Episode 10: Protect Your Brand: Essential Legal Steps for Creative Entrepreneurs with Kelli Jones

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  You’re listening to the Creative Minds Smart Money Podcast and I’m your host, Samantha Eck. Today I’m joined by special guest, Kelli Jones of Kelli Jones Law. Kelli is a trademark lawyer who’s passionate about helping women owned businesses. She is also an avid Swifty and loves reality TV. It is so great to have you here today, Kelli.

Thanks so much for having me. I’m excited.

Absolutely. So just to dive right in, can you describe your journey about how you came to be a trademark lawyer?

Yeah. So prior to opening my own firm, I was working in, first I worked in nonprofits and then I worked for a private firm, mostly like representing medical providers, doing insurance companies. So very different. And then COVID hit, everything was changing. Courts were closed, so we were not doing that much and then that summer of 2020 is when I decided to open my own virtual firm instead. And I had already had an interest in trademarks and like intellectual property law from law school. So that’s when I decided to go in on that. And I also was already using my Instagram actually as a like fitness entrepreneur.

I was part time fitness coaching. So I had already been connecting with a lot of other business owners.

Through that either they were in fitness or they started in fitness and pivoted to like business coaching or social media or something like that. So I kind of saw like, okay, they, they need more legal protection and doing what they’re doing online.

So it just connected and started like that from there.

I love that. And I love the idea of an online law firm because I feel like there’s so many law firms nowadays where you have to go in person. And like, I don’t see a lot of female lawyers locally, so I love that there’s this online space for female lawyers who are helping female business owners.

Yes, definitely.

So I know you said that one of the biggest questions you get is what is the difference between a trademark and a copyright.

So can you explain those differences for us?

Yes. So copyright is more of the creation itself. Whereas trademark is the brand. So when you’re talking about copyright, that is something that basically you copyright attaches once you publish it, publish it could be like publishing online. So it’s something that you create could be a book, a blog post, a picture that you’re taking a video, Anything like that, that you are actually creating yourself, that is copyright. When it comes to trademark, it’s more of the brand side. So that is something that is used to identify your goods and services. So that could be like your business name. It could be a course name, a podcast name, a logo, a tagline, anything like that, that you’re using as really like a brand identifier.

That’s really great to know because I feel a lot of times we think that just because something’s copyrighted, it can also be trademarked, which it’s not the same thing.

Yes, definitely.

So can you explain how being proactive with handling legal matters can save business owners time, money, and stress in the long run?

Yes, so it’s always better to be proactive or as proactive as you can be because there’s some this is for so many instances when it comes to legal, but it’s easier to use a really good contract from a lawyer ahead of time that way. Does it like automatically mean that nothing will ever go wrong?

No, but you’re going to be in a much better position. If something does go wrong, it’s going to, usually cost a lot less to fix and same with trademarks when you have one, earlier in your business, sure, you might have a copycat or someone infringing on you or something like that, but then you’ll have something that, having the trademark gives you something to, to use to take them down, stop them from infringing. If you wait and don’t have the trademark, then you might be forced to either rebrand or have to fight for your brand. And it can cost you, tens of thousands to hundreds of thousands. Whereas getting the trademark initially, yes, it is an investment of a couple thousand usually, but it’s preventing having to spend tens of thousands or hundreds of thousands later on, which is of course not just money and time, but also headaches. You’re building your business. You don’t want to have to slow down and fix things that you could have done earlier on when you weren’t as busy.

And would you recommend, getting a trademark as soon as possible? if you’re coming up with a brand name or a service type of name and you’re like, I think this is going to be, something or would you just recommend a trademark in general for any type of brand name? .

So usually I ask people three questions and that’s, do you have something in your brand that you foresee yourself using at least for the foreseeable future? Whether it’s your brand name, your logo, tagline, something like that, that, so it’s not just something where you’re like feeling lukewarm about it and you’re like, Oh, I might rebrand in a year or two. No, it’s something that you, you know, you want to keep. At least you think for now you want to keep it in your brand. And then two, would you be upset if someone else popped up with the same or similar name as you? And as a business owner, you , that should upset you if you really like your brand, because you don’t want someone else to pop up with something similar, because then your customers or clients are going to be like, if they see it, they’re like, Oh, who’s who, or are you connected in some way, or, you know, if someone is referring. Saying, oh, I bought this course. Called whatever. And someone else pops up with a similar course and they’re going to search for it on Google. And they might find that one instead of yours, which is the whole point of a trademark to prevent this confusion. And then if you would be upset by this, would you be upset if you were forced to rebrand?

And that could happen if someone else gets there first before you. And either they send you a cease and desist or they, or a lawsuit or something, which makes you then have to rebrand or they filed for the trademark first. So then when you do go to file, you can’t get it because of them. And then you’re forced to rebrand at that point, which obviously the further you are in business, the more money that’s going to cost you.

So really answering those three questions, for some business owners, they say yes on all three of those early, right when they create their name. Some are not maybe as. Set in, okay, I’m going to keep this name. So maybe it takes a little longer. They’re not really sure if they’re going to change it or going to stick with it, you know or how strongly they feel about it.

Or maybe they’re okay with thinking like, Oh, okay. If I’m forced to rebrand, then, it happens.

And this can also depend on like how much money you’re putting into your brand. Because if you’re going to spend. You know, the more you spend on a logo or if you have like products or something, the more you’re putting into it, the more you’re going to want to prioritize trademarking as early as possible that way you don’t have to pay for those costs over again.

That totally makes sense because I feel like sometimes we think that, Oh, it’s okay not to trademark my brand name or something like that. I actually know someone personally recently who I think is going through this right now and is working on her trademark because She got booted off instagram because of a trademark infringement so It’s something that I think a lot of us as business owners don’t tend to think about and then all of a sudden it happens And we’re like crap I should have listened to everybody screaming at me to get a trademark

Yeah, definitely.

So I know you touched on it just a little bit with the trademark issues, but what are some common legal issues that business owners face when they are not proactive?

Yeah. So definitely aside from the trademark issue, there’s a lot of times contracts, that’s definitely a common one and not just contracts when, maybe for your client, but really in anything that you’re doing, if you’re collaborating with someone, you’re co creating something. or you’re speaking in a program or something, or people that you hire, like contractors or even employees, you really want to have contracts for everything.

Same with digital products that you’re selling. You want to have those digital terms and conditions that they’re agreeing to, because so many issues when, someone comes to me with some type of issue, I usually say like, well, what does your contract say? That’s usually the first one. And so if there’s no contract at all, then you’re really not in a great space. And then if there is a contract, but it’s not a good one, then there’s only usually so much you can do to fix it. A lot of times with contract issues, it’s like, okay, we learn a lesson for next time, how to make it better.

So the better contract that you have from the start, it’s really going to help you even things like, intellectual property someone you. hired, you want to make sure that you own the things that they are creating for you.

Let’s say they’re creating a blog post for you or something like that. You want that upfront ahead of time. That way you don’t have to deal with it in two years of like who owns it. And now she’s putting it on her blog and making money from it or something like that. So you want to handle these issues ahead of time. And then also really, contracts, it really comes down to like communication, essentially, the whole point is to hopefully avoid miscommunications. And if there are miscommunications, you have something in writing to hopefully point to what to do about it, or at least how to, make the problem suck a little bit less.

And I think that’s so important in being proactive. I know when I first started, I had a really basic contract. And when I wanted a refund from someone, I was like, I can’t get that refund now because that wasn’t even in my contract or I couldn’t get, or sorry, the person wanted a refund from me.

So it’s important to think of those things and understand like what Do I need to, I guess, protect yourself in terms of a contract because you never know when something might come up that you didn’t have in that contract to begin with.

Yeah. And that’s the thing you don’t really know, like what could go wrong, things can always go wrong. So that’s why, what we do in our contracts is like, I’m trying to think of all of the, what if scenarios, like what if they don’t pay on time? What if their card declines?

What if, they’re in another country and, the currency wasn’t listed properly.

What if it’s a payment plan and, you didn’t authorize in the To collect the payment, you didn’t authorize every individual payment, just the first one. What if they copy your stuff? What if they take it and resell it? What if they share a login? All of these random things are what we’re thinking of in the contract ahead of time.

Yes. that. Protecting the business owners from the beginning, which is so important. so can you think of a real life example where early legal intervention saved a business from having a lot of significant troubles?

Let’s see, usually it’s like they, I have more scenarios where they didn’t get it and then something is wrong. And, you know cause then that’s when they’ve come to me to fix. , but I do have a bunch of clients who they’ve come to me early. Like for example, a podcast client that I have, she trademarked her podcast early, when it was very, very new.

So obviously, it was a risk in a sense because she hadn’t yet been making money from this podcast. So to put all this, , thousands into it, plus the year plus long process of trademarking is a lot, right? Because you’re like having faith that, okay, this is the right thing. The goal that I have for this podcast.

I know it’s going to be successful. I want it to be successful. So I’m going to do it now, even though I’m making 0 from it. And now she is. You know, much more, she has more followers on Instagram. Her podcast is getting a lot of downloads and things like that. And she’s glad she trademarked because then when other people pop up with maybe something that’s a little bit similar in name that could potentially be confusing, She right away is like, Nope, you can’t do this because, she has to protect her brand.

She doesn’t want there to be confusion with someone else Googling and on their podcast and theirs coming up instead of hers when it’s in, maybe not exactly the same topics, but pretty overlapping that there could be confusion. that’s where she sees protection now and she’s glad that, okay, she didn’t wait until her podcast started getting really popular.

She did it. Before it was really popular.

Yes, and I think that’s so important. Can you explain, what kind of a trademark covers in terms of things? Because I know that a trademark wouldn’t necessarily cover, if someone had a similar name, but they did something completely different, it’s very, if it’s, like similar, if that makes sense.

Yes. So the whole point is to prevent people from being confused between yours and someone else’s. So that’s where, let’s say you have a brand name and you’re selling, you’re doing something educational and you have coaching, you have training workshops, things like that, and then someone else comes out with a kind of similar name, but they’re selling like hair accessories. Both of you can exist even if you have the same name pretty much probably because someone’s not going to accidentally sign up for your workshop when they meant to like go purchase a hair scrunchie and you know, vice versa. So it’s really when it gets closer. Now, if that person, instead of hair scrunchies, they had a podcast and it’s all on the same, marketing and sales topics that you have for your workshops and coaching and training, then okay, that’s much more similar it’s totally, reasonable that someone might be like, Oh, are they related? Is that your podcast for your, you know it goes with your coaching, same topics, very similar name. That’s where, okay, maybe then that is potentially infringing and you want to do something about it. So that’s really where it’s like a case by case basis of what is potentially too similar.

Like what would someone be confused about?

And then of course, the more famous something is, the more you want to stay away from it, even if it’s not super, even if it’s not the same exact goods or services or very similar, because. Like you can’t be out there with Nike and trying to say, Oh, you know I have my own new night. Like they’re famous. You don’t want to get involved

with that. So if it’s super famous, Nike, Coca Cola, Starbucks, like just stay away from those major brands. Even if you’re not doing something the same, I actually saw a case recently. I have to look it up. Cause I think I have it open so I could talk about it, but I’m pretty sure it’s seven 11.

But it was, I want to say it was like a law firm that was using the name 7 Eleven. And I think ultimately what happened is I think 7 Eleven, the, like store that we see that’s popular, sent a cease and desist or a lawsuit or whatever saying like, Hmm, this is kind of similar. And I think ultimately, like they did have to change their law firm name because obviously. It’s not related. You’re not going to sign up, you know hire a lawyer when you meant to go into a 7 Eleven and get like water or something or vice versa. But 7 Eleven is, such a big brand that the confusion aspect, it doesn’t have to be as far apart for there to be issues or it doesn’t have to be as close I mean, in the types of goods or services when it’s famous. So just any big brand, famous brand, stay away from it. Don’t be naming your course after, you know, like. Disney or something like that.

Yes, yes, I actually experienced that myself when I used to make stickers and pins. I remember I had a Disney sticker and I put like Mickey Mouse something on it and it was like, it was fine for the first month and then the second month I got a cease and desist and I was like, oh my goodness, am I gonna get shut down?

You have to be really care I think Disney is one of the biggest ones that’s like consistently sending out that.

They for sure have employees that literally their entire 40 hours a week is just to be scoping the internet for infringement. It sounds kind of fun to me. Like that’d be fun job, just investigating infringers all day.

Yes. So what are the top legal priorities for new business owners?

Yeah, so this is where it really depends on exactly what you’re doing and what your goals are. So I always say it’s kind of, individual because some bit like the order of what you might need because, some businesses might need a trademark before a contract and vice versa. But pretty much all things to at least think about in the beginning are, contracts, trademarks, maybe some type of business entity, whether that’s like an LLC or a corporation, depending on what you want to do. Usually I just recommend that if you’re a newer business owner, at least have a consultation with a lawyer. Doesn’t mean you have to invest in every single thing or maybe even anything at first, but you can at least talk about your priorities and what is your You know, timeline on different legal protections. That way you kind of have a good idea of like what to focus on at different stages of your business, just because, it is going to vary if you’re sell products for services versus online versus brick and mortar, all that kind of stuff.

Yes. And I think , that’s very important is to just sit down with one. And I think , most lawyers offer like a free consultation, like a short consultation to kind of see what your needs are.

I don’t know about free. I know a lot don’t just because like, if you’re coming to me for that kind of stuff, there’s going to be legal advice involved and liability for both of us. but i, and I know a lot of other lawyers will just have a consultation, like mine is just like a pick my legal brain consultation.

And that’s where we’ll answer any questions set up like a roadmap for you and things like that. Some people do have free consults, but they usually don’t involve legal advice. So you’re usually not going to get that much information from it unless you already know exactly what you need.

Right. So that’s a good differentiation to then knowing that if you’re not paying for a consultation, you might not get that legal advice that you really need, whereas if you’re picking someone’s brain or getting that paid consultation, you’re really going to get that attention that you’re looking for in terms of whatever legal matter you’re thinking about.

Yes, one, it’s the legal advice that you’re getting. So it’s liability for us. And then also Our ethical rules, a lot of times, are very strict. So we have to be bound by certain things of what we can and can’t say. So then if we’re taking that risk, that’s why a lot of us do ultimately charge at least something for these consultations. so yeah, that’s a good measure for that.

I’m glad I found that out because I know I’ve seen some lawyers that do have free consultations, but that never clicked to me that they might not be giving legal advice, they might just be giving generic kind of advice.

Yeah. And also for trademarks, specifically, like if someone comes to me for a consult and their name that they want to use is too similar to a client that I already have. then I have to refer them to someone else anyway, so it’s also helpful because I might not even be able to represent you. So you know, then at least it’s like something for our time and stuff since we’re then barred from helping you further.

Yeah, absolutely. So can you explain the process of obtaining a trademark and like how long that would take?

Yes, so right now they’re averaging that it takes about 15 months. That’s what the trademark office is saying, and that’s because they’re federal government. So they are very slow. So basically the process before we actually even file your trademark, we typically do a full search to assess the risk level of your mark, and that’s just because we don’t want to waste time and money applying for something that might be too risky.

Or maybe we can lower the risk in the way that we apply because of what we discovered during this search and the two main things we look for there, which really are also the two main things that the trademark office is going to look at when they are reviewing it, is how similar is your name to any pending or registered trademarks in the name itself.

So in sound, appearance, meaning, so not just identical. But even anything that, words that are different, but have a similar meaning. And then out of all of those, how similar is it in goods or services like we said before?

So we do that search. We give you an opinion letter with a risk rating.

Most lawyers do this, like it’s low risk, moderate risk, high risk, whatever that. Everything’s okay. And we actually filed and that’s where we file. We 10 months for it to get assigned to someone in the trademark office. and then that’s when they do the search similar to what we’ve already done, and that’s where they either push it to the next stage, or they issue some type of refusal, which a lot of people do get.

Most of them are for some type of like procedural reason that we can fix and move on. So really that waiting period is what accounts for the majority of that whole long process. So then hopefully it, moves to registration after getting reviewed and then just a couple months of like processing and stuff.

Yeah, so while you’re in that whole process, are there any type of protections that you have since you’re already like filing that trademark?

Yes. So basically the one, even though it takes so long, the one good thing is that you’re holding your place in line the day you file. from anyone else who’s going to file after you for anything that’s the same or similar. Because if you’re in line and someone else files, let’s say for something that’s the same name and very similar services, let’s say they file a month after you, when they get to the point where their trademark is getting reviewed, the examiner is going to see your pending trademark that you filed ahead of them.

And they’re going to issue that office action, that initial refusal. Saying no, this pending trademark is in front of you. So we’re going to wait to see what happens with this, but this one, is. Potentially confusing so basically it was that, like the one that applied after you would just be in limbo until whatever happens to yours.

If you register, then they would get like an official refusal saying like yours is too similar, you know? So it would cause confusion. So you can’t register.

And then they, try to get through or not, but so you at least have that where, no, one’s going to jump ahead of you in line.

Yeah, yeah, that makes sense. What are some of the common mistakes that business owners make when it comes to trademarks? And I know you talked about that a little bit already.

Yeah. So definitely the biggest is the full search that a lawyer does, which is really, a lot of times people don’t have this, so then they don’t know what else is out there and then they get that refusal for six months. Some other either pending or registered trademark that is too similar to theirs. And then a lot of times , sometimes we can overcome it. Sometimes we can’t. another one is not doing the goods and services the right way. So it’s very particular. All goods and services basically are split between 45 classes. So sometimes I’ve seen people, not apply really in a way that’s actually protecting them.

Maybe they do like, let’s say like email copywriting or something but that’s not exactly what they applied for. They applied for like marketing services or something like that. so sometimes it’s not always. Exact or it doesn’t cover everything. Like maybe they did, coaching, but they didn’t include like their course, their workshop, their podcasts, any of these other things, which when you are applying, you want to make sure to get the most protection you want to be applying for the most things to get it. So those are usually some of the big ones.

Okay, no, that’s great to know. I always like to ask all of my guests for one actionable step that my listeners can take today in terms of your specialty. So what’s something that my listeners can do today that would change their business immediately,

So usually one thing, this is like the, what I always tell people, if you are not going to a lawyer or you haven’t yet, basically before you ever launch anything, whether it’s an offer, a new business, anything like that. You can, there’s two things that you should always do. One, a Google search just to see what else is out there, but then there’s also a free search that you can do on the USPTO website, USPTO website for a trademark search.

If you Google that the link will come up for that that is at least it’s not the same as the full search that we do, but it’s a really good starting point. So if you’re thinking of launching, you know a podcast, a course, anything like that, go on that and look at what comes see, see what comes up because. It can’t identify everything, but sometimes you can see something, okay, this came up and it’s literally like exactly the fields that I’m doing. It’s very similar name. Then at least you haven’t launched yet. And you can go back to the drawing board and maybe think of a new name or change it up a bit enough where it’s actually like not similar in like meaning, sound appearance, that kind of stuff. That way you don’t waste time and money putting something into something that you already know there’s a red flag with. So I recommend people to do that for everything that they’re , launching in the future.

Or if you already have a name for something, you can go and look it up and check, just to see what else is out there with the name that you’re already using. Okay. hopefully there’s nothing major and you’re like, Oh no, is a seasoned assist coming? Hopefully not. , but at least you can kind of get a good idea from there.

Yes, absolutely. So I want to say thank you so much for coming on today, Kelli. I really appreciate it. Where can my listeners find and connect with you?

Sure. So they can find me on Instagram at lawyer Kelli with an I underscore. , or you can go to my website, kellijoneslaw. com, Kelli with an I. , and yeah, you can reach out to me through there, either of those places as well. Thanks so much for having me

Awesome. Thank you. 📍

And that wraps up another episode of the creative mind smart money podcast. It’s been a pleasure to have Kelli Jones share her expertise on trademarks and legal protections for business owners. We delved into the critical differences between trademarks and copyrights and the importance of being proactive with legal matters to avoid costly issues down the road.

Kelli’s practical advice on safeguarding your brand identity offers valuable insights for any entrepreneur looking to protect their business. To connect with Kelli and learn more about her work. Follow her on Instagram at, at underscore lawyer, Kelli with an I. Or visit her website, Kelli Jones, law.com.

Thank you for tuning in today. We hope Kelli’s guidance has inspired you to take those necessary legal steps to protect your business and its future. Until next time, keep your creative minds thriving. Farewell fellow travelers.