Trademark Attorney Dana Dickson Discusses How Small Business Owners Can Protect Their Intellectual Property

Welcome to another episode of The Playbook with Mark Collier, an original ASBN series that highlights Atlanta’s emerging entrepreneurs, seasoned business owners, and resource experts. Mark Collier is an experienced business consultant in Georgia, and a faculty member with the University of Georgia Small Business Development Center.

Your small business brand, including name, logo, and other design assets, is often the heartbeat of a business, but did you know that it’s also your intellectual property? Seeking out legal representation to help assist with applying for business trademarks is a vital step in protecting that intellectual property. In this segment, Collier is joined today by Dana Dickson, trademark attorney and owner of Dana Dickson Law, who shares her vast experience on all things related to trademarks and trademark law.

Transcription:

Mark Collier:
Hi, everyone. Welcome into The Playbook on ASBN. I’m your host, Mark Collier. Each week on The Playbook, I sit down with the emerging entrepreneurs, seasoned business owners, and resource experts to deliver relevant information to the ASBN audience.

Mark Collier:
In the business world, your business name, logo, and/or slogan is often the heartbeat of a business, and protecting that intellectual property should not be left to chance. Engaging competent legal representation to help businesses apply for trademarks is a vital step in that process. Stopping copycats, bulletproofing your brand, and defending or enforcing your rights is where a trademark attorney delivers that much-needed value. I’m joined today by Trademark Attorney, Dana Dickson, who is going to share her vast experience on all things related to trademarks and trademark law. Welcome into The Playbook on ASBN, Dana.

Dana Dickson:
Thank you, Mark. Thanks for having me.

Mark Collier:
All right. Most business owners are indeed subject matter experts on their particular product or service, but much like me, the surrounding business law is much like a foreign language. What I do know is that trademarks deliver significant value to businesses. Let’s start with the basics there. What exactly is a trademark and why should a business desire to get one?

Dana Dickson:
A trademark is a source identifier. It tells us where to go to get more of the things that we know and love, and want more of. This saves us a lot of time, actually. It’s really helpful for consumers. If you think about the last time you went to the grocery store, if you want something as simple as pasta, you have 20 different options. Right?

Mark Collier:
Yes, you do.

Dana Dickson:
No one is going to read every single box or every single bag to figure out which pasta they want. We go in there looking for particular shortcuts, particular trademarks that are going to help us. That might be wording, it might be the name of that brand. It might be a logo that we’re used to seeing, or sometimes if you bought that same pasta for the past five years, you know with barely looking at that shelf, which one it is because of that product packaging, it’s just being hot.

Dana Dickson:
All three of these things under the right circumstances can be trademarks and they save us a lot of time, consumers, but of course they’re also very, very helpful and important to the companies and businesses that own them. But the second part of what you asked me was why people bother to protect these things and get rid of the screen for them. There are a lot of good reasons for that. I know we have a limited amount of time together, so I’m just going to hit on the top three. First these help to deter other people from using your mark. That can be quite important. Once they see that you have that registration, they know you’re taking this seriously. So they are going to say a lot of times, it’s not worth the hassle. We’ll go back to the drawing board. We’ll come up with something else.

Mark Collier:
As I talked to my clients, often, they often confuse trademarks, copyrights patents. So what’s the difference between a trademark, a copyright and a patent because oftentimes those two threads, those three things are discussed synonymously, but they are very different, correct?

Dana Dickson:
Absolutely. People get these confused all the time. And with good reason, they’re always lumped together, but they do protect very different things. Okay. So our trademark again is our source identifier. It’s telling me where to go to get the stuff I like. The copyright is protecting something a little bit different. This is protection for works of original authorship. We want to think about things like books, paintings, movies, songs, that kind of stuff.

Mark Collier:
Anything original?

Dana Dickson:
Yes. It has to be original to be protected by copyright. It’s protecting the substance of those works. This is not telling me where to go to get the books that I don’t like. That’s the job of a trademark. It’s protecting the actual text of the book where the composition of the song. So if somebody comes along and copies out 10 pages of your book, they just infringed copyright rights.

Dana Dickson:
Patent is a little bit different. Here we’re talking about protection for a new and useful machine or process or a composition of matter things of that nature. This is where we’re looking at someone coming up with a new way of doing something or a totally new product or a new feature for an existing product. It’s going to make that easier to use or more efficient. To distinguish that from trademarks. If you think about whatever the next must have gadget is that thing, the technology that operates, it will probably be protected by a patent. Maybe the design of that gadget also protected by a patent. But if I want to know where to go to buy it, because I must have it, I’m going to look for the logo or the product name or the business name of those trademarks that it’s being sold under. That’s a real quick explanation, but hopefully it helps to kind of separate them out.

Mark Collier:
All right.

Mark Collier:
You are a business owner yourself and as such, can you kind of walk a mile in those shoes of fellow business owners every day? So share with me the proposition of Dana Dickson Law and why you are the best trademark attorney option for small businesses.

Dana Dickson:
I will phrase it slightly different ways, but I’ll tell you why it can be very helpful to have a guide and this process, and then what I consider a few strengths. First of all, to get an idea of what normal looks like, and this context, if you go on the US PTO website, that is the US patent and trademark office. When you go on the US PTO website, you will see that 67%, actually more than that, of the applications that are filed online to register a trademark, those are not approved on first review, meaning they have at least one problem with them, sometimes many problems with them and that’s over two-thirds of those applications. It can be very helpful to have a guide who understands that terrain and can look ahead and say, okay, listen, these are the obstacles you’re going to have. Here’s how we’re going to get around them,

Mark Collier:
You take a proactive approach. Then you say, as you review the application, these are some of the problems I potentially see and why the US PTO office may reject this and that’s valuable information for small businesses.

Dana Dickson:
Exactly, and then in terms of things about me that are a little bit unusual, I actually used to work at the US patent and trademark office.

Mark Collier:
You know exactly what they’re looking for, which is a grid of great value to small businesses, because it will save them time and ultimately money in that regard.

Dana Dickson:
Exactly, having that experience from the inside, it’s very helpful to know, what are the problems we’re going to have? How do we avoid those refusals? How do we get the broadest possible protection for these marks and how do we get around a refusal if one issues? It is very, very helpful. And the other thing I would mention about my firm just very quickly is that I did build it to be different. I definitely saw in reviewing thousands of applications at the US PTO, there were a lot of people who needed help in this space, but for whatever reason, were not able to connect with an attorney who was knowledgeable in trademark law. I built my firm with them in mind, so they would feel respected and heard and have good representation. I never pass my work off to paralegals or less experienced attorneys. I handle everything myself from start to finish. I set things up to be a hundred percent virtual from the beginning. Those overhead expenses that are really not necessary are cut out, so that the fees can be more affordable. I wanted this, to be a service that was accessible to a much broader group of people.

Mark Collier:
What types of things need to be trademarked outside of names, logos slogans? How is that determination made on what needs to be trademarked? More importantly, when?

Dana Dickson:
You really hit on the major ones. They’re by far, the majority of the applications are going to be for logos, or for wording, that’s the product name, the business name, things like that. There are some other things that you theoretically could get a registration for. They’re a little bit more rare. Sometimes they’re harder to get. So if you’ve ever played with Play-Doh or if your kids to the smell of Play-Doh is actually a registered trademark.

Mark Collier:
Really? I learned something new today. That’s interesting.

Dana Dickson:
That’s what we’re here for. If you have ever seen this commercial, it was really popular when I was a kid. I don’t know if it’s on anymore, but the Pillsbury Doughboy, he gets tickled and he had this little laugh. Yes, so that little giggle is actually a registered trademark. You can get registrations for a scent, a sound, a color. There are a lot of things like that, but they’re just much more rare because the whole purpose of that trademark has to be, to point you to where these things are from. Most of the time a scent is not doing that. It has a different purpose for that product. It’s harder to show the trademark.

Mark Collier:
All right, so I’m a small business owner now, and I’ve consulted on a high level with an attorney. I now understand why it’s important for me to apply and obtain a trademark. What are the next steps that you, as an attorney begin to take in order to apply and apply for and secure that trademark? And second part to that question, what happens if I don’t get my house in order, and someone comes along and says they were using my trademark before I was.

Dana Dickson:
Initially, you’re going to have this conversation about what are the marks that I have, how am I using them? What are my priorities, which of these is most important to me? What is my end goal? Once you get beyond that stage, we move into the risk assessment phase, which is really taking a look at who else out there is using this mark, are they using it in a way that is going to cause you a problem later on? It doesn’t have to be identical to your mark, but just close enough, we think it’s likely people will be confused about where these things are coming from. We do that by conducting a search and I use the same methods that I learned at the US PTO and try to see who else is out there. So then I write a letter that summarizes those search results and talk that over with the client, give it a risk rating.

Dana Dickson:
Here’s what I think your chances are, show them the marks that are closest, is this a big threat? Is it almost identical to your mark? Or is it a minimal threat and talk over, what do we think we should do going forward? If it looks like there’s a good chance of getting through to registration. That’s when we move on into the next phase, which is actually filing the application. Depending on which route we’re taking, we have a couple of different options. We’ll be getting together certain information and documents that we’ll need. And then I submit the application to the US PTO, follow up with them in terms of any issues that might arise. From that point forward in the process, there are many different directions that it can take, a tree with many branches. I’ll give you a couple of ideas of things that might happen. You might get approval and go through to registration. That is smooth sailing.

Mark Collier:
That’s the best-case scenario.

Dana Dickson:
Yes, that’s what you’re always hoping for. You might get an approval from the US PTO and they say, we don’t have any problem with this, but then ended up getting an opposition filed by someone else, some other company. They actually open this process up to the public and anyone can come forward and say, wait, wait, wait, don’t let that register because I have a mark, that’s close to that.

Mark Collier:
If that instance happens and they then go on and sue me. And when you can talk about what happens next at that point as well. That’s an important, consideration.

Dana Dickson:
It is, let’s talk about the lawsuit. We’ll put the opposition over here to the side. If somebody sues you for trademark infringement, and I’m very glad that you are asking about this, because I think a lot of people aren’t aware of the possible consequences. They can ask the court for many different things. They can ask the court to order you to stop using your own mark. And that’s true, even if you didn’t deliberately copy them, you came up with your mark by yourself, but it’s just–

Mark Collier:
That can be the death of your brand, unfortunately.

Dana Dickson:
Absolutely, they can also ask the court to make you destroy any infringing goods that you have. Right now, there is a famous case where Nike has sued a company that allegedly took some Nike sneakers and put a bunch of satanic symbols on them and the blood in them. Nike has asked the court, they sued this company for trademark infringement and a couple other things. And they’ve asked, please make this company destroy these shoes, they can ask for that. They can also ask that you have to pay over the profits that you made from using that mark all the time.

Mark Collier:
That can be painful.

Dana Dickson:
Yes, that can be very painful. All this time that you were working, building your company, you were working for somebody else. They can ask for a lot of things, they can ask under certain circumstances for you to pay their attorney’s fees, which is another ouch. There are a lot of different things that can happen, but sometimes, people will say to me, well, what’s the worst-case scenario. I get a nasty note and I have to stop using my mark. That’s not the worst-case scenario. You do need to take it seriously.

Mark Collier:
If you could give small business owners, one piece of advice about their trademarks early on in the game, that could save them a lot of trouble down the road, what would that be?

Dana Dickson:
One thing that I see coming up a lot is problems with logos. People will contact me. They want to get their logo registered, but as we have this conversation about it, we’re finding out they don’t actually own their logo, or they don’t own all the rights and their logo. This can happen in a couple of different ways. What seems to be most common is downloading an image from a website and not reading through all of those terms and conditions of the download. I know we all do this. We buy things online. We scroll through the terms and conditions and click, okay. And the only thing we ever read was okay, but in this instance, you really do need to read through all of those terms and conditions. If it’s a free download, sometimes there’ll be really explicit about it and say, you can’t stop anyone else from using this.

Dana Dickson:
You cannot apply to register this as a trademark. Something that felt really good on that day. I’m going to save myself some money. I’m going to get something for nothing. Well, you didn’t get something for nothing. Cause you bargained away the ability to register that as a trademark. If you’re using it and 7,000 other people on the planet are using it, then it’s not pointing just to your company. That’s one of the things you want to avoid. Make sure you have all of the rights to that mark, and you can use it in the way you want.

Mark Collier:
That makes perfect sense, Dana Dickson, with Dana Dickson Law. I know we’ve just scratched the surface today. I’d love to invite you back in for a follow-up interview in the future, we can kind of peel back some more layers on specifically trademark law, for viewers who want to find you, we will have your website information down, scrolling at the bottom of the screen. Again, I want to thank you for taking time out of your busy day to come in. You’ve imparted some great information and very valuable information that will hopefully help businesses and save them a lot of money.

Dana Dickson:
Thank you. I appreciate the opportunity and I do hope it’s going to be helpful to people. So thank you for having me.

Mark Collier:
Have a great day.

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