Solo Brand Safeguard: Trademarking Tips for Solopreneurs

Watch the Episode on YouTube

On this episode of The One-Person Business podcast, we explore a topic that could make all the difference in your solopreneurial journey – trademark registration. 

Whether you're a seasoned solopreneur or just starting out, this episode will equip you with the knowledge you need to navigate the world of trademarks effectively.

We chat with Julie Tolek about:

• What a trademark is and why it's important for a solopreneur’s business

• Benefits of registering a trademark

• Types of trademarks a solopreneur can register for their business

• The process of trademark registration, and how long it typically takes

• Potential legal consequences if another business claims you're infringing on their trademark

• Whether or not solopreneurs need a lawyer to help with the trademark registration process, or if they can do them themselves

• The difference between a registered trademark and an unregistered trademark

• Whether or not a person can trademark a name or phrase that is commonly used in their industry

• The process for renewing and maintaining a trademark registration over time

• How people can enforce their trademark rights if they discover someone is using their trademark without permission

And even more! Be sure to tune in.

Resources Mentioned on The Show

• Previous podcast episode: What Solopreneurs Need to Know About Intellectual Property

Connect with Julie Tolek

• Read blog posts by Julie here.
• Learn more about Dilworth IP.
• Email Julie at jtolek@dilworthip.com
• Connect with Julie on LinkedIn.
• Connect with Julie on Instagram.

Favorite Quotes:

"Get comfortable being uncomfortable."

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About Julie Tolek

Julie Tolek is a self-proclaimed branding “nerd” at heart, and has earned a reputation with clients and colleagues for her passionate expertise in branding and marketing. 

Julie is experienced in all areas of trademark prosecution. In addition to traditional trademark prosecution and advising, Julie’s practice also focuses on naming and branding strategy, enforcement and defense litigation before the Trademark Trial and Appeal Board and in the Federal courts, U.S. Customs and Border Protection registration of trademarks for anti-counterfeiting protection, website and domain name disputes, competitive landscape analysis and monitoring, due diligence in preparation for mergers, acquisitions, or investors, advising on investor pitching, trademark licensing and co-existence agreements, and foreign portfolio management.

Julie is a dedicated yogi and advocate for other breast cancer survivors. She enjoys Sunday drives through the back roads of Massachusetts with her husband and saltwater fishing in the Boston Harbor in the summer.

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Full Episode Transcript

Julie Tolek (00:00):

TraBemark gets a little bit dicey because there are so many nuances with what can be registered, what cannot be registered, and you're going to pay more to have somebody fix what you already started than if you would've started out with an attorney to begin with.

Intro (00:18):

Welcome to the One Person Business podcast, the show for solopreneurs, consultants and contractors who are ready to take charge of their business and reclaim their freedom. Join us as we bring you inspiring stories, invaluable insights and practical strategies from successful solopreneurs and industry experts, empowering you to create a thriving business that aligns with your unique goals and allows you to live life on your own terms. Here are your hosts, Joe Rando and Carly Ries.

Carly Ries (00:48):

Welcome to the One Person Business podcast. I'm one of your hosts, Carly Ries.

(00:52):

Joe Rando

(00:52):

And I'm Joe Rando.

(00:52):

And if you're like me, running your own business can be amazing, but there are always those things you don't know exactly a lot about that you feel like you should. And for many that's understanding the formal and legal sides of running a business. A while back, we had an episode on patents, which I'll link to in the show notes. Today we're going to dive into the ins and outs of trademarks with Julie Tolek. Now I'm going to do a little woo woo for Julie because this is so exciting. She was recently recognized by her peers as a 2024 edition of Best Lawyers, ones to watch in America for intellectual property litigation. So, kind of a big deal that she's on here today.

(01:32):

She is a self-proclaimed branding nerd at heart and has earned a reputation with clients and colleagues for her passionate expertise in branding and marketing. Usually, I don't go into too much detail on bios, but I really think it's important that when you listen to this type of advice, you know where it's coming from. And so if I haven't already sold you on it with Julie, she's experienced in all areas of trademark prosecution. In addition to traditional trademark prosecution and advising, Julie's practice also focuses on naming and branding strategy, enforcement and defense litigation before the trademark trial and appeal board and in the federal courts, US Customs and Border Protection registration of trademarks for anti counterfeiting protection website and domain name disputes, competitive landscape analysis and monitoring, due diligence and preparation for mergers, acquisitions or investors, advising on investor pitching, trademark licensing, and coexistence agreements and foreign portfolio management.

(02:26):

If you're listening to this, yes, I read that directly from a screen. If you're watching me, you will see that I did that because there's so much that she covers and so much that she is great at. But, to make her more human like the rest of us, she's a dedicated yogi and advocate for breast cancer survivors like herself. She enjoys Sunday drives through the back roads of Massachusetts with her husband and saltwater fishing in the Boston Harbor in the summer. Now, before I officially welcome her, I do want to say, just like if you were listening to a health podcast or something, we do recommend that this is all just information. If you do want to pursue trademarks or go down that path, definitely access legal advice, including Julie, she's nationwide. And with that, Julie, welcome to the show.

Julie Tolek (03:10):

Thank you guys for having me.

Joe Rando (03:11):

Hi, Julie.

Julie Tolek (03:13):

So excited to be here. That was a mouthful of my bio that you read. I kept thinking, oh wow, that's a lot.

Joe Rando (03:20):

Maybe we need to speed that up like they do at the end of the car commercial or the drug commercial where they put the words really close together.

Carly Ries (03:27):

My husband has an ongoing joke that I speak in cursive because sometimes it's just like, blah, blah, it all goes together. And I feel like I did that.

Joe Rando (03:40):

It was great. Absolutely no question whether she's qualified to speak on the topic anymore.

Carly Ries (03:55):

I feel like we have so much to cover, which is another reason why I probably said that quickly. I do want to start at the beginning for people who are completely unfamiliar to this, what is a trademark and why is it important for a solopreneur business?

Julie Tolek (04:10):

At its most basic, a trademark is a brand name or a logo design. The common most popular ones that come to mind are Apple, or Nike..Whether it's the name Apple or the logo of the apple, or the name Nike or the swoosh symbol, those are all trademarks. One is a word mark because it's the word name. And then one is called a design mark, which is the logo. So at its very basic. The trademark represents the brand name of the business, whether that's services or whether it's selling goods, it's going to have a name and it's going to want to create that brand recognition. A trademark is what achieves that at its most basic level.

Joe Rando (04:56):

I'm curious, so you said Apple has a word mark. So it's basically they own Apple, but they don't own Apple completely because there is the Apple music label. I don't know if that's still around, but that definitely coexisted and there are apples that people sell. There must be something more to it than just owning the word, right?

Julie Tolek (05:18):

Yes, it is owning the rights to use the word in a certain context, and that context is what your business is, what your services are or what goods you're selling. So that's a great point. Especially a word like apple, because it's what we consider a generic word, it's a dictionary word, we know what it is. It's not a made up word. With generic words like apple, it is even more important to distinguish what kind of goods or services it's being applied to. Because if there was an apple store called Apple, they would have trouble registering it as a trademark because it describes itself because it's a generic word. But when you use Apple in the context of technology, today it's synonymous with technology of course, but back in the day you would say Apple and you wouldn't necessarily think it was technology. That makes for a really good trademark because it has nothing to do with it. If I was to give the example, if you were opening a coffee shop, and you wanted to call it Red Shoes, that would be a great example of how the trademark, the name, the brand name, Red Shoes coffee shop, like red shoes doesn't have anything to do with coffee. Red shoes is not generic of coffee. But if you opened a shoe store called Red Shoes, then you would have a problem. So it's very specific to what you're actually selling in terms of goods and services.

Carly Ries (06:46):

Awesome, thank you. So why should solopreneurs care? What are the benefits of a trademark?

Julie Tolek (06:52):

A trademark is one of those types of intellectual property assets that is universal no matter how big or small your business is. It is the first thing that people are going to come to know you by, your name, the brand name or the logo, whichever one you're using most. Sometimes companies will focus more on the logo or become just a logo with no words like Apple has now become. But in this most basic, the trademark name is going to be how people recognize you as a company and what people call you because they can't refer to you if you don't have a name. By getting a registered trademark, you are number one protected from other people using your trademark in the same goods or services. So you could go after somebody for infringement if they were using your trademark in the same goods or services, and you're also building your asset portfolio of your business.

(07:50):

As your business grows, if it's something that maybe you're going to acquire new partnerships or you're going to have some investors or maybe long-term in the future, you want to sell the business, that trademark is an intangible asset that adds value to the business, and especially if it becomes a strong brand recognition. Again, I'm going back to the examples of Apple and Nike just because they are so strong and prominent, but you don't have to think twice. When you hear Nike, you know exactly what it is, and that brand recognition is strong. As a solopreneur is building their business, especially the very beginning, they want to make sure that people are starting to hear their name, know their name, and the more they know their name, the more protection it should have. By doing a trademark at the outset, it's setting it up to be protected no matter what as time goes on as the business builds.

Carly Ries (08:41):

I want to go back to something you said. You said "registered trademark" during that explanation. I know there are also unregistered trademarks. What's the difference?

Julie Tolek (08:51):

A registered trademark would be federally registered. You can also do state registrations, which I'll talk about in a moment, but a federally registered trademark protects you and gives you the rights in that word or logo in all of the United States at the highest level. If you were using the mark and you had it registered and then you found out someone else started to use it, but they don't have it registered, you can go after them for infringement. That's one way. The next way is if that second company/business that starts using the trademark files for a ation and yours is already registered, most likely the trademark office is going to say no to the other applicant because yours is already registered. So it's doing its job. It's basically blocking anyone else from trying to register that trademark. Sometimes things get through, and that's a whole other discussion on how you can go about getting someone's other registration cancelled if it happens to go through. But it protects you at the ground level and it protects you through the U S P T O.

(09:59):

Let's say for example, there is whats called a senior user. There's a senior user that's been using the mark for 20 years, they never registered the mark. Let's say somebody comes on and they've been using it for three years and they register the mark and they get it registered. Because they have the registration at first glance, they still have the highest rights to that mark, even though that senior user has been using it for 20 years because they never registered the mark. Now they're on unequal playing field. That senior user has to come up and prove to the trademark office with a lawsuit that they were using the mark first for the last 20 years and try to bump that registered trademark out of registration.

(10:41):

Joe Rando

(10:41):

That sounds more expensive than registering the trademark.

(10:44):

Julie Tolek

(10:44):

It's very expensive. It's essentially you enter into a lawsuit.

(10:49):

It can be in front of the trademark trial and appeal board, but it is definitely more expensive and it's more frustrating and it's easily mitigated by just registering the mark and doing the due diligence at the very beginning and trying to mitigate that situation from happening at all. One of the things that we do is called a trademark clearance search. Basically before we help anyone apply for a trademark, we search the U S B T O database, social media websites, webpages, business names to see if that market's already registered, if it's already applied for, or if it's already being used in any way, before we file an application. That will show us if there is a similar mark, what kind of goods and services they're using. It basically allows us to help our clients take an educated risk as to whether they want to apply for that trademark.

(11:50):

You don't get penalized or anything by the US P T O other than you don't get your money back. If there is another trademark in line ahead of you and has already been registered and they say no to you, there are opportunities to make legal arguments to get your trademark through, but if you decided to let it go, you don't get penalized or anything for that. So it's really a matter of where the business owner's risk tolerance is as far as how much the budget is and how much they want to spend at the outset versus how much they might be willing to spend later on by taking a chance. Sorry, I kind of went off on a little tangent there.

Carly Ries (12:35):

Can you actually talk about the application process? Does it take long? What are the ins and outs of getting this registered?

Julie Tolek (12:41):

Yes, it takes long, not as long as patents. Patents take a couple years, as Joe knows too from experience. Originally, before Covid, the trademark office took about three to five months to review your application. There's an examiner at the U S P T O and the process of the examiner reviewing the application is called examination. One thing just to go back and clarify too, in my bio it says trademark prosecution. I don't want people to be confused. When people hear the word prosecution, they think it's a criminal issue, but the act of applying for the trademark and the process that the trademark goes through is called Trademark Prosecution.

(13:46):

Trademark prosecution is the act of applying for a trademark. Basically you apply, it goes to an examiner. It used to be within three to five months, but now the time is about eight to ten months to even be assigned to an examiner because there's such a backlog of filings since after Covid

Joe Rando (14:08):

Is this what we were doing during Covid, making up names for things and trademarking

Julie Tolek (14:11):

Oh my god, there are so many stupid weird trademarks that I've seen. It's so frustrating because it's out of our control. I want to be able to say, "I'll push it through", but there's nothing I can do. It's luck of the draw. I've had applications go to examiners in three months and then get to registration in 12 months and finish the process. And that's just, you get lucky. There's no rhyme or reason. Somehow it just goes to an examiner that has less on their plate and it goes through faster, but the average is eight to 10 months to get to examination. Then at examination, the examiner's going to look at the application and they're going to send us feedback. The feedback is either going to be everything looks great, we have no questions, you're going on to the next step, or it's going to outline any issues they have with the application.

(15:12):

The common issues are likelihood of confusion with another mark, which goes back to the example that I was giving. If there's already a registered mark ahead of you or other applications ahead of you, those would all be listed as likelihood of confusion issues. If it's a generic word or a descriptive word, kind of like we were saying apple for an Apple store or a grocery store even that would be descriptive or generic. Those are the most two common reasons that a trademark will get that kind of feedback from the examiner. That's called a non final refusal. Basically the examiner sends a letter and says, "these are my problems, and you have three months to respond with legal arguments." Then the examiner looks at it one more time and they accept it. They either accept the arguments or they don't, and then you have one more chance to make more arguments or you could tweak other things.

(16:05):

You can also negotiate with the examiner. You can say, "Hey, if we get rid of this kind of service and we're only selling these goods, does that take away the confusion with one of the other marks." There is a lot that can happen in between, but when it finally goes through and gets approved, it's usually about 12 to 18 months at this point to get the registration. A lot of people, especially when they're starting out, get so excited and they file the application, but they don't realize that the application is not the registration. The application is just the application. So it's really important to keep track of the timeline and where your trademark is. It's all public record once it's filed so you can look up your own trademark, you can look up other people's trademarks and see where it is in the process.

(16:56):

Part of the cornerstone of getting the trademark registration is you have to prove that you're using it. Unlike other types of intellectual property, you actually have to prove either with a website or a label on your goods or a price tag. There are various different types of proof, but you have to prove that you're using the trademark in commerce. Somebody is giving you money for the thing that you're doing or the thing that you're selling. It doesn't have to be actual money. It can be it's a free download or something like that, but it has to be available to the public. You can apply for a trademark either before your good or service is available to the public or after it's available to the public. And that changes the timeline just a little bit depending on which way you do it. Let's say you came up with a good name, you're developing an app, but the app hasn't been developed yet, so we don't have a way to prove that you're using it in commerce yet because it's not on the app store, you can still file for the trademark today and you get the application date today, which is going to be the day you're protected.

(18:01):

Then in the future you can file the proof of use once you get your app up and running. Paraphrasing the law, basically, once you go through the same process of examination, instead of getting the registration at the end, you would get what's called an allowance. Basically that starts the clock on how long you have to prove that you're using the mark in commerce. You get about three or four years, depending on how long that initial process takes you. So anytime to apply for a trademark is a good time. There's no wrong answer.

Joe Rando (18:36):

Sooner the better. Question on this so we've got the process. Can you give at least some rough numbers? I know it probably depends on a lot of factors, but what kinds of budgets should people be looking at to register a mark? Or maybe it's different from a mark in an actual word or phrase.

Julie Tolek (18:54):

Yeah, they're the same price. The government fees by the US P T O are between $250 and $350 per classification. The classification is basically the category of goods or services that you're in, and they're very specific. For example, if you're selling merchandise, sometimes clients will say, okay, I want to be in the merchandise class, but there are different types of merchandise. The class really depends on the type. Are you selling mugs? Are you selling pens? Are you selling t-shirts? Are you selling branded sunglasses? Those are all different classifications. Basically they're either 250 to 350 per classification. They're changing the law now, I think it's up to five classes you can put on an application.

(19:50):

You have to prove that you're using all of them though to get that registration. What I often suggest with clients, and this helps for budget reasons too, is let's start an application with the goods or services you know you're going to be selling the soonest, in the short term, and then we can do another application later on if you add more goods or services to your business. Because if you're not using them all, it's going to hold that registration back. Your application can only go as quickly as the classes you can prove that you're using. So if you have classes that you can't prove that you're using yet, put them on a separate application and then put the classes that you can prove you're using on one application. At least that can go forward and won't be held back by the other ones.

Joe Rando (20:37):

Makes sense. What about the legal aspect, the legal fees? I know that's going to vary from firm to firm, but is there any kind of range? Is it $1,000 to $10,000 or a million dollars?

Julie Tolek (20:47):

Yes, it's going to vary, definitely not $10,000. If somebody's charging you anything over a couple thousand, there's a problem, I would say. The sweet spot is probably between 1,000 to 1,500 per application. An application is one logo or one word or one logo and word that's together conjoined as one unit. I would say if somebody's charging less than a thousand, I would also be wary because you're probably not going to get good quality service at something that's that low. So I would say a thousand is about a sweet spot, maybe 1,200, 1,500, but it shouldn't be more than that for the attorney fees.

Carly Ries (21:43):

That was a good segway into my question, Do people need a lawyer for this process or can they do it on their own? I'm so happy people like you exist because if I was going to do this, I would absolutely ask for your services, but if people think they can handle it, can they?

Julie Tolek (22:03):

I would say for trademarks, you should get a lawyer. There are things like copyright, I would say you don't need a lawyer to file copyright. It's pretty straightforward. You can follow the instructions and you can pretty much do a copyright filing yourself, but trademarks get a little bit dicey because there are so many nuances with what can be registered, what cannot be registered, and you're going to pay more to have somebody fix what you already started than if you would've started out with an attorney to begin with. Because then we can go through the due diligence, even just a quick five minute search that we do for free online is going to at least point us in a direction of are there other marks that look and sound the same? Do we cross this one off the list and start from scratch? And that's an informative decision to make because that's going to either make or break the trajectory of the marketing budget and how a company is going forward. It's better to start out the right way. Of course, we're happy to try and fix issues later on if they come up. I see clients at all times in the timeline of whether they're just applying or whether they have applied and gotten one of those letters from the examiner called an office action with all of those issues listed. I think it's helpful to do it at the beginning and try to do it as best as possible from the beginning.

Joe Rando (23:33):

I want to second that because I've done copyrights, which I've done myself. It is easy. And I've done trademarks and I've done patents. Those two, in my opinion, you want to leave to the pros. It just isn't obvious.

Carly Ries (23:52):

Really quick, can we circle back on the registration timeline? What is the process for renewing? I assume it's not another 12 to 18 months, just renewing and maintaining everything.

Julie Tolek (24:04):

That's a great question. The first renewal is due between the fifth and sixth year anniversary of the mark. The second renewal is due between year 10 and 11, and then it's every 10 years thereafter. So in the first five years, they're a bit more concerned. Are you really still using the mark? You have to prove that you're using it. At each renewal you have to send a new example called a specimen of how you're using it in commerce. So it's five years, five years, and then every 10 years after that. The renewal fees are not as much as the initial application fee is going to be. There are a couple of hundred dollars per class, and the renewal is accepted pretty instantaneously. I'd say within a couple of weeks an examiner is looking at the renewal and processing it. Unless you send them some really egregious and questionable proof of use in commerce, the renewals are a pretty smooth process.

Carly Ries (25:04):

Okay, sorry, I feel like I keep coming up with questions as we're going. My brain is finally catching up to all the information you just gave us. I'm really happy you clarified prosecution because I think I would've misinterpreted that. But it did lead me to this question. You said there's a lot of outs. You don't necessarily get in trouble with trademark registration, but what are there legal consequences with trademarks and what does that usually look like if there's some sort of infringement there?

Julie Tolek (25:39):

Sure, infringement is the most common one, of course. The first action when there's an infringement is usually sending a cease and desist letter. I've been both on clients receiving cease and desist, and I've been on the offense of cease and desist as well. I would say typically the general practice is most people ignore the first cease and desist letter that they get, and then when they get the second, or even third one is when they'll take some action. Whether it's a person business that doesn't have an in-house counsel, if it's a bigger business or if it's a solopreneur, they want to try and communicate with the sender of the cease and desist first and open that dialogue. Usually it's at the second or third letter. Then I would say a lot of times things are pretty open to negotiation and both parties want to settle because they usually do realize how expensive litigation is going to be if they continue down the road to not be willing to discuss and figure out how they can come to a mutual resolution.

(26:51):

That of course, all depends on what marks are involved, and I guess what the strengths of the infringement is, so to speak. If it's really egregious, and there might not be any terms for settlement or I have a situation now where we are on the plaintiff side of an infringement and we haven't filed anything yet. I say plaintiff's side just to describe where we are, but even if we negotiated something like the other company changes their class, they really need to change their entire name in order to meet my client's goals. So there's not a lot to negotiate because anything they say just doesn't matter to us. It doesn't work, it doesn't solve the problem. It just depends on which two marks are involved and if there's enough opportunity in the middle to be able to solve the problem for each side.

(27:54):

Otherwise, the next step is to go to litigation. So there's litigation in the federal courts, which is filing a lawsuit for infringement. Usually there's some deceptive business practices claims in there too, again, depending on the situation. But the other way to attack a registered trademark is to go through the trademark office and the trademark trial and appeal board and try to potentially cancel that registration. There are all kinds of different reasons you can try to file a cancellation. One of them would be if it's in the situation of an infringement, the infringement portion of it is going on in court, but the cancellation portion would be going on in front of the trademark trial and appeal board, and that could be that other, they filed an infringement, but that other party is actually the senior user that's been using it for 20 years, but now they have to fight that uphill battle because they didn't register it.

(29:03):

So now they're also doing a cross cancellation in front of the trademark trial and appeal board. It can get pretty hairy and dicey. But those are probably the most common types of trademark lawsuits that happen, and usually how they start. Even if it was a cancellation for another reason without an infringement involved. Most of the time I have found the trademark bar to be very collegial, and most of the time attorneys will reach out to each other and say, "Hey, we have this problem. Can we resolve it before we file a cancellation?" Or you can extend the time for a cancellation. So hey, we're going to extend the time, but we want to keep talking in the meantime while we're extending the time. There is a lot of opportunity for settlement, but any area of law, it's not always the case. And when people have money, of course it's easier. So that's why it's even more important to try to do everything as buttoned up as possible from the outset, especially for solopreneurs.

Joe Rando (30:20):

Before we move on, can I dig into one thing that I feel like we missed a little bit? I remember a while back, I had an idea for something I wanted to trademark, and it was a phrase and it was not able to be. I didn't go forward with it because it was basically too descriptive. Like you were talking about an apple store being Apple. So we're talking about trademarking words, but you can trademark a phrase, but I just would love some clarification on what kinds of things you can do and can't do with respect to trademarking certain words or phrases.

Julie Tolek (31:05):

The more words you add to a phrase to make it longer, the more likely you could overcome whatever that descriptiveness situation is. As an example, if it was descriptive,

Joe Rando (31:27):

Use mine, It was a solopreneur success cycle.

Julie Tolek (31:29):

Okay, so you were going to do "solopreneur success cycle" as the name for your Soloporeneur Success Cycle. That is obviously very descriptive. For example, if you decided to call it "solopreneur success cycle powered by Lifestarr" , that would add the additional element that makes it not completely descriptive. Basically it's called a disclaimer, you would disclaim the solopreneur success cycle. Basically the disclaimer means you understand that you don't have rights to it by itself, but that you have rights to it in the context of the entire mark, which includes the powered by LifeStarr component. It's the powered by Lifestarr that helps it jump up to only kind of descriptive and you can get away with registering it. To add one more level of complexity, there is another way to get descriptive marks registered, and that's called registration on the supplemental register. So there's the principal register, which is the one that everybody applies for, and the supplemental is where trademarks go when something is preventing them from being registered on the principal register.

(33:00):

And descriptive marks often fall into being amended to be placed on the supplemental register because they're too descriptive, but you have to show the proof of use. You have to be using it to be eligible for the supplemental register. Then within five years, you can reapply for the principal register because the presumption is within five years, you've accumulated enough proof of use that you've been showing that it's become a brand, and it has that brand recognition, it's called becoming distinctive. So it's not descriptive anymore. It's become distinctive.

Joe Rando (33:41):

Kind of like playing in the minor leagues until you're good enough to play in the majors.

Julie Tolek (33:45):

Exactly. Again, it depends on the case, It's not always the best solution in every case. Again, the mark has to be used in commerce currently to be able to be put on the supplemental register. So if we were doing one of those future use application scenarios and they weren't using it yet, the supplemental register wouldn't be an option because we wouldn't be able to prove the use yet.

Carly Ries (34:15):

Makes sense.

(34:17):

Well, in the spirit of going back to something I was previously thinking about, I just want to clarify. We were talking about protecting your trademark rights. I'd assume you also take the position that people should, not just for registration, but in that situation, should also reach out to an attorney. Can you also just send an email or a LinkedIn message and be like, "excuse me, that's my trademark"?

Julie Tolek (34:43):

Definitely, And I recommend that too. I advise clients to do that a lot because oftentimes it's in the same industry and it's in the same circle of people that they know. Especially with solopreneurs, it's very common to either already know the person that is infringing or they run in the same circles so the chances of seeing them out in public are high, and you just want to be a decent human being and being able to approach them in some way and say, "Hey, I didn't know if you realized, but I have a registered trademark on that. You probably didn't know." Even if you think they did know, we always say, "you probably didn't know, just letting you know, Hey, can you stop using that?" And then seeing what happens after. That's certainly a great way to go. I always recommend starting from there if the client is comfortable with it, because it's easy to escalate something and be a jerk, but you can't start out as a jerk and then deescalate. That's a lot harder to do. So if a trademark holder is willing to take that first step and open the conversation, then I highly recommend it. Then a lawyer can always step in if needed later.

Carly Ries (36:04):

Awesome. I'm so happy we had this conversation. I feel like I went into the topic being, I hope these are good questions. I don't really know what I'm talking about!

Julie Tolek (36:15):

I'll turn the tables and ask then, Carly, what was the most surprising or interesting thing you learned about Trademark?

Carly Ries (36:21):

Honestly, that it's not as intimidating as I thought. You explained the whole process and the ins and outs of it. For whatever reason, anything related from a legal standpoint with businesses, kind of like with accounting, I'll ask a CPA or they're just not in my normal wheelhouse, but you made it more approachable. I hope that solopreneurs who are thinking about registering trademarks, see it as such and see that it's not this big obstacle they have to overcome. It's an easy process to do if you just do it. Not easy, I know it takes a while and all that, but it's just not as intimidating.

Julie Tolek (37:02):

There are a lot of moving parts, but there is definitely a process. We were kind of chatting before about how trademarks are a tangible kind of intellectual property because they're everywhere. Trademarks are out there in the wild in front of us all the time when we're shopping, when we're walking down the street, when we're driving. It's something that you don't really think about until somebody puts it into that perspective. And then you're like, oh, wow, trademarks are really everywhere in our daily lives. Every interaction involves some kind of a trademark. You go to the store, you go to Hannaford's, there's the grocery store here called Hannaford's. Well, Hannaford's has a trademark. You go to Apple, your iPhone trademarks everywhere. It's just something that I think makes more sense sometimes to individuals because it's such an everyday thin. It doesn't have to be scary, but it has to be thoughtful.

Carly Ries (38:11):

And the not surprising thing of this interview is while it's not as intimidating, I would still reach out to a person like you to do it for me. So with that, we're coming near the end of our show. Before we tell people where to find you, we always ask our guests what their favorite quote about success is.

Julie Tolek (38:34):

My first internship boss said to me, "get comfortable being uncomfortable.' I found this to be the most accurate piece of advice for my career and just everyday life and living. It is so relevant in every single thing. So it's just something that I've lived with and that has helped me knowing that things are going to get uncomfortable, but you just got to roll with it sometimes and be okay with that.

Carly Ries (39:14):

Good advice. I love that. We were talking ahead of time, you can take on clients nationwide. If people want to learn more about you or want to move forward with a trademark, where can they find you?

Julie Tolek (39:40):

The firm where I work now is called Dilworth IP, and you can reach me directly via email at jtolek@dilworthip.com and you can find me on LinkedIn at Julie Tolek. My Instagram handle is "what the trademark". I post everyday life stuff, personal stuff, as well as work stuff, trademark stuff on there. Like my bio says, I really am a branding nerd. I'm always interested in this type of stuff and always talking about it whether I like it or not. You can find me at all of those places and anybody has any questions, I'm happy to chat and discuss. So excited to be able to let people know that it doesn't have to be a scary process, but it is a necessary one, especially for small companies, so they don't get run over by the big guys.

Carly Ries (40:41):

Very true. Thanks, Julie. This has been so great. Like I said, you've calmed my nerves when it comes to this stuff. We have so loved having you on this show. I'm so glad we set this up. We'll be sure to put all of your information in the show notes, but please don't be a stranger. We'd love to have you back again soon.

Julie Tolek (40:59):

Thank you, so much fun.

Carly Ries (41:02):

And listeners, if you like what you hear or you want to hear more content like this, be sure to subscribe on YouTube or anywhere you listen to your podcast. We will see you next week. Have a good day.

Closing (41:15):

You may be going solo in business, but that doesn't mean you're alone. In fact, millions of people are in your shoes running a one person business and figuring it out as they go. So why not connect with them and learn from each other's successes and failures. At Lifestarr, we're creating a one-person business community where you can go to meet and get advice from other solopreneurs. Be sure to join in on the conversations at community.lifestarr.com