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BRAND PROTECTION STRATEGIES

Brand protection strategies don’t need to be complicated, but they do need to be thought out.

Attorney Steve Weigler has some great tips on what you need to focus on to help keep counterfeiters, pirates, and infringers from stealing your ideas.

What You’ll Discover About Brand Protection Strategies:

• The four types of intellectual property available to entrepreneurs to protect their brands
• Why securing your intellectual property is integral to brand protection strategies
• How to evaluate what type of intellectual property makes sense for your brand protection strategies
• The ultimate value of trademark protection
• AND much MORE

Guest: Steve Weigler 

Steven is the Founder and Managing Partner of EmergeCounsel, whose mission is to provide a worldwide clientele legal counsel on the protection of intellectual property and business assets at a lower price point than large legal firms.

In order to fulfill its mission, Steven developed systems-based approaches, which combine best in-class legal technology for legal research and management combined with a strong empathetic human element. 

Steven is especially passionate about brand protection where he developed TotalTM®, a proprietary trademark prosecution system which combines predictive search technology, powerful docketing software, and passionate and knowledgeable trademark counsel on a competitive flat fee. 

Steve not only has decades of experience as counsel but also previously headed a successful educational technology start-up in which he served as Founder, CEO, and General Counsel for seven years. He was also a Senior Attorney for a Fortune 50 tech company. In part because of his combined experiences, he acts as general counsel to entrepreneurs and companies especially those in the eCommerce and SaaS space.  

Steve is a member of IR Global, an international legal network, and through his involvement is able to service foreign businesses with US interests, as well as US businesses with foreign interests; his many awards including being named a Super Lawyer for three consecutive years (2021-2023).

Related Resources:

If you liked this interview, you might also enjoy our other Branding episodes.

Contact Steve and connect with him on LinkedIn. 

Also check out his business website EmergeCounsel.

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Shrewd Brand Protection Strategies for Smart Entrepreneurs 

Brand protection strategies don’t need to be complicated, but they do need to be thought out. And today’s guest has some great tips on what you need to focus on.

This is Business Confidential Now with Hanna Hasl-Kelchner helping you see business issues hiding in plain view that matter to your bottom line.

Welcome to Business Confidential Now, the podcast for smart executives, managers and entrepreneurs looking to improve business performance and their bottom line.

I’m your host, Hanna Hasl-Kelchner and I have a great guest for you today if you’re interested in protecting the brand you have worked so hard to build. He’s Steve Weigler, an attorney who is the founder and managing partner of EmergeCounsel, who has developed a systems based approach to help organizations protect their brands by shielding the intellectual property those brands embody.

Now, Steve brings decades of experience to his work. He acts as a general counsel for entrepreneurs, and among his many accomplishments, he’s been named a super lawyer for three years in a row and I’m sure for many more years to come.

As a listener, I can appreciate how the products and or services that represent your brand and support your business reputation are business assets. And unless you’ve dabbled with intellectual property before, this legal stuff sounds confusing, scary and maybe a little intimidating like something only really big businesses need to think about.

But as a retired attorney who practiced in this area, I promise you that even start ups are wise to develop a basic understanding of what intellectual property is so they can identify what kind they have, and then make more informed decisions about the type of brand protection strategies to safeguard those assets for you and your family, the ones that you’ve worked so hard to build. So, let’s dive in.

Welcome to Business Confidential now, Steve.

Good to talk to you, Hanna.

Good to have you. The legal aspect of business can sound really unapproachable and phrases like intellectual property. Some people think that it’s like one massive single thing when in reality it’s a shorthand for a bundle of different types of legal rights that businesses can take advantage of as part of their overall brand protection strategies. So, would you please describe what these different building blocks are and what they bring to the party?

Sure. So, intellectual property is any intangible asset that a company or organization has. So, for example, the biggest intellectual property plays are the most valuable asset that the company has. So, if you close your eyes and you say, “All right, let’s eat Oreos” immediately, we all picture hopefully the same chocolate cookie with the frosting in the middle. And there’s really no dispute in your mind what that is.

And it’s not that the name Oreo can be touched or distilled even. It really is a piece of intellectual property that becomes the most valuable asset that I think whoever bought Nabisco has. And so, when you look at balance sheets for really large companies, you’ll see that a lot of times it’s the brand which – I can go through all this, but the brand or even their swag, how you immediately identify them is the most by far the most valuable thing that companies have.

Now, intellectual property can be distilled into four areas. There’s patents which are inventions and most of my clients honestly don’t have things that are patentable. So, an example of a patent is a pill for the cure for cancer is an excellent patent and if someone has a cure for cancer, they should definitely patent that chemical makeup because that will be quite valuable.

But go back to think about the Oreo. An Oreo really doesn’t. It’s a cookie. And so that really doesn’t qualify for necessarily patent protection. There’s some kind of patents called design patents that you can qualify for, but that again is tricky. So, then the next thing is and I think it’s really a huge piece of intellectual property called a trademark or a brand protection.

And brand is a lot of people think, well, brand is a name like we’ve talked a lot about Oreo. Well, a name is a really important aspect, but think about going into, for example, Whole Foods. Whole Foods, there’s a lot of trademarks involved in Whole Foods. You walk in, you kind of know exactly what the look and feel of Whole Foods is.

If I blindfold you and put you in the middle of Whole Foods, you would know exactly where you were if you had exposure to the brand. But it’s a combination of the smells, the sound, the look, the feel, the colors. All those things are part of the brand. And so, when you look at a brand, you look at protecting all those aspects as the company grows.

So, it’s not only the name, which is the easiest to think about, but it’s the entire customer experience. So, when you talk to Branders in the business world, they’re trying to make sure that what are the customer experiences that people are going to have when exposed? And number two, how to keep those consistent throughout the process.

And as a brand protection attorney, I’m looking at the same things. So, the second kind of protection is trademark or brand protection.

The third type is copyright, which is anything that’s artistic in a fixed media. So, for example, for businesses, a lot of times you’re going to have a web page. Now that the web page is going to have a certain look and feel, the web page is going to have a certain marketing logo, perhaps how you describe the product or your goods or services.

All that can be copyright protected. And so, that’s as long as it’s in a fixed media, meaning a movie, a script, a web page, any of that is a fixed media and that it’s artistic. We can get into this but there’s a big discussion on is chat AI original or artistic? And the answer is probably not.

And then the fourth one is to think about when you’re growing your company. There’s lots of things that you only want you and your employees or independent contractors to know and no one else to know. And that’s called a trade secret. For example, Oreo is coming back to that as a perfect example. Not too many people know exactly how to make an Oreo cookie.

There are certain formulas that they use to make that cookie and that is trade secret protected. For example, the Coca Cola formula. It’s not that it’s patented, it’s that only I’ve read that only seven people in the world know that exact formula and they’ve done a very good job of protecting that brand, not only through trademark and copyright, but through trade secret.

So, you take those four things and you weave them together to create the best possible protection. So, I get that a lot of the audience and I’ve been no different. I’ve been in business and you start small, but you’re trying to build a wall to protect that intellectual property and build it incrementally and appropriately.

But to do that, you have to kind of understand what your play is meaning like, for example, if you’re selling Oreos well, you’re not going to focus on a lot on patent and you’re going to focus a lot on what’s that customer experience for people that want to eat Oreos or the same with Whole Foods or the same with whatever you do. So, it’s really kind of distilling in a marketing are the dogs eat the dog food.

What are you trying to establish in your brand and your customer experience? And then how can we protect that? And as the business grows, we build onto that.

All right, so now we know the different building blocks for an entrepreneur. What tips do you have for how they should start evaluating the building blocks, whether they apply to them, and then whether they want to take the next step in sort of solidifying legal protection for them.

So, keep in mind that working with an experienced intellectual property attorney, a lot of times it’s really just determining what you want as an entrepreneur or as a business, going down to the very basics of what makes you special. Like if you are going in to sell widgets, that’s always a famous law example, meaning like just a nothing, a paperclip, and you had no distinguishing factor to that paperclip.

If there was none, if you just called it paperclip and you sold them at a penny and everyone else’s was a penny, you have no real competitive advantage. But most entrepreneurs don’t go into business thinking that they have no competitive advantage. So, what is that advantage that you’re trying to build up? Is it a unique name? Is it a unique function that you’re performing in the marketplace?

Is it a unique product like the – a reverse Oreo? What is the essence of your being? And I think just describing to either writing it down and working with whoever is helping you build that customer experience or even just calling and talking to someone that can help you get that out like me, we’re going to be able to figure out very quickly what the essence of that being is, even at a very early stage.

So most times entrepreneurs are calling and saying, “Hey, I have this unique product. I think I have a competitive advantage because it’s a unique color scheme and I really like the name.” So, for example, say it’s hats for cats. And so, you look at the product, you say, “Well, what are you going to call it?” If they say cat hat, well, that’s probably not going to be a great trademark because it’s descriptive. It describes what it is. If they say Swami, which is like, well, that’s a really unique creative name and we would know.

Let’s take a look at that name and see if it’s ever been trademarked or protected for cat hats. And chances are that because there’s not too many cat hats out there because I’m not sure cats would wear hats, probably the combination of being a unique good and a unique name would be very protectable and very easy to pursue protection and grow that brand.

And so, a lot of times – to summarize, entrepreneurs are calling me for some kind of clearance and to see, hey, is this going to be something that can grow and is protectable for the person thinking about what their brand is going to be? Descriptive marks like again, a cat hat for cat hat or water bottle for water bottle is I get that the audience is going to pick up exactly what it is, but it’s really not particularly protectable.

And so, it’s really kind of hearing the pitch and finding out what assets of those are going to grow and be protectable is kind of the first exercise. So, again, is it unique if we know it’s a unique brand, like a customer experience, then finding out what that name is.

If it’s a unique, for example, logo or web page, then it’s a copyright or design thing, or the front of a t-shirt is a good example, a piece of art. Any of that is copyrighted. And so, we kind of just like it’s almost like you have to – you don’t know how well the speech is going to go until you actually get up and practice it and do it. And the same holds true for building a company or a brand. It’s like, well, vet it and see what you got.

All right. All right. Well, I was wondering what your thoughts are about a company name because people tend to incorporate in their home state, which is fine. And sometimes their secretary of state will say, “Oh, yeah, that name. Yeah, you can have it. It hasn’t been used in this particular jurisdiction in the state.” And then they find out that maybe somebody has a federal trademark for that particular name. So, what advice do you have for startups?

And so that’s a really good question because there are certain things that don’t really fit into the box of what I just talked about and one is a company name. All a company name is the name that you’re going to file taxes with and that you can accept service if you get sued or decide to sue somebody and basically for business functions.

And so, a lot of times – and I had a company before this, it was focused on schools and school districts, but my company was called by my initials, H.W. Enterprises and that was the name of my company. It had nothing to do with the brand or the brand experience. It had nothing to do with customer facing activities. It just was the name of an LLC. So, I could conduct business.

So, when someone’s looking, if – I guess my advice on that is it’s not worth necessarily putting in the calories to find the name of your company to file with the secretary of State. It’s a completely different experience or exercise than establishing a brand. So, for example, I keep on going back to Oreos, but that company has been sold off so many times. It used to be called Nabisco, and Nabisco is probably not even called Nabisco, and now it’s sold to a company. I think it’s called Mendez.

Anyway, the point is no one in the consumer market even knows who this company is, who owns the brand Oreos. And the same holds true with forming a company name. That’s not necessarily the name you need for the brand. Now you need to form a company very quickly, mostly for advantages of having a company like write offs and things like that, and being able to do business not as a sole proprietor or partner. And so, you need to do that really quickly.

So, I wouldn’t be spending a lot of time on figuring out what the name of that is. But the customer experience is a whole other story. That is something that if you call the cat hat like cat kill, well, no one’s going to bother. They’re going to the audience is going to be turned off to the product. And so, building that right customer experience and building the right name for an outfacing trademark or brand is really quite a different exercise. And that requires a lot more contemplation.

Understood. Understood. It’s just every once in a while for a small business before they get big, their product brand name is also the name of the company, and one that comes to mind is Mrs. Fields Cookies. She didn’t brand their chocolate chips separately from the sugar cookies from all the others, like super high calorie creations she had. But she did get a trademark for her company name, which happened to be the name of her cookies.

So, and I don’t mean to imply that there’s anything wrong with the name of the company being the name of the good or the service that’s being protected. It’s just I get a lot of calls from potential clients or people just asking that, do you face that issue that they’re having? They’re spending days and days trying to figure out the company name because they think that they have to build out that entire brand experience to pick the name of the company.

Well, that’s one of those decisions that they need to make in terms of what they want to be when they grow up. So, it’s one thing to talk about the brand experience, but could you give us in a nutshell what the value of having trademark protection is? I mean, besides bragging rights?

What does somebody get for having a trademark besides the piece of paper from the government that says, “Yes, this is registered,” which is lovely to frame, but I mean, in terms of where’s the teeth, where’s the meat?

First, let’s talk about what trademarks give you from a legal standpoint. So, a registered trademark is something that you file with the US, United States Patent and Trademark Office, and they have relationships with other trademark offices all over the world. And we kind of – it’s a fun practice and the fact that we all follow the same rules all over the world.

So, I just got off the phone with an attorney in France. Most times if you were talking about tort law or something, it would be very different. But when it comes to trademark law, we all have the same basic rules. And so, you can get protection for your brand all over the world. And it’s one of these things that’s really equal in the world as opposed to most other things.

Meaning if you file for a registered trademark and you get it from, for example, in the United States and say, we did it for Oreo, that would give you the exclusive rights in the United States. To use that name for whatever you identified, in this case, cookies exclusively. As long as you keep that trademark registered and use it, you have to pay fees and use it in commerce.

So, if Oreos went out of business, the company couldn’t keep the trademark Oreo. But as long as it’s in business, you can do that. And so, what’s so cool about that is there are a lot of things in life, it’s like, well, you have to be a huge company to do that or you have to be a multi-million dollar play before you can get venture capital or something.

Not true in the world of trademark or frankly, in the world of copyright either. It’s a very equal playing field as long as no one else is using it in commerce and it’s distinctive enough a name, you can have exclusive rights as an individual even to use that exclusively in the United States. You can even protect that if you’re willing to pay all those fees all around the world. So that’s super cool.

Now, if you have those rights, you can enforce those rights. So, if someone else comes around with the name Oreo, you better believe that whoever owns it now would come and file a cease and desist, first, send a letter and then potentially sue you in court. And so, it’s a very powerful right that you get. Now, it’s great to have rights. I have a lot of rights.

But why would I want some of these rights? Like if I have the right to walk into a war zone, that doesn’t necessarily mean that I’m going to do that. So, why are trademarks or any intellectual property? Because I don’t – I think they’re all important. Why they’re important is ultimately most people that go into business want to grow a business, meaning it’s a lot of work. If it were so easy, then it wouldn’t be being an entrepreneur.

So, if you’re going into the business to grow the business, which again is what most people want to do. At the end of the rainbow, there’s something called acquisition or you’re going to partner with someone or sell it to somebody or sell it to private equity or seek investment to even grow it even more and become kind of the next Mrs. Fields again. She started with a business idea and went all the way to, I think, held by private equity.

So, when you get to that point, they’re going to look at it from the very beginning, from the moment that Mrs. Fields started that idea in the back of her, I think it was Salt Lake City or Park City Kitchen all the way to the present.

What did she do to protect the company’s intellectual property? What trademarks did she file? What did she do it for? Her product packaging. What does her website look like? What are the website copyrights of their health? What – is a recipe been shared around the world or has it been kept relatively proprietary? Does she have contracts with her source of chocolate chips? All that stuff is going to be deeply scrutinized throughout the entire entrepreneurial growth process.

So, a lot of times at the beginning and even in the middle, there’s not that much to do. But you can’t just ignore it. It’s just not a very good grooming exercise.

Basically, it sounds like one of the biggest competitive advantages is to be able to keep people out. Once you have the right, you can stop somebody else from copying you, whether it’s patents, trademarks, copyrights or God forbid, getting your trade secrets. So, that opens the lane for a little bit more growth, more uninhibited growth.

So, Steve, what would be the most important thing you’d want listeners to know about trademarks in particular?

I think it’s that it seems very arcane, kind of like not the first thing that an entrepreneur is thinking about. And I get that I was I’ve been an entrepreneur until I had an attorney explain to me the importance of brand and a marketer explained to me the importance of brand. I didn’t really think very much about obtaining a trademark, honestly.

And so, I think it has to be, although it’s not top of mind or and it sounds very complicated and arcane, it’s also something worth thinking about more on the side of like, how are you going to protect your brand and what elements of brand are there to protect? And then through working with the right partner, it is really not very expensive and it is very effective and kind of a must do.

And then through getting that trademark and starting your brand protection and intellectual property protection, it’s the beginning of building a really great framework and a defensive or offensive wall.

All righty. Well, that’s what we want. We want to protect those assets that we’ve worked so hard for.

So, thank you, Steve, for sharing your expertise today. I appreciate your time and the way you explained how.

Intellectual property can be a powerful tool for advancing brand protection strategies. So, if you’re listening and you’d like to know more about Steve Weigler and his work at EmergeCounsel, and especially his proprietary trademark prosecution system, that information, as well as a transcript of this interview, will be found in the show notes at BusinessConfidentialRadio.com.

Thank you so much for listening. Be sure to tell your friends about the show and leave a positive review. We’ll be back in two weeks with another episode of Business Confidential Now. So, until then have a great day and an even better tomorrow.

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