You gotta protect what you create

We didn’t want this book to get too business-y; we’re here to set up the foundations of being boss. But if we’re going to encourage you to put yourself out there, we’re also going to make sure you’re ready to protect what you create. You can figure out a lot of the legal stuff along the way, or you perhaps figured it out long ago. But by working closely with legit counsel, we’ve learned a lot and wanted to drop some of that knowledge in your hands now in case you want to know what to expect. We’ve brought in our very own lawyer, Autumn Witt Boyd, to answer a few questions we had in the beginning that might help you too.

BEING BOSS: Hey, Autumn! Let’s start with naming your business, services, and products and trademarking. Why is trademarking important? What kinds of things should you consider (legally) when it comes to naming your business?

AUTUMN WITT BOYD: There are two important things to think about when naming your business.

First, pick a good name.

The best choices are fanciful—made-up words that don’t mean anything until you build a connection to your product or company with your marketing efforts (like “Kodak” for cameras). The downside here is that you have to do all the work of creating awareness about your product or company, since the name itself doesn’t indicate what it’s about.

Arbitrary names are also protectable; these are words that have a meaning but are used in a different way (like “Apple” for computers, or “Pandora” for an online music site). Suggestive names (“Being Boss” for a podcast for creative entrepreneurs, or “Groupon” for an online coupon site) give an idea or suggestion of what the business is about without being generic or descriptive and are protected by trademark law.

Avoid names that are descriptive, such as “Jane’s Healthy Cookies” for a bakery, “The Complete Personal Branding Guide” for a personal branding course, or “Intuitive Life Coaching” for a coaching business that focuses on using your intuition. In the U.S., these kinds of names are not protected by trademark law until you’ve used them for long enough that they are well recognized (usually at least five years). So if someone copies the name, you can’t do anything legally to stop them until the brand is very well established.

Location-based names, like “Chattanooga Pizza Company,” fall into this category as well, as does using your last name, or “surname,” so “Smith’s Web Design Shop” is not the best choice.

Names that are generic also can’t be protected because they just name the thing, such as “The Tire Store” or “Smartphone.” In the U.S., these kinds of names are never protected by trademark law, so if someone copies the name, you don’t have a legal way to make them stop or change their name.

Second, make sure it’s one of a kind. Once you’ve got a great business or product name, you must check to be sure your name, or a similar name, isn’t already being used by another similar business. If a similar business is already using it, they have “priority” rights over the trademark, even if they haven’t registered it with the U.S. Patent and Trademark Office. If you start using a trademark someone else owns prior rights to use, you are at risk of getting a nasty cease-and-desist letter or being sued for trademark infringement (even if you later register it with the USPTO!).

I do three searches for my clients:

1. A Google search for the same and similar names

2. A search of the business registry database for the state where the business is located

3. A search of the U.S. Patent and Trademark TESS database

Because trademark law is meant to prevent customer confusion, searching only for the exact name won’t ensure that you’re in the clear. You should search for alternate spellings and similar words that mean the same thing. (For example, when I searched for my own podcast name, “Legal Road Map,” I also checked for “law road map,” “lawyer road map,” “attorney road map,” and variations using “roadmap,” “map,” “route,” and “road,” plus plurals and other endings for all of those words, like “maps” or “mapping.”)

Checking for domain name or URL availability is not good enough. It’s possible to miss a business that operates offline or is using the name in its business or a product but not as its URL.

BB: What’s the difference between trademarks and copyright?

AWB: Trademark law protects things that identify the source of a product or service—we usually think of a company or product name, logo, or slogan, but this also includes product packaging and even a sound or color (think Tiffany blue). The goal of trademark law is to allow business owners to build brand recognition and prevent consumers from being confused about the source or quality of a product or service. So, even if someone opens a business with a name that’s slightly different from yours, if it’s similar enough that it could confuse your customers, then that could be trademark infringement.

Copyright law protects “original works of authorship”—creative works, such as photos, music, books, movies, artwork, software, website content, e-courses, and some jewelry. Copyright law does not protect facts or ideas, only the way facts or ideas are expressed. It can’t protect a business system or process, but it can protect the words in a systems manual and documents or worksheets used in the business. The goal of copyright law is to encourage people to create new works, so most copying without permission is considered infringement, unless it falls under “fair use.”

BB: When should a creative entrepreneur go ahead and begin the trademark process? It does come at a cost, and if you’re trademarking all your ideas willy-nilly, it can add up! How do you begin that process? Should you go ahead and hire someone to help, or can you DIY it?

AWB: After you’ve chosen a great name and are sure it isn’t already in use by someone else, you may want to register it as a nationwide trademark with the U.S. Patent and Trademark Office. This is an investment of time and money in your business—even if you file the application yourself, current USPTO filing fees start at $225 per class, or category, of goods and services (coffee cups are in one class, business consulting is in another class, T-shirts are in another class, and jewelry is in yet another class, so it can add up quickly). The registration process takes a minimum of about nine months if everything goes smoothly, and can take years if any issues come up during the examination or opposition periods.

I ask my clients if it would feel like they were stabbed in the chest if they saw a competitor using the same or similar name, or if they’d lose thousands of dollars if their customers were confused by a similar business or product name. If the answer is yes, my recommendation is that it’s time to apply for a federal trademark registration.

I’m a big advocate for entrepreneurs DIY-ing basic legal protections early in their business, but trademark registration is one area where working with a lawyer is the best bet. Because trademark rights are based on use, not registration, a thorough search is a critical first step in the process, and an experienced attorney will be able to help you evaluate your risks if another business is already using a similar name. An attorney will tell you if your business name can’t be registered because it’s descriptive or generic, before you spend a bunch of money on filing fees for an application that is sure to be denied (the application fees are not refundable!).

And the application process seems straightforward, but is actually full of tricky areas where a simple mistake can cause your application to be denied. I have had several clients come to me after trying to file an application for trademark registration on their own and receiving an office action (a communication from the USPTO attorney that requires a response) with an issue they couldn’t fix. This is expensive, and you can lose the ability to register your trademark if another business files an application after yours is denied.

BB: Anything else you want a creative to know about setting themselves up for success when it comes to being legally legit?

AWB: Contracts are the most important legal protection creative entrepreneurs need for their business. They can absolutely write their own contracts when they’re getting started, although they may want to consult with a lawyer after they’ve been in business for a year or more, or are starting to work with bigger or more sophisticated clients or customers. These five terms are key:

1. Detailed list of services or products

2. Itemized and total cost, with clear payment deadlines

3. Refund policy (even if the policy is no refunds, this should be spelled out)

4. How either side can end the relationship, and who gets paid what if it’s ended before a project or package is completed

5. Who owns the rights to any intellectual property created as part of the contract

DISCLAIMER: This is information only, and should not be relied upon as legal advice. All information is based on U.S. intellectual property laws.

Autumn Witt Boyd is an experienced lawyer who helps high-achieving and ambitious business owners reach their goals, faster and smarter. Autumn guides creative entrepreneurs with big dreams as they grow from one-person shows to larger deals and collaborations. She has special expertise in copyright and trademark issues. Autumn also hosts the Legal Road Map podcast, which teaches business owners how to protect their rights and stay out of legal hot water. She lives in Chattanooga, Tennessee, with her husband, Dave, twin boys, Sam and Tyson, and daughter, Vivian.

HARD CONVERSATIONS AND GOOD COMMUNICATION

While we don’t think you need a fancy business plan to start a business, if you plan on partnering with someone you need to begin with what resembles an operating agreement ASAP. Good communication will eliminate the need for intense conversations and nip any resentment in the bud. Regularly chatting about what you do (and don’t) want with your values, intentions, and boundaries in mind will keep everyone on the same page and working toward the same goal.

Before you ever pursue a partnership or collaboration, you need to be able to have a conversation about the following questions:

• What are your roles and expectations?

• How will you handle disagreements?

• What can you imagine would cause a disagreement?

• What are your shared goals?

• How do your individual values support your shared goals?

• How will you split money? How will you handle expenses?

• What happens if something feels like a conflict of interest?

• Do you have a non-compete agreement in place?

• Who owns the intellectual property? Who has rights in the project?

• What happens to the business if one of you quits or dies?

• What’s your communication style?

• How do you handle stress?

If discussing any of these topics feels too awkward to broach or results in a heated conversation, you might want to rethink the partnership. It doesn’t mean you don’t like each other or can’t be friends, but it may mean you’re not a good fit as business partners. And especially once money is involved, it is a good idea to get an agreement on paper and signed by all parties involved in a project—no matter how small the collaboration may be. Remember, having hard conversations is a practice, and the more you communicate with the people in your life, the easier those chats will become.

FINDING YOUR BUSINESS BESTIE

You don’t necessarily need a business partner to battle loneliness or help you fix your business—you may just need a business bestie! Think about someone you enjoy talking shop with. He or she has a work ethic and drive that matches your own. You will share advice and support each other along the way. It’s important to note that your business bestie is NOT a mentor or coach—while you and your business bestie may mentor or coach each other, it’s ultimately an equal exchange. Think about who you already know who fits the profile and schedule regular Skype or coffee dates with that person.

Your business bestie is someone you can confide in on a regular basis about stuff like this:

MONEY GOALS: It’s often seen as taboo to talk numbers, but you’ll want to get specific with your business bestie about how much money you make and how much you’d like to be making.

INTENTIONS AND INSIGHTS: Create a monthly intention or focus and share it with your business bestie. Brainstorm how you can carry this intention into your work and hold each other accountable for living your values.

STRATEGIES: What’s working in your business? You and your business bestie can exchange tactics for marketing your latest launches and growing your following, or trade secrets on how to close deals with potential clients.

STRUGGLES AND VICTORIES: Have a tricky issue that has you blocked? Bring it to your business bestie! And on the flip side, be sure to celebrate your big and little wins with your business bestie.