticks. And I would say at that moment, that juncture is where you actually want to start considering the trademark process because you’re developing that audience and that audience wants to remember you by something, right?
Jim Fitzpatrick:
Sure. Sure.
Charis Dorsey:
And so in the space of developing that something, that source or your source identifiers, what I like to call trademarks, that space is where you want to be. You want to be sure that the name is something that you can grow with that is yours to own and no one else’s as well.
Jim Fitzpatrick:
That’s right.
Charis Dorsey:
So I would say from the onset for sure.
Jim Fitzpatrick:
Right. Right. And a lot of people, what they’ll do is they’ll go on and they’ll check out the corporations that are in their state. And they think that that’s a trademark, they’ll say, “Well, there’s no one else selling Susie’s Cookies. I just checked them out and there’s nothing like that.” And then maybe they’ll do a Google search and they find there’s no Susie’s Cookies on the internet so, therefore, I’m not infringing on anybody’s business and that’s not a good way to measure that, right?
Charis Dorsey:
Correct. I mean, while it’s a great for step…
Jim Fitzpatrick:
Right.
Charis Dorsey:
Of course we want to have a little bit more comprehensive knowledge surrounding who’s in our territory and who’s in our space.
Jim Fitzpatrick:
Okay. Sure.
Charis Dorsey:
So definitely check in with the Secretary of State to see who’s there is a great first best step, but you also want to check with the U.S. Patent and Trademark Office.
Jim Fitzpatrick:
Okay.
Charis Dorsey:
See who’s using the name on that level. And then, also, I always recommend a media search because sometimes what we don’t realize is that there are individuals or companies who are doing businesses, they may not have taken the proper steps, but they may have a brand and by way of having this brand acquired some common law rights.
Jim Fitzpatrick:
Okay.
Charis Dorsey:
Which may fly under the radar because it’s kind of difficult to ascertain exactly the extent of their usage of the market and how far and how expensive that usage has been.
Jim Fitzpatrick:
Okay.
Charis Dorsey:
So definitely checking with the Secretary of State, USPTO, doing just general research. Google is fine, but Google or the Secretary of State shouldn’t be the only places which you check for.
Jim Fitzpatrick:
Okay. If you do all of that and you say, well, I’m going to do this the right way and I’m going to before I spend a nickel in my business to make these cookies and call myself Susie’s Cookies or Jim’s Cookies or whatever, and I do all of that and I go ahead and get the protection, I get the trademark, lo and behold, five years down the road, I find out there’s actually another Jim’s Cookies, and they’ve been in business 10 years, can I go to them and say, “Hey, you’re infringing on my right to do business here under this?”
Charis Dorsey:
So, typically, and that is a part of the conversation when I mentioned before with common law rights.
Jim Fitzpatrick:
Okay.
Charis Dorsey:
So typically the way that trademarks work, when you file for a trademark with the USPTO specifically, there is this presumption of ownership that is going to be given to you.
Jim Fitzpatrick:
Okay.
Charis Dorsey:
So they’re going to presume that you were the first to use it because you were the first to file. And that’s how the U.S. works they first to file first gets the trademark. So typically you’ll be able to continue using that mark, but for anyone who was there before you, typically, they would be able to retain those common law rights to the areas which they’ve been using the mark prior to.
Jim Fitzpatrick:
Really?
Charis Dorsey:
Yes.
Jim Fitzpatrick:
So in the event that let’s say Jim’s Cookies are in North Carolina, but they’re not outside of that area, they would have the rights to that just inside the state of North Carolina, let’s say.
Charis Dorsey:
Correct.
Jim Fitzpatrick:
Okay. Could I then go into North Carolina with my Jim’s Cookies or do they have the benefit of having that protection in their area?
Charis Dorsey:
That actually happened when with Burger King. So once upon a time there was a Burger King in a Mattoon, Illinois. They were actually first before the popular Burger King franchise that we know of today.
Jim Fitzpatrick:
Okay.
Charis Dorsey:
And so what they did when Burger King, the Florida franchise, attempted to expand into Mattoon, Illinois, they got an injunction. They said, “Hey, well actually we were first.” So court ruled in their favor and said, “You know what, you’re actually right. We’re going to give you rights to the use of Burger King in Mattoon, Illinois and a 35 mile radius surrounding that area, but beyond that Florida Burger King, you’re free to go.”
Jim Fitzpatrick:
Okay. Okay.
Charis Dorsey:
So it would work pretty much similar to that. I’m pretty sure there would be some assessment of the extent of their usage.
Jim Fitzpatrick:
Sure.
Charis Dorsey:
And so, if they’re using it all over North Carolina then that would be the case, but if it were the case that they were not, they were just localized to one particular city, they would give them a buffer around that area and then anything else would be fair game.
Jim Fitzpatrick:
Okay. Okay. Great, great. And do you recommend that all businesses get trademarks or all businesses out there, should they get a trademark?
Charis Dorsey:
Absolutely. Now what type of trademark they need will depend upon their plan for expansion.
Jim Fitzpatrick:
Right.
Charis Dorsey:
So there are two areas in which you can get a trademark. And I shouldn’t say two areas, but two levels to the trademark registration process. The first is what happens with the state. So you are able to get a state level trademark. The second is with the U.S. Patent and Trademark Office. So if your intent is to expand and to do interstate commerce, so you’re engaging in business, whether that’s shipping products, whether that’s taking clients from different states, then a U.S. Trademark, at the federal level, so with the USPTO, would be the best route to go.
Jim Fitzpatrick:
Okay.
Charis Dorsey:
But if you know that you just want to be a small, local business to the community, a staple, a gem in that community, then it may just be sufficient for you to have a trademark at the state level, but I always recommend thinking about the long-term goals.
Jim Fitzpatrick:
Sure.
Charis Dorsey:
So what happens when your hometown fan then moves to California? You’re based in North Carolina and they want to order, well, you have an opportunity to provide them products there. And at that point, then you may want to also consider registration at the federal level because it gives you protection across the 50 United States.
Jim Fitzpatrick:
Yeah. For sure, especially with so much being done online now.
Charis Dorsey:
Absolutely.
Jim Fitzpatrick:
You might be a small little company in Atlanta, but somebody likes your product or service and they say, to your point, “I moved to California or I moved to some other state and I still want to buy that product online and have it shipped to me”, which is very common.
Charis Dorsey:
Exactly.
Jim Fitzpatrick:
So you do need that. So let me ask you this question, what can be trademarked and what can’t be?
Charis Dorsey:
Sure. So that’s a great question. So typically with trademarks, you are going to be able to protect your brand name, your product names, your slogans, your logos, you sometimes can protect a sound. And so, in the space of doing a comparison, I always like to use the reference of Nike because Nike has protection for the word Nike. It has protection for its logo, so the check mark, and the actual spelling of the word Nike. For its catch phrases, like Just Do It and Swish. And then product names when you think of them you have Air Max, Air Jordans, you even have the Jumpman and all of those are protected through trademark.
Jim Fitzpatrick:
Okay. Okay. Probably anything air is even trademarked.
Charis Dorsey:
Probably. And even their Dri-FIT is protected as a descriptor for their products line.
Jim Fitzpatrick:
No kidding, wow. Yeah.
Charis Dorsey:
Yeah. And so those are things that you can protect, but things on the other side where the Trademark Act isn’t necessarily going to afford rights to you would be as you are thinking about protecting your content, your ideas. So content, think of the copy that you, social media is big right now, right?
Jim Fitzpatrick:
Right.
Charis Dorsey:
So a lot of times we have graphics that we’re creating, we have copy, we’re creating books, we’re creating eBooks, we’re creating recipe books, the whole gamut, right?
Jim Fitzpatrick:
Right.
Charis Dorsey:
Typically that would not be protected by trademarks.
Jim Fitzpatrick:
Okay.
Charis Dorsey:
That is something that would actually afford you rights in the copyrights realm. Okay. The US Copyright Office would be your best friend there.
Jim Fitzpatrick:
Okay. Do you handle all of that?
Charis Dorsey:
I do.
Jim Fitzpatrick:
Okay. Okay.
Charis Dorsey:
Yes. Yes. Yes.
Jim Fitzpatrick:
So if an entrepreneur comes to you and says, “I want to create the trademark for my company, but then I want to publish manuals or I want to publish cook books or whatever”, you can do all of that for them.
Charis Dorsey:
Correct. Yes, I can.
Jim Fitzpatrick:
Okay. Okay.
Charis Dorsey:
Yep. Yep. Yep.
Jim Fitzpatrick:
You’re probably a busy young lady these days because to your point, everything is on social media and it grows. A business brand can grow so quickly that it can get out of control of that owner of that item?
Charis Dorsey:
Indeed. Indeed. And that’s my goal is to try to get in front of that and try to help business owners understand that it’s more than just a trademark.
Jim Fitzpatrick:
Right.
Charis Dorsey:
And it’s more than just one trademark. You have so much content, you have so many assets that need real time protection. And it’s oftentimes the case that we overlook it or we don’t realize that the things that we have are intellectual property that have value.
Jim Fitzpatrick:
Right.
Charis Dorsey:
But sure. Yes.
Jim Fitzpatrick:
Right. Do you have to come up with the logo and the slogan and all of that prior to getting it trademarked because and so there’s a little bit of chance there, right? Like if I come up with Jim’s Cookies and I’ve got to create a logo first and a name and then give it to you and say, “Okay, let’s do the search and let’s see if there’s something out there, right?”
Charis Dorsey:
Correct.
Jim Fitzpatrick:
Is that pretty much the way that’s done?
Charis Dorsey:
Yes.
Jim Fitzpatrick:
Okay.
Charis Dorsey:
So typically we would come up with a name. And so with my process specifically, we do what I call a comprehensive search first. So with the client, it sometimes is the case that the name is just not available.
Jim Fitzpatrick:
Right. Okay.
Charis Dorsey:
And so, we do backup searches to kind of navigate that space and help them find something that can be theirs. And then once we do that, then we’ll submit it to the USPTO.
Jim Fitzpatrick:
Okay. Okay.
Charis Dorsey:
And so, it isn’t always the case that you have to actually be in a space where you’ve launched a business to register with the Trademark Office. We can do it prior to and while you’re still in the product development or business development space.
Jim Fitzpatrick:
Okay.
Charis Dorsey:
But my recommendation is that we always do it up front.
Jim Fitzpatrick:
Okay.
Charis Dorsey:
But if it is a case that we catch you on the latter end, so be it. We’ll tackle whatever issues come from [inaudible 00:13:05].
Jim Fitzpatrick:
What some people don’t realize too that is that if they use their name, if I say that it’s Jim Fitzpatrick Car Wash Company and I grow to 25 locations and I sell that company to somebody, they’re actually buying my name, correct?
Charis Dorsey:
Correct. Yes.
Jim Fitzpatrick:
I can’t then turn around and say, “Okay, I’m going to go to another part of the country. I’m going to call it Jim Fitzpatrick Car Wash Company because that person or that company that bought me says, “Oh no, no, no, no, no. It’s your name, but we bought that as it relates to this product”, right?
Charis Dorsey:
Exactly. That actually happened with DKNY Donna Karan New York. So I typically recommend that the client really think long and hard about incorporating their name.
Jim Fitzpatrick:
Sure.
Charis Dorsey:
And even if they’re thinking about bringing in partners, I’m like, “Do you want to share a portion of the ownership or the ownership rights in your name with the partner?”
Jim Fitzpatrick:
Good point. Yeah, that’s right. That’s right.
Charis Dorsey:
And so when you sell it, there’s this assignment. So you’re transferring of those rights over to that third party.
Jim Fitzpatrick:
Right.
Charis Dorsey:
So we definitely want to be careful of that.
Jim Fitzpatrick:
Yeah. There’s there’s no question about it. So what are some of the most common mistakes that people make when they go into business in the area of trademark?
Charis Dorsey:
So one of the common mistakes that I see is that the clients put the cart before the horse. So they get the assets first. They get the trademarks second. So they’ll get the website, the signage for the building, everything and their marketing. But then they’re not sure if the name will be available or not.
Jim Fitzpatrick:
Right, right.
Charis Dorsey:
And then sometimes they may even actually be infringing on another person. And so that is one of the common mistakes that I see. Another would be the usage of the sign. So the TM symbol, the SM symbol, which stands for service mark, TM for trademark, r with with a circle around it stands for registered. So registered meaning that you’re registered with the USPTO. Okay. So I see a lot of misuse of the signage. So sometimes clients will have, well, not necessarily clients, but I’ll see individuals use the registered symbol when their application is pending, which is inappropriate. Or you’ll see clients who are registered and they still have the TM symbol. Or they have the SM symbol. And so it’s just that-
Jim Fitzpatrick:
Yeah. And that’s telling the public what status it’s at, right?
Charis Dorsey:
Exactly. Exactly. So the TM and the SM, TM stands for trademark. Typically, you see that when you have a client who’s selling goods or a combination of goods and services, they’ll use the TM symbol. If you’re a service provider, like I’m a service provider, so if I were pending, my application were pending, or even before I submitted my application, I’d be able to use the SM symbol. But once it has actually crossed over that threshold and has been officially registered with the US Patent and Trademark Office than that registered symbol is the appropriate symbol to use.
Jim Fitzpatrick:
Gotcha. So now, probably the number one reason that companies and small business owners and entrepreneurs don’t do all of this work first is because of money, right?
Charis Dorsey:
Yes.
Jim Fitzpatrick:
They’ll come to you and say, “Well, I don’t have…” I don’t know how much it is. It’s probably a few thousand and dollars to do it properly.
Charis Dorsey:
Correct.
Jim Fitzpatrick:
But those few thousand dollars are more important than anything at that point in time to start that business, right?
Charis Dorsey:
Indeed.
Jim Fitzpatrick:
Somebody might say, “Well, I can buy a whole lot of product with that money or I can just go out…”
Charis Dorsey:
Yeah.
Jim Fitzpatrick:
And in a lot of cases, people think, oh, it’s not that big a deal. I’ll just do business and everything will be fine, but that’s a big mistake people make, right?
Charis Dorsey:
Yeah. And if I understand the science behind it or the logic behind it, if you have such a finite amount of resources, you want to make sure that they’re allocated correctly.
Jim Fitzpatrick:
Sure.
Charis Dorsey:
But there’s a greater risk. Sometimes clients, I say clients, but sometimes individuals just so happens to fly under the radar. They choose a name that is so unique they’re able to file the trademark second, but the risk isn’t just to the other possible business that’s been using a name, it’s also a risk posed to you because your name may be so catchy, may be so trendy that someone else decides to adopt it.
Jim Fitzpatrick:
Oh, good point. And then they go ahead and get it done.
Charis Dorsey:
Exactly.
Jim Fitzpatrick:
Right, right.
Charis Dorsey:
And then in that case, they may file the trademark application first.
Jim Fitzpatrick:
That’s right.
Charis Dorsey:
And like I mentioned before, it is first to file. And so while it is first to file, you can still come back and fight it, but then now you’re in a space where it’s costly litigation.
Jim Fitzpatrick:
That’s right.
Charis Dorsey:
Or alternatively, you have to go and rebrand.
Jim Fitzpatrick:
That’s right. That you may or may not win depending on…
Charis Dorsey:
Exactly.
Jim Fitzpatrick:
Right. So, I had an attorney when I was a young entrepreneur and he said, “So you can either pay me now and do it right. Or you can pay me later.”
Charis Dorsey:
Exactly.
Jim Fitzpatrick:
“And when you pay me later, it’s four times as much as if you pay me now.” So just for entrepreneurs and small business owners that are out there, do it right the first time, get with an attorney and make sure that all of your bases are covered in the trademark area because this is not something that you want to spend a whole lot of money in and then find out uh-oh, we’ve just dumped a tremendous amount of money, thousands of dollars, maybe hundreds of thousands of dollars, building a company only to find out that we have to change everything now.
Charis Dorsey:
Exactly.
Jim Fitzpatrick:
And that’s to say that you get away with that. Sometimes you get sued, right?
Charis Dorsey:
Mm-hmm (affirmative).
Jim Fitzpatrick:
Because the other company that has the trademark could sue you for the fruits of you using that trademark of their name, right?
Charis Dorsey:
Correct. Mm-hmm (affirmative).
Jim Fitzpatrick:
That’s a whole nother show.
Charis Dorsey:
Yeah.
Jim Fitzpatrick:
But they could come in and say, “Oh, how much did you make? Well, that’s actually our money”, right?
Charis Dorsey:
Yep. They can come back and collect for your past sales.
Jim Fitzpatrick:
Yep.
Charis Dorsey:
They can also shut your website down.
Jim Fitzpatrick:
Yeah. Yeah.
Charis Dorsey:
And they can have your social media presence removed.
Jim Fitzpatrick:
Yep.
Charis Dorsey:
I’ve actually had to do that recently where it is just having them remove your entire page because all of the content is infringing.
Jim Fitzpatrick:
There you go. Yep.
Charis Dorsey:
And so those are real, tangible consequences to not doing your due diligence on the front end.
Jim Fitzpatrick:
That’s right. That’s right. And it’s funny you should say that because that is probably another show, but people will go onto their competition website and they’ll say, “Oh, I love the way that this is written.”
Charis Dorsey:
Yep.
Jim Fitzpatrick:
And they do a cut and paste.
Charis Dorsey:
Yep.
Jim Fitzpatrick:
And then they put it on their site, right?
Charis Dorsey:
Yes.
Jim Fitzpatrick:
Thinking that nobody’s going to… Lo and behold, somebody sees it and says, “Wait a minute, we had to pay a writer to you do that kind of creative writing. And they just stole it from us.” And then they can go back and say, “Hey, we’re entitled to some of those profits,” right?
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