Badass Is The New Black (Season 3) Episode #27 Why You Need To Trademark Your Brand With Sarah Waldbuesser

It’s very beneficial to trademark your brand for protection. How do you know it’s time for a trademark for your business? Dive into the topic of trademarking with Sarah Waldbuesser and Krissy Chin as they elaborate on the value it brings to any business and how you could differentiate your business from others. Sarah is an attorney and an online business owner. She shares her entrepreneurial journey, how she learned and figured out her niche. Moreover, Sarah elaborates on prioritizing what's most important in our trademark decisions. In this episode, Sarah informs us on legally protecting ourselves from contracts and terms and understand the trademarking process to know when and how to trademark. 

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Why You Need To Trademark Your Brand With Sarah Waldbuesser

I talked to Sarah Waldbuesser from Destination Legal about trademarks. Should you do it? When should you do it? How do you do it? I was fascinated to find out the kinds of things that people trademark for their business, like the brown color on a UPS truck. Did you know that that is trademarked? It's crazy. We cover a lot and Sarah even teaches us the gut-punch test to help us decide what we should be trademarking in our business. If you have a brand name, a podcast, a course, membership site, something you're selling online and you would be devastated if someone told you that you could no longer use that name or that logo then you are definitely going to want to read this episode all about trademarking. 

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Let's welcome Sarah Waldbuesser to the show. She's an Attorney for coaches and online business owners. After several years at a law firm and a few career jumps, she ended up falling in love with online business and loves helping entrepreneurs achieve their dreams in a smart and protected way. She's also a wife, a mama, a traveler and a food and wine lover. When not at her computer, she loves hanging out with her new baby, having wine with friends, flying around the globe and connecting with other online business owners. Sarah, welcome to the show. I'm excited to have you here. 

Grow in your own business and fall in love with your work and the skill set you spent a lot of time learning. 

Thank you so much for having me. 

I'm excited to dive into our topic of trademarking. Before we jump in there, I've been talking a lot with my audience about taking the knowledge that they have in their head and being able to turn that into something that they could sell to make a profit. I'm going to use you as an example that that's what you've done. You've taken your background in law, found a niche that you love to do and figured out how to offer some services in a way that allows you to build your own business online. I assume it's much more flexible than maybe when you were working at a law firm. 

The interesting thing about it is I didn't think it would end up this way. I didn't like being a lawyer at a law firm. When I went to start my own business, I tried a couple of things before. I didn't think I would love to go back to the law. At one point, I had an eCommerce store and I was doing some consulting online for online brands. Through it all, people kept coming to me with legal questions. Finally, I was like, “There's a real need here that I can serve. Let's give it a try.” Once I dove in and found my niche, amazing women that are growing their own businesses, I did fall in love with it and have been able to use the skillset that I had paid for and spent a lot of time learning. 

I'm hearing more and more that. That's so common, what you started in your entrepreneurial journey. Same for me, the LLC I started, was not anything of what I'm doing now. It's letting this involvement but I think that has to happen in order for you to figure it out. There are probably fewer people that are like, “This is what I'm doing.” They jump in and ten years later, they've scaled their business doing the exact same thing. It does evolve as you dive in, learn more, put the feelers out, meet more people, network and figure out like, “I think I'm supposed to be going this direction while I was going this direction.” 

I love what you're doing now. I've used so many of your templates and I know we'll share a promo code. I've used many to simplify my journey as a course creator, as a membership site owner. I've used ones just for terms and conditions, privacy protection. I've used your private coaching template. I've used your template for course creators to protect my course. I've used it all. I know it saved me thousands and thousands of dollars being able to put that template in, do those little modifications that you have. It's such a dream. I’m so for a template. 

That’s peace of mind too. You have the benefit of saving all of that money but the confidence and the peace of mind you have knowing everything you're building is protected. 

This is something that I'm excited to talk about because it's something I haven't done for my business. It's like, “Krissy, what are you doing? Why aren't you doing this yet?” It's been on my to-do list for so long. After this episode of me like, “Tomorrow, it's definitely moving to the top of the list.” Trademarking. Trademarking things in your business. I'm definitely seeing a whole lot more trademarking going on out there. I used to just see it for these big Fortune 500 companies, Nike or whatever. I'm seeing it seems everyone is trademarking everything, even for the littlest slogan and I'm like, “Can you trademark that?” Let's talk about it. First of all, what is trademarking? What does it do for you and your business? 

It's true. A client once said, "In the online space, it seems like it's a race to the trademark office." Everyone is going after that protection because they see the value in it. To take a step back, there are several kinds of intellectual property you would have as a business owner. They're protected by different things. A lot of people confuse copyright and trademark. Off the bat, I'm going to say copyright is about your content. It's about things you're creating, your course, an eBook, an image. Anything that you create is protected by copyright. Trademark law protects words of something that you're selling. It can be a brand name, it can be a slogan, it can be a logo, it can be a course name, a mastermind name, a product you're selling. It protects anything that you're selling. Trademarks are meant to distinguish goods and services in the marketplace from being confused. 

For example, UPS has actually trademarked the color brown for mail delivery services. If you see a brown truck, you know that it's UPS. If FedEx decided to get a brown truck and put FedEx on it, they would be committing trademark infringement. You cannot do that. Starbucks, they have trademarked that green mermaid logo for coffee. If Dunkin Donuts tried to do anything similar, they wouldn't be able to. It distinguishes who is making it in the world. In the online and business space, this comes up a lot with business names and names of programs. There are so many that we could get into any coaches and business owners are trademarking the name of their business, the name of their course so that nobody else in the industry can use it. 

For example, to use me, I have several trademarks. One of my main ones is Protect Your Passion. I came up with it at the beginning of my business. I use it all the time, #ProtectYourPassion. Another online attorney started saying, "Protect your passion." She likely didn't know that I existed. I was able to go to her and say, “I have this trademark. You have to stop using this in your marketing.” As an attorney, she knew that and she did. I have tons of clients with the same issue. Whether someone has a podcast name that's similar or they decided to have a similar course or program of a trademark that someone already owns, you then have the power to stop them from using it.  

Trademark registration allows you the ability to own your brand name and to stop others in your industry from using it. In your industry, it’s important. For example, you have Dove chocolate and you have Dove soap. Those are two different industries with the same name. You can have that. If someone has your name and they are selling pumpkins, something totally random, it's okay because the trademark registration is really about protecting consumers from being confused in the marketplace. 

I definitely ran into this when I was doing my Build A Blissful Business Course. The first name that I had come up with, I don't remember all the details but I remember it was about branding. A big part of that course is developing your brand, whether it's through the messaging or the visuals. You were a part of this group that I was being coached by. I was like, “Look up the trademarks.” It was like, “Someone else almost has this exact same thing.” Your advice in there, it was like, “If they come to you later and say, 'We've trademarked this and you can't do it.'” I've started building this brand around this name and people know me for this course and I have to change it. I'm going to be so devastated. At first, I was devastated for about an hour. I was like, “Let's just come up with a new name.” I haven't done everything. I had started just marketing for a waitlist. Everything wasn't branded to that. It was an easier swap. I had done a little bit. I couldn't imagine, two years in, branding and being like, “I didn't do the research. Now, I have to rebrand the whole thing.” 

A rebrand like that can cost thousands but that's still better than being sued for trademark infringement, which can also happen. It can be frustrating. There was a coach who had been running a group program for years and was very well known under this name. Someone came in and trademarked the exact name. Even though she had been using the program name for a little bit, she had to rebrand and change everything because this other company got in and got the trademark. If only she had done it a little bit earlier from the beginning, she wouldn't have had to have gone through that. I know that it can be difficult if you're that far down the road to have to go through that process. 

That's interesting because I feel like I have looked up online. If someone doesn't have a trademark and you trademark it before they do but they've been using it forever, legally, you can then go back and do that. I think what I had read was like, “If they've got the website, if they've got all the social handles if they can prove they've been using it then they might have a case there.” Are you saying that's not the case, then? 

What you're talking about is something called Common Law Trademark Rights. If you've been using something for years at a time and have garnered enough of the marketplace, you could stop someone else from registering the trademark. It is extremely difficult to do that unless you have millions and millions of followers. This isn't just, “I've been using it for three years. I have 10,000 people on my email list.” A judge is not going to take that as you have enough common law rights. This is like, “I literally have millions of followers.” You need to have a really strong corner of the marketplace to be able to stop someone from registering the trademark in that way. Technically, it's possible. Most people in our world, in this online space, are not going to have what they need to challenge somebody else coming in to register a trademark. 

The beginning of the trademarking process is to research. 

I feel like I would feel horrible if I was like, “You didn't trademark it.” 

There are actually people out there called Trademark Bullies that see people that should have trademarked and haven't and try to sweep in and get the name. It definitely does happen. 

I don't know if this would be illegal or not, but I think people do it with websites and domains. They buy domains and then they put them back up for sale for a much higher price. I suppose someone could probably be like, “You didn't trademark it but you can pay me.” 

There is something. You can always do that. If it's done under malice or where you want to try to get money. For example, one of the Kardashians, I think it was Kylie maybe. Someone had trademarked their daughter's name, Storm. Someone had swept in and tried to trademark this Storm name. Kylie challenged it and actually won because this person had done it purely out of malice to get money. There was no intent to sell anything under that name at all. It's a case-by-case basis but sometimes those trademark bullies end up in trouble. 

Puts me at ease a little bit that we can at least try and stop the scammers out there. That leads me into that thing like don't even let that happen. Trademark first. Should we trademark our course name? 

If you have a signature course that you're planning to sell and have it be a big part of your business, you should absolutely trademark it. That's the only way to own that name and make sure nobody else in your industry is using it. There are a lot of words and phrases that can become commonplace. If you want to make sure that you have that flexibility and assurance that this is your name for good, you absolutely want to do that. 

Slogans like little things that you're saying all the time. Are you saying that would be a good idea to trademark those slogans? 

The thing with the trademark is you have to be selling something under that name. You have to have either coaching services, a podcast, a blog that could make money through advertising. A course, a membership site or a product. You have to show the United States Patent Trademark Office that you have something for sale. During the application process, we actually have to submit a specimen of a sales page or something that shows someone can buy that product. If it's a slogan that you just say, it might not fly. You need to tie it somehow to goods and services. 

When I always say, “Done is better than perfect,” and besides the fact that tons of other people say that too, that wouldn't be trademarkable because I don't have a course called Done is Better Than Perfect. It's something I say or like, "When you speak to everyone, you speak to no one," or "Marketing matters," things like that. It's not trademarkable. 

Unless you decide to have the Done is Better Than Perfect into coaching intensive or create a service under it then you can. You bring up a good point. General phrases are not great trademarks. Things that are more distinctive and more unique make the best trademarks. When you think about words that have become known, like Dubsado. Is that a word? Made-up words like that are really strong trademarks because they're distinct in the marketplace. 

I wish I had these examples that I could pull out. I'm definitely seeing a couple of commercials where they do have this slogan. Maybe they don't have it trademarked. Maybe they have it copyrighted or something but the slogan. 

They might. If it's tied with a product that they're selling or it's on a commercial, that would be considered marketing a good or service. Nike's “Just Do It” is trademarked. It's not like they have a shoe that's like, “Just Do It” but because they're selling shoes. That's part of their marketing. It's tied to what they're selling then that is what will fly. 

What else should we be thinking about in our business to trademark? We've hit course names. I assume membership names, membership program names. 

Your business name, that's a big one. Podcast names is a big one. It can be disappointing to have a podcast for years and then have someone else get the trademark and you have to change the name. That can be hard. If you have a product that you've created. Maybe you have a special, unique something or other on a coffee mug. You can trademark that. If you just have an online shop selling goods, you can trademark that. You can trademark anything you're selling but for the online business space, we've touched on the main one. The names of your programs, your courses, your membership sites. If you run an annual retreat and your business names, those are going to be the big one and then the podcast. 

The question I get all the time is, “When's the right time?” You said you know you’ve been waiting maybe a little bit too long. You can trademark even before you're selling something. If you have a new course that you know is going to be amazing and you want to have it in your business for years to come, you can trademark it before you're selling it under something called an intent-to-use application. Meaning I intend to sell this in the near future but I want to go ahead and reserve the name.  

Amazon has over 900 trademarks. A lot of them on reserve for future products. The real test I like to say is the gut-punch test. Here's the gut-punch test. You're going to be our guinea pig here. If you got an email tomorrow that was a cease-and-desist letter for trademark infringement saying that you needed, immediately, within ten days to change the name of your podcast, how would you feel? If you get a gut punch like, “It's time to trademark," probably very soon. If you're like, “That would suck. I'll just rebrand. It's not a big deal,” then maybe it's not. If you really felt that gut then it's time to trademark. 

People love the name of my show. For marketing purposes, I'm like, “It is not super specific to what we're talking about here.” I've always had this back and forth of, “Should I keep the name? Should I change them?” I'd probably be like, “There's my sign from the universe, God, that maybe I need a different name.” I do love it. I think I should probably trademark it just so that doesn't happen. I have the choice if I want to keep it or not. Personal question but maybe this can help other people too.  

In my GROWorkspace brand, we actually have a couple of courses that our members can use for their community. We have one called 28 to Elevate. It's a wellness program. Completely put together 28 days of wellness that they can use. I keep thinking about like, I should trademark that, but I still want them to be able to use it but then they would have to use the name. Does that make sense to do something like that? It's a program that I've created and licensed it out, then they have to use the name. The idea of trademarking it and making sure they use the name so that if Sarah is selling it and Peter's selling it then it has to have the same name so that they have a shared audience. They're not confused about buying the same program because it has a different name. Does that make sense? 

When you are investing in your business, it shows that you're serious.  

You're saying they can use this course. They can sell it to their people. 

They can't sell it. They can use it to bring in leads and they can sell something else. If they do coaching or something, they can pair that with it and sell that. They actually can't sell it. Being a paying member, they have access to use it as it is. 

You're talking about a license and you would outline the terms of how that works in the contract with them. In their terms of purchase, you would say, “I'm giving you permission to use this course under this name.” You would want to trademark that because then you own the name and say, “You need to use this name under it.” It's clear what somebody is buying and they don't end up buying the same thing twice because it was a slightly different name. 

When you trademark something, should you have the little TM symbol on it? Everywhere that it is, shouting to the world that this is trademarked? 

There are two symbols. One is TM, which means Trademark. One is an R with a circle around it. The R with the circle around it means you've actually registered the trademark with the trademark office and you own it. Other people cannot use it. The TM actually has no legal significance. It has no legal strength. You can use it to show the world that you're intending to trademark or you're claiming ownership of it. If you see someone with a TM, they might not own it. They might not have registered the trademark. They're just claiming ownership of the word or phrase and saying, “I intend to do this in the future.” For the first couple of years of Destination Legal, I didn't own the trademark yet. I was like, “I don't see a need at this point.” Where it's like, "Protect your passion," I was like, “I'm getting that right away.” I held off for just a little bit.  

I would say Destination Legal TM, which means I'm claiming ownership of this but as I said, there's no legal significance. If you are intending to trademark and you're claiming ownership, you can use the TM at any time, but that registered, the R with the circle, you can only use once you've completed the trademark registration process, which can take up to a year or longer. It's a long process. The minute you file your application, you start getting legal protection. Even if you don't have a fully registered trademark, you do have some legal protection. Anyone coming after you, the USPTO will review your application first and get processed first. 

My next question is how much does it cost to trademark? I think the price just went up. 

It did. There are two costs to think about. The filing fee per class. There are 46 different trademark classes. Each class could cover numerous things. In the application, each class costs $250. There can be higher prices. For example, if you are trademarking a course but then you also want to sell that course name on t-shirts or put it on a coffee mug, that's a different class. That would be two classes. That would be $500. The other cost to think about is the attorney's fees. You can file a trademark application on your own but it is super risky. There's a lot of things that go wrong. A lot of people that try this on their own that end up losing their trademark or hiring an attorney. It's one of those things. Let the experts handle it. You're not going to do your own root canal or fix your own plumbing. There's a reason to hire a trademark attorney to help you figure out which of those 46 classes you belong in, how to describe your trademark so you're getting the most protection. 

Attorney's fees can range anywhere from $1,000 to $5,000 to $10,000. It depends. At Destination Legal, we’re a couple of thousands and that's a full-service package. When you're looking at a trademark attorney, you want to see what's included. A lot of attorneys just file and they leave you to it but that's not the end of the process. You could receive what office actions from the trademark office. There could be opposition. There's a lot of things that can go wrong. Something that's unique about our packages that were with you through the entire process, it's all included. There are no sneak-up fees later on. We have a client who had worked with a previous attorney and they kept stacking fees. This one trademark ended up costing her over $8,000. I looked at what they were doing and I'm like, “This is an attorney that I thought was trying to take advantage of.” Something that we pride ourselves on is the transparency of this one price, flat fee and you get everything included. 

That was going to be my next question. I was like, “Do we DIY this or do we hire the help for those ones?” 

You want to hire help for this one. I've even had people try to use LegalZoom because they think that they're getting an attorney. In a way they are but they don't communicate well. I've had numerous people who started on LegalZoom and they're like, “I have no idea what's going on with this,” and then having to come in and ask for help down the road. 

We had talked about this before and we haven't talked about it yet on here. I want to make sure that we cover it. If there's anything else, we can throw that in before we give your free gift to everyone that they definitely need to get their hands on. Can trademarking help you make more money in your business? 

Absolutely. Besides saving money from being sued or a potential rebrand, which can totally take your business, a trademark infringement lawsuit could cost you $100,000. It makes you the expert in the marketplace. When customers see that you've trademarked a course, trademarked a name, it adds this layer of expertise and legitimacy. If you look at the big coaches, Marie Forleo, Amy Porterfield, they have 5, 6, 7 trademarks. They trademark a lot of things. A lot of clients that I have now are coming back for 3, 4, 5, 6 trademarks because if you're a multi-6 or 7-figure business owner, you have this intellectual property that you need to protect. They see you as, “This person is for real. They are the boss of their business. They're taking legal seriously and protecting it.” That is going to be attractive to your audience. 

If you are investing in yourself and in your business. It doesn't mean you know way more than everyone else. It shows that you're serious. If you're investing this money, not only is that going to hold you accountable when you're like, “I've invested in trademarking and all these other things,” it's going to hold you accountable to keep going and moving forward. Appear to your audiences. It’s the same as what I've had on a ghostwriter about becoming an author. How becoming an author can set you apart from everyone else because you're doing that next thing. You're investing in yourself. You're showing people that you're here to do the work and help and serve them. Thank you for that information. Are there any other little tips and tricks or words of advice that you want to share about trademarking? 

Another question I get all the time is, “How do I know if my name's taken or if it's trademarked?” There are two things you can do. The first thing you want to do whenever you're naming your business, a program, a course is to Google it. Google the name and see what else is out there. There was a friend years ago who had named a group program and been running it for 6 to 8 months. They got a letter that someone else was trademarking it and she needed to change the name. The first thing I did was just Google and I saw this other coach come up immediately with the name of the program. If she had just done that, she would have known to name it something else. Just Google it. Check social media handles, see how it's being used and you can always go to the USPTO website, which is USPTO.gov. They have a free search there where you can see if it has been trademarked or if it's being trademarked. You can save yourself a lot of heartaches if you do that at the very beginning of the process before you invest in the brand design. 

That's definitely what I used for my course. When the trademarking came to my attention after the fact, I looked it up. That's handy to be able to do a quick Google. Whenever I have an invention idea, I'm like, “I'm going to Google this and see if it exists,” and there are 50 things. I'm like, “Clearly, I wasn't the first person to think about this changing someone’s life.” I love those. If you've got a name, maybe you're already using, when you've got that gut punch, like if we sent you a letter and said, “You got to stop using it.” If you're super disappointed, devastated or would just be like, “This stinks,” I think it's time to think about trademarking. If we have a list of ten things that we want to be trademarked but we can't front the bill for all of those things, where would you say to start with? 

I would prioritize what's most important in your business, your business name. If you have a signature course or program or membership site that you see in your future then that's where you want to start. Use the gut-punch test. Do you want to invest in those things that you don't want to risk losing? 

You've got a free gift. I'm going to have you tell them about why do they need to get it, what they are going to get out of it. 

It is an overwhelming process and we didn't even really dive that deep into it. I have a trademark roadmap, which basically just shows you how the trademark process all works. It's just one page. It's not scary. It'll give you an idea of what is involved in the process, how long each step takes. You'll be able to get that at DestinationLegal.com/Krissy. That will just give you a good jumping-off point to be like, “What is this trademark process all about?” 

There are so many other things that we could talk about. If you want Sarah to come back and talk about more legal things, how to protect your business, we mentioned at the beginning, how I've used your templates for terms and privacy. It's many things that we could talk about that you probably aren't doing to protect your business. If you guys want Sarah to come back, drop a little note and say, “Bring Sarah back,” and maybe the topic that you would love to learn more about when it comes to protecting your passion. Where can we find you? Where are we hanging out? They're going to connect with you and download your great gift. Where should we find you? 

Definitely find me on Instagram @DestinationLegal. That's where I've been hanging out and working. I do some live training on there and some legal tips. DestinationLegal.com is where you can find the legal shop and the templates and learn more about trademarking. Those are the two big places. 

Get on Sarah's email list because she sends out amazing, valuable emails. You send them out regularly. I've noticed. You're one of the people that send out emails regularly and I'm always excited to see what's in there. I can't say that very much about most people. I learn a lot of things through being on your email list. Get on her email list. If you download that freebie, I'm sure you'll be added to it. If you guys do want any of those templates that I mentioned that I've used, if you're launching a course, if you're launching a membership site, if you're doing private coaching, you need a contract with those people and terms and things to protect you.  

I do have an affiliate code. If you do purchase, a little comes back to me to support my family, which is much appreciated. The affiliate code is KRISSY. Whenever you put one of those templates in your cart, you can put that code in and get 10% off, which is amazing. Thank you for offering that to my audience. Thank you, Sarah so much for being here. This was super valuable information. I know what's going on my to-do list. I'm going to do the gut punch to a few things and see what I need to move to the top of the list to start trademarking. Thank you so much for being here. I appreciate you. 

Thanks for having me. 

 Important links: 

• Destination Legal - Use Promo Code: KRISSY at check out to get 10% off!
• Sarah Waldbuesser - LinkedIn 
• Build A Blissful Business Course 
• GROWorkspace 
• USPTO.gov 
• DestinationLegal.com/Krissy 
• @DestinationLegal – Instagram 
• https://www.Facebook.com/destinationlegal

About Sarah Waldbuesser

I'm Sarah, attorney and online business owner. After a few years at a law firm and career jumps along the way, I ended up falling in love with online business and the freedom (hello, travel!) that it provided me. I started a few of my own, but through it all, everyone I knew was asking me for legal help and when I saw how much that information was needed.

Entrepreneurship has enough pitfalls without stressing constantly about the legal side. I am here to help you!

I created Destination Legal to support coaches and online entrepreneurs in getting to the point where they are protecting (and excited about) their thriving business.

I knew pretty quickly that law firm life wasn’t for me. I had always been a big traveler, craved adventure, and wanted life outside 4 walls. I knew I was different but just didn’t know why (sound familiar?).

The only thing I REALLY knew in my core was that I wanted the FLEXIBILITY & FREEDOM to work from anywhere, including a coffee shop, the beach, or Thailand. Finally, back in 2012, I learned that there were people doing this! I knew immediately in my heart that this was my future. I had no idea how to get it but just knowing there were people like me out there was such a huge step.