The Hidden Cost of Not Trademarking Your Solo Business Name

Guest: Joey Vitale | Indie Law 

Episode Transcript

Carly Ries: You searched the domain, maybe even checked the USPTO database, and figured your brand name was safe. What if that's not even close to enough? In this episode, trademark attorney Joey Vitale shares why trademarks are the number one legal risk facing small businesses, what actually happens when a cease and desist letter lands in your inboxman vacation, and the sneaky filing strategy that brands like Taylor Swift and Marvel use before they even launch. Whether you've been in business two months or two years, this one could save you a very expensive rebrand. You're listening to The Aspiring Solopreneur, the podcast for those in pursuit of a life first business.

I'm Carly Ries, and my cohost, Joe Rando, and I spend every episode with solopreneurs who are proving there's a better way to run a one person business and experts who are helping make it happen. We like to say life first, then business. So let's get right to it. Joey, I can already tell just in our first few minutes chatting offline, you're a fun guy. You're a good guy.

This will be such a great conversation and I think it's so important for solopreneurs. we're gonna get into protecting your business and everything. But before we do, I have an icebreaker question for you. You help founders protect what they've built. But how do you personally protect your own time and energy as a business owner?

And what's one boundary that you guard most fiercely? We're just gonna throw you right in.

Joey Vitale: I love it. I love it. Well, this is probably a go to answer for lots of people, but I've learned the hard way that delegation in systems is key. I had my own health scare, a panic attack during my first year of business. I was in the hospital for a couple weeks, and it was a big wake up call for me that if I continued to run this business every single day, including the weekends, and everything relied on me and so many manual inputs, then it was a recipe for me to not last very long.

And so now I really lean into, we talked before we started recording, but hiring overseas VAs, delegating, really leaning on systems, and now AI so that I can truly unplug on the weekends. And, I'm recently taking off Fridays as well, which is great.

Carly Ries: Oh, maybe I'll follow. Joe, I'll pin that one.

Joe Rando: because, you know, our whole thing is, life first business. Right? How are you gonna make the business serve the life you wanna live? And Friday's off. I haven't gotten there. It sounds kinda nice.

Joey Vitale: I know. Yeah. you know, it's nice, but it's also kinda tricky because, as I'm sure you guys can relate, I really enjoy my work. And so it's actually a struggle to honor this commitment of zero work on a Friday because I get this natural urge to wanna check-in on things, to play with a new improvement or something that I wanna work on. And it's honestly made me realize that as much as I love being entrepreneur, it made me kinda boring after several years.

So Joe and I were talking earlier about the guitar that I recently got, and I've found that unplugging isn't just great for my mental health, it's also allowing me to just have more stuff that I'm into outside of work.

Carly Ries: Isn't that so interesting? I wonder if it's because like, we're conditioned since kindergarten, that five days out of the week, you're working, and then you get two rest days. And I wonder if that's just like ingrained in us from a societal standpoint.

Joey Vitale: I think so. I think that there's so much that at least I learned growing up around the importance of working hard, the bad vibes around being lazy and not working. And so there were a lot of wealthy people that I had the fortune of observing when I was growing up, and they all worked seven days a week. And so even though there was, you know, money and material things that you could see around them, It was a lot of people yelling and screaming while on a yacht type situation. And I was like, okay, that's not the version of wealth that I want for myself.

Carly Ries: Yes. Well, okay. So we're talking about protecting our boundaries, protecting our mental health. Well, let's get into protecting our business. Because so many solopreneurs do a quick Google search, or they check the USPTO database, and they think they're covered legally.

And they're like, good to go. We got this. What are they actually missing by just doing that, and how often does that gap come back and bite them later on?

Joey Vitale: Yeah. Carly, great question. And it's really a good time for me to share more of the origin story here of why I even created Indy Law. Because when I first started my law firm, one thing that I wanna be very transparent with everyone about is that, as you might be able to tell, I'm not your average lawyer. I was the only kid in my law school class who didn't like to argue, I spent years struggling in more of a courtroom litigation environment. so when I found this opportunity to be a business lawyer, it was so exciting and refreshing for me to lean into more of my, like, peacemaker tendencies and strengths. And when I started my law firm, it was almost like I was building this big Starbucks menu of what people were asking me for. People would say, Joey, can you do an LLC? Can you make contracts? Can you do the occasional trademark?

Can you help with this copyright registration? And I just kept adding things to the Starbucks menu. And then during my first year of running the business, I kept hearing horror story after horror story of a business owner that didn't know to even think about trademarks, and then they get blindsided with the cease and desist letter. And so after that happened one too many times, I decided to take everything else off the menu and focus on trademarks specifically. And Carly, you're exactly right.

The reason why this matters is because people have gotten so used to what I call domain name thinking. We assume that if you come up with a business name and if the domain name's available, it means you're okay. As long as as you can add an s at the end or the at the beginning, you're okay if you see something that's similar. Trademarks don't work that way. And even if there are businesses out there that are not the exact same, if they're similar enough, then that could still be a case of trademark infringement.

And what most people don't realize is over half a million trademark applications get filed every single year, and more than half of them get denied. And the biggest reason for a refusal is because it's too similar to another trademark that exists.

Carly Ries: Okay. Well, along these lines, a lot of people like we were saying, people think forming an LLC protects their brand name. So not even a trademark, but just an LLC. So from that standpoint, where does that protection actually end, and then where does the trademark protection begin?

Joey Vitale: I love that question. You're right. People get really confused about LLCs versus trademarks and how they protect you differently. The way that I think about it is think of the name of your LLC as, like, the backstage name of your business. So technically speaking, when you're behind the scenes, the name of your LLC is the name that you're giving to your state government, to the IRS, to a bank, and those officials official situations is where you really share the the name of the LLC.

But forming an LLC doesn't actually give you any naming rights. All it gives you is personal asset protection. I say all it gives you. It's still very important because then if knock on everything you ever get sued, you're not personally liable for whatever damages they're claiming. But forming an LLC doesn't give you any rights to the name, and a lot of people don't know that, so they don't think to take these extra steps.

But when you file for a trademark and you get it registered, it's like you're claiming a stage name for your brand instead of it all being backstage. So if you wanna protect your ability to be on stage in front of your audience, in your marketing, in your brand visibility, It's trademarks protect you being on that stage.

Joe Rando: I wanna get some clarification, if you don't mind. So What you're saying is I could go out and possibly form an LLC in Massachusetts or something called apple dot comma, LLC. But if I went out and then advertised my business as Apple and I tried to sell an app or something, I would probably hear from some attorneys out in Cupertino.

Joey Vitale: Probably. Yes.

Joe Rando: But if I didn't do that, if I didn't go out public, and just had that in the background paying my taxes on it, they probably wouldn't notice and care. Is that Right.

Joey Vitale: Exactly. So it's probably not a good name because it could potentially be confusing, but I do wanna call something out here, Joe. And this, again, is something that's really confusing because trademarks are super interesting the more you learn about them. And like a lot of laws, there are exceptions to every rule.

So on the one hand, you do want to be careful of not having a trademark that's too similar to something else in your space. But on the other hand, it is possible for two brands to have the exact same name if they're doing totally different things. So there can be a Dove chocolate and a Dove soap that both own their trademark. But because they're entirely different, there's no likelihood that customers are gonna get confused.

Joe Rando: I hope not with the chocolate and the soap.

Joey Vitale: Right. Well, yeah. Okay.

Joe Rando: Can I ask a question about trademarks because just I'm going in the weeds a little bit, but I think maybe it'll expand the conversation? So if I understand it, there are two different ways that you can go about trademarking a name. And correct me if I'm wrong here, but this is my understanding, is that you've got the idea of saying, you know, LifeStarr, the logo, and it's basically an image, and then LifeStarr, the name in the space of, software and technology and helping solopreneurs or something. And that those are different? are those two different things?

Joey Vitale: They are. So let me dissect this a little bit because it can get, again, interesting and complicated very quickly. So when you file for a trademark, you are designating whether it's a word only mark or whether it's a stylized mark. And we talk with our clients quite a bit about this because the great thing about a words only mark is that it gives you the broadest possible protection. And if someone else out there is using a similar name, even if their logo looks completely different, a words only mark gives you that big protection.

Now one of the issues with a logo mark is if you ever change the logo even slightly, the trademark office isn't gonna let you renew that registration. You have to file all over again. But one of the benefits of moving forward with a logo is if you do have and we talk to a lot of our clients about this. If there is another company out there that's kind of similar, applying as a logo does add an element of distinctiveness that can help you say, you know, what we're doing is different from what they're doing because we are specifically claiming this business name when it's styled in this certain way. And I wanna go one kind of wrinkle further here because most logo applications are filed in a kind of black and white way where you're not claiming color as a part of the logo.

If you wanna get really complex and if you really wanna distinguish things, you can claim specific colors in your logo. Most people that file for a logo trademark don't claim color because again, it allows them to change the color slightly as they move forward. But it can, again, add that level of distinction. And depending on your brand, it can be really important. So Tiffany, for example, has their Tiffany blue registered as a trademark.

So that even if other jewelry stores out there have different names even, they are prevented from using that color that's so closely aligned with with Tiffany as a brand.

Carly Ries: Yeah. And it's very identifiable. Yes. So let's say people are, just starting a business, and they're like, wow, trademarking this, this seems like a whole other level. So how does a solopreneur know when they've crossed the line from I'm just testing this name out, I'm just testing this business out, to oh my goodness, this is an asset, I need to protect.

At what point do you think you should actually go for it, do you just do it from the beginning?

Joey Vitale: Yeah. So here's the deal. I've learned time and time again, just from watching business owners and getting a inside peek behind the curtain around the legal issues that they're dealing with. Trademarks are the number one legal risk facing every small business. And a rebrand, we might talk about this later, it gets expensive and time intensive very quickly.

So I'm a huge fan of filing for a trademark application as quickly as possible. And the way that I like to think about it is that it's almost an audition process where you're kind of auditioning for the rights to use this trademark, and you can't really rest easy knowing that you've got it until you get the registration. One great tip for new and established entrepreneurs is Joe earlier asked, are there two types of trademarks, logos versus words? That's true. There's another way to think about two types of trademarks.

One is trademarks that are applied on what's called an end use basis. That's the normal way of filing for a trademark, where you show evidence upfront of how you're using the brand. But there's a sneaky second way to file for a trademark, which is called an intent to use basis. It costs a little bit more down the line, but it allows for you to file for a trademark, and you tell the trademark office, we're not actually launching this yet. We're gonna do it later.

And so you kind of go through the initial stages. The trademark office says, okay. It looks good. Then you show proof of use. This is what a lot of major brands like Marvel and Apple and even Taylor Swift files for the name of her albums under intent to use before her album actually comes out.

So that's really the best way to do this because, otherwise, you really are building a business on shaky ground.

Joe Rando: A question. So I always had this thing. Like, you can't, go in elsewhere, copyright a title, but you can trademark a title?

Joey Vitale: Good question. again, we get this a lot. We work with a lot of either, just authors in their own right or business owners that wanna write a book for some reason. And there's a lot of thought around, you know, we wanna have a great title for this book. How do we protect it?

How do we prevent others on Amazon to have a similar name? And you're right, Joe. You cannot use copyrights to protect the title of a book. Copyrights only protect the content itself in the book. Trademarks, oddly enough, cannot be used to protect the title of a book.

And the reason for that is that trademarks protect brands, and the trademark office has ruled that the title of a single work is not a brand. And so there are two ways around this. One is to write not just one book, but a series of books, and then you can trademark the title of that book series. But the other, honestly, more common way to resolve this, that we do with a lot of our clients, is to elevate the title of your book so it's no longer just a title in your brand? Is there a way to make that a podcast title or an overall slogan of the business or the title of some framework that you're using in the brand?

So that's how we tend to approach that question is let's evolve that phrase to be more than just the title of a single work.

Carly Ries: Well, so I wanna circle back because you were talking about rebranding. And let's say somebody does not do what they're supposed to do with Trademarking. I'm the marker of the crib. What does a rebrand look like? And what kind of headaches can this actually cause a business?

Joey Vitale: Well, the honest truth is that a rebrand costs way more the more the business gets established. And the hard thing about it really comes down to three things. When you have to rebrand, it impacts your time, your identity, and what I call your business machine. So I'll go through all those real quickly. Obviously, it impacts your time because you then have to deal with coming up with a new name, changing everything.

The hard thing about it is that when you think practically about receiving a cease and desist letter and being forced to rebrand in less than thirty days, you're either going to receive that letter on a workday, which sucks, because that means that you have to put all of your revenue generating activities to the side to deal with this, and it's probably gonna be your lowest sales month of the year dealing with all of this. Or even worse, you receive it on one of your off days. And now that time that was meant to be free time for you to unplug from the business is back in, and you're having to do this really frustrating thing. I mentioned earlier how my law firm transitioned to being a trademark only law firm. The straw that broke the camel's back there was we had one client call me in tears because she had just started her vacation in Hawaii and received the cease and desist letter, and was given fourteen days to rebrand the name of her podcast.

And so it completely wrecked her vacation.

Carly Ries: Yeah. That is such a bummer. Yeah.

Joey Vitale: So that's time. Real quickly, I'll go through these other two. The second is identity. So every business owner that I know has a story around why they picked their name. I'm sure you guys have a good origin story of how LifeStarr came about.

So there was a lot of meaning that went into Indie law. And if I was told that I had to rebrand, I would lose so much soul of the business and kind of business owner stuff aside, that would be a real identity hit for me. And then the third thing here is what I called your business machine. And solopreneurs get this. The more you're in business, the more your business name is touching things in ways that you don't even realize over time.

So it's great to build that business machine so that you can have more peace of mind, and it's more of a freedom or person first business. But if you're given a cease and desist letter and you have to rebrand everything, a lot of us don't really slow down to think about what that means when you go through your CRM, you have to change every single email in your sequence to change the name of the business. You have to go through your Stripe and PayPal invoices to change the name of the business that's being listed there. You probably have to go back to all of those people that had you on their podcast and ask them to move to change the backlinks. And so the more your business is growing this business machine, the harder it is to course correct all of it because of a forced rebrand.

Joe Rando: Can I ask a question about this? we started with the cease and desist letter. Right? I mean, is that the end of the game? Game over? You've got a cease and desist letter. Okay. I quit. I give up.

Joey Vitale: Good question. No. A cease and desist letter is someone claiming that they have rights over you. You do have the ability to just ignore the letter or respond to them, hire an attorney to reply on your behalf. The tough thing is it's really hard to defend your trademark rights without a registration.

It can be really difficult and time consuming to build up evidence of the fact that you had been using it earlier. And if if they continue to take action after a cease and desist letter and actually start a lawsuit, it can quickly get to hundreds of thousands of dollars versus spending, you know, hundreds to a couple thousands of dollars to just proactively avoid all of that mess.

Joe Rando: And just for clarity, so the difference is, you know, you have the LifeStarr TM, which means I'm claiming it as a trademark, but I haven't done anything to do it versus LifeStarr with an r with a circle around it, meaning I have registered it with the patent office.

Joey Vitale: Yes. I can tell you have done your homework. So that TM symbol is a really great deterrent symbol that you can use. It doesn't even mean that you filed for a trademark. It just means you're claiming common law trademark rights.

And I strongly encourage business owners to lean into using that symbol because most business owners, frankly, don't know the difference. But it's a really dangerous place to just rest on your hands once you get or having that TM symbol in place because it's not gonna do you many favors if you receive a cease and desist letter.

Carly Ries: Well, so we've been talking about trademark protection from a legality standpoint, obviously. But you also see it as a signal of self trust for your business. So can you kind of unpack that and what you think filing a trademark says about how a founder sees their own business?

Joey Vitale: Yeah. Something always happens with our clients where, when they go through the process and they get their trademark certificate in the mail, they get this rush of celebration and legitimacy that really caught them off guard. Because most people, when they go through the trademark process, thinking, okay. This is something that I just have to do to protect this. But when you are on the other side of the finish line and you can see that you have that registration, you can start using that circle r symbol, it really is a sense of legitimacy. we've had one client that just said it so well. They said that their trademark registration that they now have framed is like the modern equivalent of a brick and mortar store putting that first dollar bill that they received and taping it to the cash register. It's just a really tangible sign that that you're in business.

Carly Ries: I love that. Yeah. I never really thought about it that way, but it makes sense. Well, for someone listening right now who has a brand name that they've been using for like, let's say, a year or two, but they've never filed anything, what's the very first thing they should do today, this week, like next step?

Joey Vitale: Yeah. Well, if you haven't done so yet, you can run a free trademark search with the trademark office. You just go to uspto.gov. That's short for United statespatentandtrademarkoffice.gov. You can also just go to Google and just search Trademark Office search, and it'll take you probably right where you need to go.

It's a really helpful government website that you might get confused when you see the results, but it's a really great way to just put in what your brand name is and see if any direct matches come up or something that is really concerning. That is not the same thing as doing a comprehensive review, but we call those a knockout searches in the trademark world. And at least doing a knockout search can give you some sense of relief that there's no major red flag that you need to be aware of.

Carly Ries: Joey, this has been so so helpful. Joe, some of my wheels have been turning with this conversation

Joe Rando: I have another question too. So you know, we focus on life first solopreneurs.

These are not people that are trying to typically become billionaires, although I suppose you could have that as your life goal. But most of these people are kind of trying to, weigh revenue against life quality. So they're not necessarily raking in 7 figures a year. What should they think about in terms of a budget for protecting something like their business name with a trademark?

Joey Vitale: Yeah. It's a great question. At the end of the day, I don't want budget to ever be a barrier to getting something foundational as a trademark in place. I just want to be clear that I want to make this process as transparent as possible. So I've got a book out there called Legally Legit that walks you through steps you can take.

I've also got an online course that you can go through in about three hours and avoid a lot of the common mistakes. If you work with the law firm, it's gonna cost you probably a couple thousand dollars.

Joe Rando: So nothing that should destroy anybody that's got a valid business in place. Right?

Joey Vitale: Correct. Correct. the way that I like to think about it is when it comes to the world of trademarks, it's all about playing defense and offense. I think businesses, no matter what, should all be playing defense with their brands. Meaning, you should all get that trademark registered so that you know that you're not gonna lose your trademark. The bigger your business gets, the bigger your goals are, the more it might make sense for you to wanna play offense against other brands, to enforce your rights against others, to have an attorney team that is sending, cease and desist letters on your behalf. That might be overkill for businesses that don't have those 7 figure goals, but you deserve to be protected and to rest easy knowing that your brand isn't gonna be taken away from you overnight.

Carly Ries: Oh, such loads of wisdom. Well, speaking of wisdom, we've hit the point of the show where we have the same question for all of our guests, and that is what is your favorite quote about success?

Joey Vitale: I think immediately to one of my favorite coaches' favorite sayings, which is that your success is inevitable. Love that sentence because it's such an abundant way of thinking about business. And as solopreneurs, we get to define success however we'd like in that sentence. And then I offer just a little follow-up to that, which is , if your success is inevitable, then problems are also inevitable.

So protect yourself against those most likely problems that are going to happen as you reach that success.

Carly Ries: I love it. Joe, I don't think we've heard that one. We've had multiple interviews this week, and we're getting new quotes left and right.

Joe Rando: Yeah. Usually, we hear like a list of maybe 20. And then every once in a while it's like, woah, where'd that come from?

Carly Ries: Cool. Well, Joey, you kinda talk about your course and everything, but where can people find you if you if they wanna learn more about you?

Joey Vitale: Yeah. The easiest place to go to is my law firm, Indie Law. indielaw.com.

Carly Ries: Easy enough. Well, this has been great. Thank you so so much for coming on the show today. We so appreciate it.

Joey Vitale: Thank you both for having me. This was great.

Carly Ries: And listeners, thank you so much for tuning in. As always, leave that five star review. It helps us spread the word to other life first solopreneurs in your shoes. Subscribe to our show on your favorite podcast platform, including YouTube, and share this episode with a friend. And we'll see you next time on The Aspiring Solopreneur.

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.