233: She Thinks Big, So She Trademarked It with Small Business Attorney Cheri Andrews

Andrea Liebross: Welcome to the She Thinks Big! Podcast. Get ready to level up your thinking and expand your horizons. I’m your host, Andrea Liebross, your guide on this journey of big ideas and bold moves. I am the best-selling author of She Thinks Big: The Entrepreneurial Woman's Guide to Moving Past the Messy Middle and Into the Extraordinary.

I support women like you with the insights and mindset you need to think bigger and the strategies and systems you need to turn that thinking into action and make it all a reality. Are you ready to stop thinking small and start thinking big? Let’s dive in.

Hello, my friends, and welcome back to the She Thinks Big podcast. I am happy to be here today because we are diving into a topic that I think every business owner, every coach, consultant, thought leader, marketing agency owner—anyone out there—needs to think about, and it's protecting your big ideas.

I get a lot of questions about this, or if I even broach the topic and say, "Hey, have you thought about trademarking that?" then people might be like, "Wait, what? Why should I be doing that? Or should I be doing that?" Or, "I haven’t thought about that." So if you’ve been following my journey, you know that She Thinks Big isn’t just the name of this podcast.

It’s my book, it’s my brand, it’s my business. To make sure that no one else could claim it, I had to trademark it. The woman who helped me do that is here today, Attorney Cheri Andrews. Cheri really is an expert in business law and intellectual property. She’s going to walk us through everything that we need to know about trademarks.

So whether you’re just starting your business or you’ve been in this kind of game for a while, stick around, listen in, because we are about to clear up all of the confusion around when, why, and how to trademark your brand, your name, et cetera. So welcome, Cheri.

Cheri Andrews: Thanks, Andrea, I’m happy to be here and looking forward to sharing this information with your audience.

Andrea Liebross: Tell the audience a little bit about who you are and what you do in your own words. I did it in my words, but tell them in your own words.

Cheri Andrews: Okay. So I’m Cheri Andrews. I am a small business and trademark attorney. I’m licensed in Pennsylvania and Maryland. So for one-to-one, just daily services—contracts, policies, that kind of stuff—I work only with clients in Pennsylvania and Maryland.

But for the trademark end of things, because that’s based on federal law, I can help clients no matter where they’re located. I work with them to make sure that they’re getting their brand protected and that they’re not accidentally infringing on somebody else’s brand.

Andrea Liebross: Yeah. So let’s just start at the beginning. What is intellectual property and why should we care about it?

Cheri Andrews: Okay, intellectual property in general is a series of rights. It’s rights you have to content you’ve created, inventions you’ve made, brands you’ve created, and there are several different types of intellectual property. But what you really need to know about it is that if you don’t take action for most of this, then you’re going to end up losing your rights.

So let’s talk just briefly about the different types. First off, there are patents. Patents are all about new and novel inventions. So typically, they are something tangible that you can hold in your hand, that somebody has created that’s brand new or that’s an improvement on prior creations.

There are something called method patents as well. They’re a lot harder to get, and I don’t practice patent law, so we’re going to leave that there, but patents is about inventions. Then there is copyright. Copyright is all about your creative expression. So copyright covers everything from books, podcasts, blog posts, those kind of things, to music, movies, sculptures, paintings, artwork of any kind. So it’s all about that creative expression.

Now the interesting thing about copyright is that you own the copyright the minute you create the thing, which is the only one of the types of intellectual property that you own without filing for a registration. But in order to enforce your copyright, you have to file for that registration.

So you can’t file a lawsuit against somebody saying, "You’re infringing my copyright," if you haven’t registered it with the U.S. Copyright Office. So that’s one area where there’s a lot of misconception around what copyright is and how it works. I could spend a whole episode on that, but that’s not what we’re talking about today.

So then let’s talk just a second about trade secrets. Trade secrets are the things like the formula for Coca-Cola or KFC chicken. Or your particular way of marketing something could be a trade secret. It’s things that are your secret sauce, what makes you different from everybody else.

Trade secrets don’t get registered. You maintain a trade secret simply by keeping it confidential. You keep it confidential by not telling the world about it, or by—if you have to tell someone—getting an NDA signed. That’s trade secrets.

Then there’s trademark. Trademark is the one that we’re going to talk about today in detail. Trademark is all about your brand. It is about protecting your name, your slogan, your logo.

Different things like that that create a source identifier, that identify you and your business as the source of your product or service. That gets really confusing for people as to what actually is a source identifier. I have to work with clients often to say, "Well, that’s not really a trademarkable asset."

So a name of a program, for example, could be trademarkable—or maybe it’s not—but it all depends. There are a lot of nuances to trademark work, which is why it becomes important if you’re interested in a trademark to talk to a trademark attorney.

Andrea Liebross: Gotcha, okay. So trademark is really safeguarding your brand identity and preventing people from profiting off of your hard work in a sense.

Cheri Andrews: Yes, exactly.

Andrea Liebross: Okay, okay.

Cheri Andrews: The main point of it is to avoid confusion in the marketplace. That’s what the USPTO is really looking at is "If we allow this mark to register, is it going to confuse people against somebody else’s mark?" So by giving you basically a monopoly on your particular mark, they’re preventing other people from coming in and using a name the same as—or too close to—yours, and then confusing consumers about who has the product or service they actually want.

Andrea Liebross: Okay, okay. All right, so I get this question a lot. This is the "When should I trademark my business name, my brand, the name of my book?" Like, at what stage should someone take it seriously or start thinking about trademarking or call you?

Probably they’re calling you too late, I’m guessing. Is that true? Or not too late, but you probably would have wanted them to call you before. I don’t know.

Cheri Andrews: So when you really want to start thinking about it is at the very beginning, because choosing the name of your company or the name of your program or the name of your product is an important choice. It’s not just, "Can I register this in my state as a business name?" It’s, "If I do register this in my state as a business name, am I stepping on somebody else’s toes who already has a registered trademark?"

So I love to get involved at the very beginning and help guide business owners to choosing a name for their business that, if they eventually want to grow and build that presence, and they are going to need that trademark, that they’ve chosen a name that’s strong, that’s subject to trademark protection, that’s not infringing on anybody else’s mark, and that will get them where they want to go.

The problem with that, of course, is the names that you want to choose from a marketing perspective—because it tells people what you do—are not the names that really work well for trademark purposes. So it's a bit of a balance between just saying you're mismarketing and it tells you exactly who you are and what you are, versus a name that's really unique and distinctive and that will make you stand out in the trademark world.

Andrea Liebross: Yeah.

Cheri Andrews: So right at the very beginning is the best time to get involved, before you actually file with your state for the name of your business, making sure that that name is one that's going to work. Now, most of the time when I'm meeting with clients, they've picked their name out a while ago.

They're not coming to me at the very beginning. They're coming to me at a point at which they've been in business for a while and now they're thinking about trademark, which is still a good time because it now is better than never.

But then we have to look at—we do something called a trademark search—and we have to look at: Does your name infringe somebody else? Is it too close to somebody else? Is it strong enough to get through the USPTO, or is it merely descriptive of what you do, which would end up being denied by the USPTO?

So we have to look at a lot of different things. And oftentimes I'm ending up saying to these clients, "I wish you would talk to me sooner. I would have told you to choose a different name." But the fun part of it is we get to figure out how do we make this name work, or what small tweaks can we make to it to make it work?

Andrea Liebross: Yes.

Cheri Andrews: Or do we need to go back to the drawing board because, hey, you picked a name that somebody else already registered. Oops.

Andrea Liebross: Yes, I know, because it was interesting. We didn't have to do any tweaks, but I could see how you could tweak it slightly and make it different. I think I came to you after the book. I don't know if it was published yet, but it was on its way to getting published. All the decisions had been made.

I was late in the game and I lucked out. But think about if sometimes if you've put money into branding, website, all that stuff only to find out that you can't use that or you can't trademark it, or if you're using it, you're in jeopardy, someone could come after you, I mean, that's a lot of time, energy, and money. So yeah, sooner rather than later, right?

Cheri Andrews: Like I said, in a perfect world, it's at the very beginning before you even commit to the name for your business. But if you come to me later and we go through the search—and I've unfortunately had this happen with a number of clients—where the name that they've chosen, that they have when they come to me, ends up being something that I can't get trademarked for them because it is confusingly similar, or they come to me because they got a cease and desist letter from another trademark owner.

Exactly what you said about all the money that you spend on branding and setting up your website and SEO and all of those things, that all goes down the toilet. And you have to start over. You have to come up with a new name, you have to come up with new social media handles, and basically redo everything you've done in your business.

There's cost involved, certainly, a new web domain, a new design, all those things. But then there's also the lost opportunity cost of being sidetracked in your business to rename and then having to put that all out to your existing base to understand that you've changed your name. And it can sidetrack you for literally months where you're not focused on building your business, you're focused on redoing.

Andrea Liebross: Yeah, like the rebrand is tough. Okay, all right, so let's say you're going to go for it, what is the process, like what can we expect?

Cheri Andrews: All right, so process—and I'm going to start with: It's not a quick and easy thing.

Andrea Liebross: I tell people that all the time. I was like, "Okay, first off, this is not going to happen in the next month." It's not a, "Oh, check it off the list," because you actually don't even know when you're going to be able to check it off the list, honestly. So, okay, good.

Cheri Andrews: So the process itself takes 12 to 18 months to get through the USPTO. With me, it starts with the trademark search. In the trademark search, we look at not just the USPTO, but state databases, the internet, social media, apps, all the things, to make sure that your name is actually available for registration.

To make sure that there's not an existing registration that you're going to be confusingly similar to. To make sure that there's not so much use on social media by somebody else who may have prior rights. So basically what we're looking for is to make sure that the name you've chosen is distinctive, that there's nobody else who already has a registration for that name or something confusingly similar, and that there's nobody else out there in internet land or social media land who has prior rights to that name because they've been using it ahead of you and then things get a little dicey.

So we look at all those things and issue what's called a trademark opinion letter. And that opinion letter, we tell you what we found in the search and what we think your chances are basically of getting your mark through registration with the USPTO.

Now, let me say this: no matter what I put in the opinion letter, there's a caveat. Nothing is guaranteed in the trademark process because the question of whether something is confusingly similar, whether it's merely descriptive, whether it even qualifies for trademark registration is a very subjective one. And that's up to the examining attorney at the USPTO to decide.

Now I can make arguments and try to convince him or her that, "No, we're right, this is good, it should go through," but there's no guarantees and no trademark attorney will guarantee that your mark will register. But having done the work ahead of time, we know what the potential obstacles are, we're ready to answer them, and it's rare that we get blindsided and get hit with something we didn't see in the search.

So if the search is good, we move forward to the application process. Filing the application sets your priority date, and by priority date, what I mean is that anybody who files an application after you for the same or similar name for the same or similar products or services would have to wait until your application is decided before theirs would be addressed. And if yours is approved and registered, theirs will likely be denied.

So the sooner you get in, the sooner your priority date is, and the more people you're excluding from down the road. The application—I won't go into what all's in it because, you know, that gets very detailed—but once we file the application, we then sit around and wait for like eight to ten months.

Andrea Liebross: So that was true. Your guesstimate was true. We sat around and waited, right?

Cheri Andrews: So eight to ten months, then someone at the USPTO, called an examining attorney, will take a look at the application.

They will either approve the application for publication or they will issue an office action. Now, roughly 70% of applications that go through the USPTO have office actions issued. So we're not surprised when these come through.

We're basically kind of expecting them. And if we get an application through without an office action, then we cheer because, hey, it's going to publication, we don't have to do any extra work. But let's assume an office action comes in. We then respond to the office action. That can be as simple as you need to disclaim a word.

So, for example, if your name is ABC Wonderful Marketing, you're going to have to disclaim "marketing," because there are thousands of other companies out there that need to be able to use the word "marketing." So, that's a disclaimer.

It might be that the USPTO examining attorney has determined that your mark is merely descriptive, and they're willing to move it to what's called the supplemental register. Which means it's not on the principal register, it's on the supplemental. It's there, and after you've been using the mark for five years or more and you've acquired distinctiveness, you can petition to have it moved to the principal register.

So it's still trademark protection. It's still registered. It's just not quite as strong. It could be that they're saying it's confusingly similar to some other mark, and then you need to file a response that says all the reasons why it's not confusingly similar.

There are about a hundred other reasons why the USPTO examining attorney might issue an office action, but we take a look at what they're complaining about. Might be they don't like the specimens you've submitted and they need alternate specimens. It might be they don't like the wording of your goods and services description and they need to tweak that.

So there are a lot of different things in there. But we file a response to the office action, and then we wait to see, does the examining attorney agree with us? Did we meet the requirements of whatever it is they were complaining about?

Then hopefully, we've accomplished that, and the application moves forward. When it moves forward, it moves into what we call the publication stage. So it gets published in the Official Gazette, and that opens up a 30-day window for anyone who has a registered mark to file an opposition if they believe that your mark is going to cause them problems.

I want to say, if you've done the research upfront and done that trademark search and really dug into what other marks are out there, you already know that there's a likelihood that there's not going to be any opposition filed. Because if you thought there would be, you probably wouldn't bother spending the money to file the trademark application in the first place.

If I had a reason to believe that there was going to be an opposition, I would be counseling my client to think of another name, basically.

So let's assume we get through the 30-day period and no opposition is filed. Then your mark goes to registration. That takes the USPTO—I'm not sure why—but takes them about another 12 weeks, and then they issue the registration certificate. And now, yay, you are registered.

So that's the process. And the whole thing, as I said, 12 to 18 months. A lot of that range depends on whether you get an office action and how long it takes the USPTO to review your response to that.

Andrea Liebross: While you're going through that process—and this is something that you and I never talked about, but I thought later on about it—can you use that TM in a circle? Or when can you use the TM in a circle versus the "R"?

Cheri Andrews: You can use the trademark sign, the TM, and it doesn't need to be in a circle. It can just be the TM, and anytime, whether you have filed an application with the USPTO or not.

Andrea Liebross: Really?

Cheri Andrews: Really. Okay. The TM only tells the world that you think this is your intellectual property, that you think this is your brand.

Andrea Liebross: Oh, okay, interesting.

Cheri Andrews: That you're claiming it, but it doesn't give you any rights. It's just a "I'm claiming this." And for the most part, we assume that people are doing that when they're in the application process. That they're taking it seriously. The registered symbol, which is the capital R in a circle, cannot legally be used unless your mark has officially registered with the USPTO.

Andrea Liebross: Okay, got it.

Cheri Andrews: Now I have seen people using that mark because they don't understand what it is. And they're using it illegally because they haven't even filed an application with the USPTO. But that R actually stands for registered. And it means you have in hand the registration certificate from the USPTO.

Andrea Liebros: Okay. Okay. All right. So thank you for clearing that up. So once I got my trademark registered, I did feel sort of this huge sense of relief. But I also then started thinking—and you helped me think through this—is this just a one and done? "Is that all I need to do?" The answer was no.

Cheri Andrews: No, it's not just the one and done. Once you have the registration, you have established your rights to the name, but you can lose those rights if you don't be proactive about maintaining them.

Andrea Liebross: Yes.

Cheri Andrews: So maintaining includes policing to make sure nobody else is using your name. If you find people who are using your name for the same or similar goods or services—now, if they're using your name for something totally different...

So for example, your name is for business coaching, and in that world, if somebody else came along and used "She Thinks Big" for medical services, that would not be an infringement. That would not be a problem. They are allowed to use that name for something totally different.

So if you find someone using your name for the same or similar services, you need to send them a cease and desist letter and say, "Hey, here's my registration certificate. I own this name. You need to stop using it."

If you don't do that policing and send out those cease and desist letters, you can eventually lose the rights to your name. The other thing is there's something called maintenance filings with the USPTO. So after you've received your registration certificate, your first filing will be between years five and six.

You will have to let the USPTO know that you are in fact still using that mark, and you will have to provide specimens to prove that you're still using that mark.

The second maintenance filing is between years nine and ten. Same deal. You have to prove you're still using the mark. After that second filing, it's every 10 years. So at the point at which you stop doing the maintenance filings, you will lose your registration.

Andrea Liebross: Okay.

Cheri Andrews: Your registration can go on and on for years and years and years—30, 40, 50, 100 years—as long as someone keeps filing those maintenance reports saying that the mark is still in use.

Andrea Liebross: Okay. I bet that's where some people drop the ball, right? I mean, yeah.

Cheri Andrews: They do. Then they lose the registration, and somebody who wanted that name is waiting in the wings watching to see if they file their maintenance documents. And when they don't, they swoop in and file and scoop it up.

Andrea Liebross: Yeah, interesting. Okay, so having the trademark does increase the value of your business in a sense, right? So if you were ever to sell your business, having that registered trademark is a huge asset. Agreed? Would you agree?

Cheri Andrews: Agreed, especially if the—so let's take, for example, the business name. Think about this. Let's do one that everybody knows: Nike. Okay, Nike Corporation is the business name. "Just Do It" is their tagline. The swoosh is their logo.

They have all that trademarked, as well as the name of pretty much every product they've ever put out. So think about, you know, Air Jordans. You've heard of it. You know what it is. It's theirs. If Nike wanted to sell off, whoever bought that would want that name, that tagline, that logo—because without it, it's not Nike anymore.

This is the same for you, even though you're a smaller business owner, even though you don't have the global reach of Nike. It's still the same thing. If you get to a point where you're ready to sell your business, owning those assets makes your business more valuable.

Andrea Liebross: Okay. Yeah, totally. That's the thing, because sometimes people talk to me about how they want to create a succession plan, they want to move on, they want to sell their business. And if they have their name trademarked, that creates more value. Interesting.

All right. So, here are my top three questions—statements, I guess—that I get that I think we need to give our opinions on.

All right, someone says to me, “Well, I mean, I own my business name because I registered it as an LLC.” That is a misconception, right?

Cheri Andrews: That is a terrible misconception. It's not just your business name, it's also your URL.

Andrea Liebross: Yeah, your domain name.

Cheri Andrews: Right, yes. Owning those doesn't do anything more than your domain name. What you own is the right to use that particular string of characters on the internet. That's all it means.

Your LLC business name registered with your state, all it means is that you are allowed to use that name in your state. Period. It does not give you trademark rights to it. And someone else who may already have been using that name, who's filed a federal trademark registration, can come along and file a cease and desist, even though you own the name in your state for your state registry purposes, it doesn't count for trademark purposes. If someone sends you a cease and desist, they can force you to change your business name.

Andrea Liebross: Yeah, not good. Okay. All right. What about, “Well, trademarks, they're only for big companies.”

Cheri Andrews: Oh, can I say hell on this podcast?

Andrea Liebross: Yes.

Cheri Andrews: Hell no, it's not just for big companies. In fact, it tends to be the bigger companies who own marks, who are squashing all of the small business owners because you're not taking trademarks seriously.

So they're the ones who have marks, and it may not even be the same exact name as you, but if it's close enough, they're going to come in, they're going to send you that cease and desist letter, and they have the money and the legal resources to just run you under. So you end up not being able to fight them. You have to change your name.

So by filing that federal trademark, you secure the rights to your name so that nobody can come in and take it away from you.

Andrea Liebross: Okay, do it, go do it out there, people. All right, this has been so insightful. So if someone is out there thinking about trademarking, what's their next best step?

Cheri Andrews: The first thing they should do, I would say, is contact a trademark attorney and have a discussion about what their marks are, what ones are subject to trademark protection, and whether or not it's worthwhile for them to move forward with a trademark.

Most trademark attorneys will do that initial session for free. There are some I'm aware of that do charge for that initial consultation, but then they will take the amount you spent on that and apply it to your trademark application if you move forward.

So it depends on which kind of attorney you end up with. But you talk to a trademark attorney and find out. The reason why I say you're finding out whether it's worthwhile or not is because if you have a really generic name, you're not likely to get trademark protection, so there's no reason for moving forward.

If you're never going to do business outside the confines of your own state, so let's say you're a landscaper, you're going to hit two or three counties, maybe. If that's your geographic area, and you're never going outside those confines, you don't need a federal trademark. You can get a state trademark.

So you can register with your state trademark database. It's quicker, it's cheaper, and it will cover your needs.

When we look at this, not everybody needs to go file a federal registration. I know there are attorneys out there who will tell you, “Oh my God, you need to file a registration and you need to do it now. You should have done it last month.” I'm not that attorney.

I'm going to talk to you honestly about the value to you and your business and whether the asset you're creating—the business you're creating—is even subject to being sold or transferred.

I mean, let's say you're a business coach, but you coach in such a way that it's 100% on you. And the idea of selling the business just completely wouldn't work because your clients wouldn't go to anybody else. The only person they want to talk to is you, and you're not into training somebody to become you.

And realistically, what's going to happen when you decide to retire or stop doing this business is you're just going to let it end. You'll let your clients drift off by attrition, and you're not looking to sell it or anything like that, then you probably don't need a trademark.

So we talk about all of those things. And going back to those who will say you have to file right now, filing for a trademark is not an inexpensive endeavor. It's a little bit pricier of the things you might be doing for your business.

So if you're not sure that the business model you've designed is even going to get legs, you might want to test the market and make sure that your business is actually going to make you money before you file the trademark.

So there's a lot of things that go into that, that you want to talk to an attorney about to make sure that moving forward is even the right step for you.

Andrea Liebross: Totally, yes. All right, so thank you, first of all, for sharing your expertise. I hope—whoever's listening to this—I hope this is really helpful and insightful for you, and you're willing to explore this and take the right steps to protect what you've worked so hard to build.

For all of you out there who have been thinking small about trademarks, it really is time to think big, no pun intended. I would recommend that you reach out to Cheri. Cheri, what's the best way for them to do that?

Cheri Andrews: The best way for them to do that would be to go to my website, which is my name. It’s cheriandrews.com, and there is on my website information about trademark, a link to book a trademark call, and we get on a Zoom call and we talk about it.

Andrea Liebross: That’s what I did.

Cheri Andrews: I want to say, even if you’re not feeling like you’re ready to move forward to an application, getting the trademark search done to make sure that you’re not infringing somebody else’s name—and that you don’t have to worry about a cease and desist letter showing up on your doorstep—there’s a lot of peace of mind involved with just that piece of it. So even that might be something to consider if you’re not ready to move forward to application.

Andrea Liebross: True, totally true. We will have the link to Cheri's website in the show notes, of course. If you are listening to this and you think that someone else out there needs to hear this, please share this episode with them.

You’d be doing them a favor. And I think more and more female business owners need to know this kind of thing because it really is important. You’ve done a lot of hard work. So if it needs to be protected, let’s protect it.

Okay, my friends, I will see you next week. Cheri, thank you for being here. I really appreciate it.

Cheri Andrews: It’s been a pleasure. So happy to be here. Thank you.

Andrea Liebross: Listeners, thank you for taking us on your journey to Target or folding laundry or doing whatever you’re doing as you’re listening with us today. I will see you next week. Remember, keep thinking big, keep building, keep doing what you do best. See you next time.

Thanks for tuning into the She Thinks Big! Podcast. If you're ready to learn the secret to unleashing your full potential, don't forget to grab a copy of my book, She Thinks Big: The Entrepreneurial Woman's Guide to Moving Past the Messy Middle and Into the Extraordinary. It's available on Amazon and at your favorite bookstore.

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