Kathryn Binkley:

Hey there, and welcome back to the podcast. I'm so excited today to talk with Joey Vitale. And I have to tell you that the reason he and I started talking wasn't necessarily a fun moment for me, but it's been a joy ever since, and so I'm really excited to have him on today. How are you, Joey?

Joey Vitale:

Good, Kathryn. Thanks so much for having me.

Kathryn Binkley:

Thank you for joining me. Would you tell everybody a little bit about what you do, and then we'll dive into how we met?

Joey Vitale:

Sure. So I am a trademark attorney for online business owners, which means that I can help you protect your brand. And I think that we had first got on each other's radars because, I helped another business secured some trademark rights that was a mutual friend of ours.

Joey Vitale:

And then something happened. Yeah. And you reached out.

Kathryn Binkley:

Yes, something did happen. So, I was traveling for business, and I was on I'd hopped on a flight it was like a 5-hour flight back from LA to Charlotte, North Carolina, and I hopped him a flight. And I don't always, but typically, that's a good time for me to, like, go ahead and secure internet access on the plane and get some work done. And so, I had done that. I had 5 hours, you know, to myself, and I was like, this is a perfect time to knock out a few things, I did not know how I would be spending that time because shortly into the flight, I got an email that came through from my assistant and she had received a cease-and-desist letter. And needless to say, like, the tears started just like and I'm on an airplane not able to do very much about it. At least, I thought I wasn't able to do very much about it. And I was like, okay.

Kathryn Binkley:

I know this guy named Joey. He's in some of the same circles. I've heard his name turn around. I was, like, let me just reach out because I know where to find him online and I have Facebook access. You can't do everything through internet access on a plane, there's certain things that are restricted, but Facebook Messenger works. And I was like, okay, let me find Facebook Messenger. So I sent you a message and it all started there. And yeah. I don't know. Like, we need to get into the details of what happened more so, but I'm sure you've reached you've had other people reach out to you in that same way before. Right?

Joey Vitale:

Yeah. So, trademarks are a very interesting kind of complicated area of the law. And I think a lot of business owners, when they look to kind of what they need protection on the legal side of their business, they get, like, this laundry list of things to think about. So, there's, like, LLC and contracts and copyrights and trademarks. And some of them are easier to understand and, like, put layers into place than others. And trademarks are a more just kind of murky gray area of how that works and how you put protections and so a lot of business owners do not act super quickly in taking care of their trademarks. And, honestly, a lot of that has to do with a lot of misunderstanding about what trademarks are. And here's the deal.

Joey Vitale:

Like, I think trademarks are super interesting, but, like, I'm not passionate about trademarks. I'm, like, passionate about helping online business owners get peace of mind. And I used to do a lot of other legal stuff for business owners. And the more and more that I saw people not understanding trademarks and then getting blindsided by nightmare situations that you even told me, Kathryn like, kept you up at night? Yeah. The more I was like, okay. This is something that I really want to focus on and spread the message about as proactively as I can.

Joey Vitale:

As difficult as I know that situation was for you, you're definitely not alone. That happens quite a bit with People being told that they're infringing on somebody's rights or seeing somebody who's copying them, and they don't really know how to go about getting them to stop.

Kathryn Binkley:

And, you know, because I'm in marketing, I talk all the time about, in your marketing messaging, talking about what keeps your ideal clients up at night, this is the 1st time I think I really truly to this degree experienced that. Because for I mean, we connected, we chatted, and we set an appointment to talk, I think the following Monday, and this was a Friday, late Friday. And I had the whole weekend to wait until we could chat, in I did not sleep well that entire weekend just not knowing the uncertainty of what this means and what am I going to have to do and how much am I going to have to completely rebrand. And the thing is I also sell a lot of, I don't know the right word to put on it, but I've been in the world of working with huge companies and I, myself, have communicated with other trademark attorneys on behalf of huge corporations in my past, in my 9 to 5 and I kind of felt, I should've known except that I didn't think it was that big of a deal for me. Like, this act's business solopreneur. The words, by the way, weren't the same that I was using, they weren't the exact same. I felt like there was enough of a difference.

Kathryn Binkley:

I definitely wasn't copying intentionally, but some of the language there was in the same theme or ballpark. And so, I didn't think there was an issue, but there was.

Joey Vitale:

Yeah, so without getting into, like, specific details, I think it would be helpful to talk more about, like, the concern was here that made it scarier for you than other types of fears and, like, bad news emails that you might get.

Kathryn Binkley:

Yeah, so I mean, I've been in business for about 5 years and had the name of my company, which wasn't in question at all, like, the actual name of my company wasn't, but I've always focused on this concept of light in my branding. And one of the big fears was that everything that I built up to this point, I was going to have to kind of scrap and start over. In while I wouldn't lose my audience or the colors that I use and things like that, the concept that I've built in the language that I use in my messaging, I mean, just everything that I talk about, what I feel passionate about, I thought was at risk of completely losing, and so that's what was really scary.

Joey Vitale:

And that's such a common thing especially for, like passionate online creative business owners is we tend to put a lot of time and thought into what we name things because we have a very, Like, deeply rooted vision and purpose that we spend a lot of time trying to figure out. And then once it clicks, A natural kind of business name or brand just kind of services that we want to start using. And I think one of the biggest misconceptions about the way that trademark laws work Is that you think that just like getting an LLC or deciding to form a contract, you think that, quote, unquote, like, getting trademarks is something that you eventually decide to do or not do. And The reality, and I won't go super into the weeds of legal stuff yet, is that as soon as you start to use that brand, as soon as you launch with that business name or that logo or that slogan, you are either claiming trademark rights that are limited or infringing somebody else's rights without really knowing it. And so, it's not about, getting the thing, like getting the LLC or getting the domain name or whatever it is, and it's more about filing certain paperwork to secure your rights as soon as those brands become things that you're committed to enough that you want to invest in protecting.

Kathryn Binkley:

So, let's chat a little bit about where we went from there because we did circle back that Monday and we had a chat and I really wasn't sure which direction it was going to like, if everything was okay and I didn't really need to worry at all or if I was going to have to scrap everything. And I will say that I tend to be very polarizing thinker and it's black and white and there's not a whole lot of gray area and there was some gray in the middle. And so, we were able to work through things and I don't have to change everything, and I don't have to get rid of this whole concept I've built my brand on, but there are a few keywords that I'm going to try to work around. And I don't actually have to avoid them altogether, but I just need to be careful in how I use them. And so, can you chat a little bit about what's like, what types of things need to be a need to be trademarked? Because there or a lot of them. It's not just your business name.

Joey Vitale:

For sure. The weird thing is that anything can be trademarked as long as it's functioning as what the trademark office called calls a source identifier. So, if people see it and then they think of you. It's usually a business name, maybe a logo, maybe like a slogan or a catchphrase, but it could also be the title of a series of works that you put out. And so, you typically see this in, like, a product line. So, product-based businesses, if they have certain names of products, you can't trademark specific products, but you can trademark, like, the lion like, the jewelry lion name that they're all under.

Joey Vitale:

And in the podcast world, you can't trademark the names of your individual podcast titles, but you can get trademark protection for the name of the podcast itself. And so that is one that we're seeing more and more people start to think about, especially after Entrepreneur Magazine has started going after other podcast owners with entrepreneur in the title.

Kathryn Binkley:

Yeah. And so, what's interesting is even though I came to you for one concern, and we've gotten that resolved and we're moving forward, it really opened up this conversation of, well, actually, even in your podcast title, we need to avoid the use of, for me, just the piece of the word entrepreneur, just preneurs.

Joey Vitale:

Yeah. And it's interesting because these decisions are starting to become less of a purely legal conversation and more of a legal plus business strategy conversation. And it's like, hey. If entrepreneur came to you and sent you something, could you ignore them and have them force you to go to court to resolve it? You could go down that route, and they might decide eventually that it's not worth continuing to go after you. But practically, for a lot of business owners, it's better to just realize that that's a risk and shift your branding.

Joey Vitale:

And so, what we're starting to do more and more with our clients is think less legally and more about as a business owner, until you get to whatever the next level of success is for you, let's talk about how willing you would be to actually enforce or defend your rights here and develop a strategy around that.

Kathryn Binkley:

Yeah. I think it's important to clarify here. Like so first of all, Entrepreneur Magazine is in the media space and podcast is in that same classification is the right word.

Joey Vitale:

Yeah. So, they're both in the trademark office has 45 separate classes or categories of goods and services. And they bunched both podcasts and magazines in the same class of this, yeah, like media publication. One's text, one's audio, but they do similar things.

Kathryn Binkley:

Yeah. And so, it's not that we all everyone listening to this is likely an entrepreneur and so it's not that we all have to avoid using the word entrepreneur in everything that we do but making that a brand name for within this same class that they have a trademark is where it could be tricky.

Joey Vitale:

And it's not so much of and this is also a common mistake that business owners fall into is once they realize that there are these classes, then they really kind of think about, okay, what's within this class I need to avoid? But the real test is, is there a likelihood of customer confusion. And so oftentimes, the trademark office will look to those classes as kind of a first line of observation and looking at into that likelihood of confusion. But technically, jewelry and clothes are in separate classes. And it sounds weird at first, but we have to tell our jewelry and clothe like retail-based companies, if we find if you do jewelry and we find a company that sells shoes, that's still problematic for you. And we still have to keep that in mind as we move forward.

Kathryn Binkley:

Got it. Yeah. And that's I know for me on the other side, not necessarily the podcast title side, but with the Entrepreneur Magazine that but the other side, it was all about customer confusion. And even though to me, it's like, oh, they're so different. If there could be any confusion, that's where we had to draw the line and start to look at what needed to shift or not shift or just be cautious not to go too far with a certain with a few certain phrases or words.

Joey Vitale:

Yeah. And so, the big mindset shift that we're helping our clients, and our followers work through is changing the timeline where you start to think about trademarks, instead of it being something that you go to after you've already finalized what it is that you want to do, having it be a part of that conversation before you really commit to the name. So instead of thinking about going to a trademark attorney after your years in business or with your podcast, you're thinking about it in the same way that you would with, like, going to, like, a branding expert or a web developer yeah. Kind of figuring out that logo, because as more and more businesses he created and his services like LegalZoom make it more and more affordable to file kind of a garbage y application. We're getting so many more applications being filed for. And so, in a very weird but literal way, like, we're running out of trademarks. So, it's getting harder and harder to find something that's not already taken.

Kathryn Binkley:

Right. And you're right about that about that piece about not waiting because and that's let's go back to what was keeping me up at night. It was I had invested so much time in branding, development, messaging development I mean, I could continue to just list off all of things. If I try to make a list of everything I would have to change if I had to change the entire concept my branding was built on, everything will have to be touched. Yeah. That's what was it was really the impact of that. There was the emotional connection to it and, like, how am I going to find something else even though I know I could have and can find other phrases, there was that emotional connection, but then even beyond that, every single piece could potentially have needed to be touched and changed.

Joey Vitale:

Yeah. I could have saved myself from that if I just started. That's a good point because so many people are like, well, it's pretty easy to change my business name with the And I'm like, yeah. That is easy, but you know better than I do how hard it is to go into, like, your CRM tool and, like, change all of the emails. Right drop ins and stuff like that. All of the other things that go into those points where you name drop your business name or your brand or your podcast or whatever it is.

Kathryn Binkley:

Yeah. And even, like, with my podcast. So, obviously, I am going to be changing my podcast cast name after we chatted about Entrepreneur Magazine. And while we're recording this, we are actively researching potential names, by the time this is live, will have a new name. And so, you if you're listening, already know what that is. But everything and everywhere that this podcast has already been mentioned and shared, I won't necessarily be able to go back and change that. So I'll do my best with, SEO redirects and things like that to get to save as much as I possibly can as far as the organic, reach and search from is being shared, but then moving forward, every graphic, every, episode like, the show notes for all the past episodes, like, there's so many little things that will have to be changed and that's just for my podcast name, not to mention, like right. I don't know. That's not my entire brand. That's just like a piece.

Kathryn Binkley:

And so, yeah, it's a lot, but it's clearly going to be worth it to do. Although, I don't want to do it again, so we are looking at making sure that whatever I go with is going to work.

Joey Vitale:

Well, you're kind of like the teacher's pet of a attorney's client. So, like, you're doing this all the right way. And we, At the same time, like, I know that even thinking about hiring an attorney is like a significant investment for a newer emerging online business. And so even if you even if you might not be quite ready to work 1 on 1 with someone. There are resources available that can help you understand even more about, like, the things that you don't know that you don't know, just so that you're not caught off guard by things, resources that can help you, file applications on your own, if you have the time to learn and file like that, because this isn't rocket science, but just like any other service-based business owner would know. Like, it takes time to learn your area of expertise and get it right.

Kathryn Binkley:

Yeah. And I mean, like I said, when I was working for marketing agencies, that was my background and I had experience working with trademark attorneys. Yeah. It's never for myself, but I had like, some people are coming into this with no experience whatsoever. I've actually been in this conversation, handled things, but I didn't retain any of it. Like but I know more than the average person would, I would say, and I still did not know nearly enough. There are still so many things that I've learned and still so many things that I don't know yet.

Joey Vitale:

Yeah. Well and you, again, probably know this on such a deeper level than I do with your understanding of marketing and sales and running a business. But sometimes, it's the it's the things that you think you know that are actually a couple of degrees off that are the most dangerous.

Kathryn Binkley:

Yeah. So true. So true. I wanna say, like, even you mentioned a significant investment, but I have to say that no matter the investment, it would cost far more to have to go back and redo everything and start from scratch. So it's really smart to make that investment early on.

Joey Vitale:

Yeah. So I would say no matter what, the cost of not thinking about this and protecting it is super high and worth more than investing anything and moving forward. So depending on where you're at, like, if you're at a place where, you know, between 1 to $2,000 worth of an investment is something that you can easily afford and manage. Like, this is a no brainer to reach out to somebody and get some help. If you don't really know if you can afford that or if that seems high, then what I would recommend is for you to come up with some type of a budget and say, okay. If this is the money that I can willing to spend to be proactive on this, give that to somebody who's experienced with this and be like, how far can this get me? Maybe it's maybe it's not one to 1 services. Maybe it's a of course, maybe it's some if nothing else, like some free guides that can help you. But when you're running a business, a lot of times, people just don't have time.

Joey Vitale:

And I'm learning this as a business owner too. Like, a lot of times, you just paying for this kind of stuff is the shortcut that would otherwise be worth a bunch of time that you'd have to invest to do it on your own.

Kathryn Binkley:

Yeah, for sure. I just I don't know. I'm like I understand why people it doesn't make sense, but I understand why people why even myself, I waited. It's like, okay, I'm gonna build my business. I'm gonna grow my audience. I'm gonna do all of this. And then one day, like, when there's actually something to protect, I'll have that conversation. Well, eventually, there was something to protect, but that was out of my mind or still like, oh, one day, but you need to protect it before you build it or else you risk everything that you've built.

Joey Vitale:

In the same way that people are thinking about, like, a domain name yeah. And, like, hopefully, getting the .com version of whatever it is they want, trademarks need to be a part of that type of a conversation Yeah. Of, like, if this is not available or something even similar is already seems to be taken based on what I'm seeing on this free Trademark Office database, even if it's not, like, I need to act quickly. Because practically, one of the biggest mistakes people make is that they so you can go on to the US trademark office website and you can run a free search that's nowhere near as, like, clean as Google, but you can see if the you can type in whatever it is, your podcast name, your business name, and see if anything comes up. The mistake that a lot of people make there is that they search, nothing comes up, and they think that that's fine. And The big thing that they don't realize or they don't think about is that that search that you run has an immediate expiration date.

Joey Vitale:

So somebody could apply for something the next day. Yeah. And then you're screwed.

Kathryn Binkley:

Well and even so, if you go and search, you know, my at the time that you're listening to this, my prior podcast name being Litpreneurs, if you search for that I mean, I did the Google search. That's not out there. That's not common, but it doesn't matter. There were still components really both kind of pieces of that word that were put together had some opportunity for confusion or infringement.

Joey Vitale:

Yeah. So when you when you get the let's go into Louise a little bit. So there are when you just start using a trademark, a brand in commerce, You automatically get these common law trademark rights, which means that you get these automatic rights that are exclusive only to your geographic region. So somebody across the state or across the country can use the exact thing same thing or anything that's similar. What you wanna get is a US Federal trademark registration because that beefs up your rights from those automatic limited rights to exclusive rights nationwide to not just your trademark, but anything that's confusingly similar. And that confusingly similar thing is pretty broad. So you get very extensive protections to a lot of things that are similar, and the trademark office will help you in refusing applications that are similar that are applied for. And so if you own a registered trademark, that's pretty awesome because you know that not only are you playing defense right? And that nobody can use your specific name, but you also know nobody else can use anything that's too similar. Which is great if you have the registration, but if you don't, then you have to be really careful about walking on other brands' feet because just running an a search for exactly what you're using might not and probably won't pull up all of the similar words and phrases That could be too close. That could cause a refusal even if you apply.

Kathryn Binkley:

And that's, yeah, that's where it gets really tricky and where I'm so grateful to be able to just send over my new podcast title idea to you and have you and your team handle the research for me to make sure we're good. Yeah. So if someone is listening and they are realizing, okay, this is something that I need to take care of, and I talk a lot with my audience about making decisions from that place of their teacher self and so if they put themselves in, you know, 7- figure Kathryn or, you know, whatever their name is, fill in the blank, and they're making a decision right now as if they were that 7-figure business owner, it's a no brainer to protect themselves. So if they're reading from that place of the future, making decisions based on where they will be when they've got the successful business that they want, they're going to take steps forward and if they do, what do they need to do? What's some of the first steps just to get them started?

Joey Vitale:

So I would the first thing that you need to do that a law firm can help you do is run a comprehensive trademark search. So we talked about the limitation and running those searches yourself. So, a lot of law firms do this and Mein does as well where we have more advanced technology that helps us run those comprehensive searches because there's no point in you filing for something that if we run that type of a search, know that we're gonna get some type of a denial from the trademark office. And so the first thing you wanna do is have that comprehensive search and analysis Run. And then after that, you again, with all of these other trademark applications that are being applied for, you want to submit your application, to the federal trademark office in a way that is increasing your chances as much as possible of it getting accepted because over half of the trademark applications that get applied for do end up getting refused. So, if you if you know that you're ready to move forward, I would I would reach out to a trademark attorney as you can, a lot of us offer free or paid consultation calls or strategy sessions to give you a sense of what the details look like. And as you're meeting those people, I'll say this too. It's understand as a trademark process is a long process.

Joey Vitale:

Usually, it takes anywhere from 6 to 12 months after you apply to ultimately get the registration. And I've learned a lot about customer experience doing this because since it's such a long relationship, even if we end up giving the client what they want, if they felt like was hard to get a hold of us during that time or that, you know, we it was hard to keep track of the different emails and things that we were sending. They can still feel like it wasn't that great of an experience even though they got the result that they wanted. And so we've done a couple of things including having our own client management portal that has, like, a private chat so people can just scroll up to see earlier conversations. Because our goal is hopefully, get you the registration, but also to have you feeling like you weren't worrying about this as we were making progress for you.

Kathryn Binkley:

Great. So people know those first steps, and I highly recommend that they reach out to you. Of course, I've had an incredible experience so far. We're gonna continue this over at least the next however long it takes to get this trademark, but then there are others because it's not just the podcast name, ultimately, protecting my business name, of course, the podcast. We talked about books. We've talked about, program names, course names, there's all kinds of things that we need to discuss and I'm sure there's a lot that I don't know about all of that, so we're gonna continue to work together.

Joey Vitale:

And real quick, by the way, like, I any anybody in in your tribe, like, we would love to work with. So please, we'll take care of you anyways, but we'll take extra good care of you if we know that Kathryn's sending you our way. So let us let me know that that you listen to this, if you do reach out. But also, I just I wanna throw another nightmare situation out there.

Joey Vitale:

Just so people understand, like, the different ways that this can be an issue for you. And this happened recently with another one of our clients Is that, I wanna talk about social media platforms and specifically Instagram and Facebook. So let's say that you let's say that another social media account popped up and they were very obviously just copying you. It was your content. It was your like, it was really close to your social media handle. It looks very, very similar. So one easy effective way to get them shut down is to send what's called the DMCA notice through the platform, you basically report the infringement through that platform. And the platform owners, they don't like playing referee because if they make a decision, then it might put liability on their end and they could get dragged into if they decide wrongly.

Joey Vitale:

So they have decided to just kind of defer to any trademark or copyright registrations that exist. So certain bullies are starting to catch on to that type of a power and they're filing for trademark applications, pretending to be the owner of the company. And then they're filing and then they're creating these social media accounts. And then once they get the registrations, they're submitting a DMCA notice to the actual owner.

Kathryn Binkley:

Oh, wow.

Joey Vitale:

And so What happens at that point is your site gets shut down. And because you don't have the trademark registration, Instagram or Facebook or whatever it is doesn't listen to you. And now you have and they might not do anything. They might ask for money for all of this to get switched back to you. And so it's kind of this weird version of, like, brand identity theft that can happen. And, again, the more that it gets easier to do business online, the more that these kind of loopholes can get discovered.

Kathryn Binkley:

Yeah.

Joey Vitale:

So just another way that this can help prevent those types of issues.

Kathryn Binkley:

That's crazy. Yeah. I'm glad that you shared that. Just another reason to make sure you protect your everything from the beginning. Yeah. So if someone wanted to take next steps and talk to you. What should they do? How can they find you online and what should they do?

Joey Vitale:

Yeah. So the easiest thing to do is just to go to, indilaw.com/freeguide. I put a guide together that walks you through the 4 most common mistakes that we see people make that if you understand these mistakes and how to avoid them, you'll be like light years ahead of most business owners. So that will be the first thing. And then after that, if you wanna grab a call with me or if you wanna sign up, you can. We talked about that kind of 7-figure business owner who would be ready to get started. If you're not there yet, then the good news is that you don't need to hire an attorney in order to file one of these trademark applications.

Joey Vitale:

So if you do have the time and willingness to learn this on your own and file an application on your I do also have a course available that walks you through how to do all of this. You'll understand at a more detailed way what we've been talking about, how to run that search yourself, how to get that application filed yourself. And then if during that course, you realize that it's more than you thought it was. We do have a bonus available where you can hire my law firm, and we'll discount the course off for you.

Kathryn Binkley:

Oh, amazing. Good, that's awesome that you've got some options there. I went straight to working with you. I knew I didn't wanna handle it myself. I already I know what my time is worth. So yeah.

Joey Vitale:

We have quite a few people who sign up, but then, like, within a week, they're, like, oh, this is a lot more than I thought it would be.

Kathryn Binkley:

Yeah. It is good for those, yeah, to have those options. That's amazing. Okay. So, we'll drop that link in the show notes, and then, otherwise, I encourage people to connect with you online, where's the best place to on social media, where's the best?

Joey Vitale:

So, the best place to talk trademarks with me is on Facebook. Okay. Every, Tuesday at 1 PM, I go live on Facebook from my indie law page talking about a different Topic in the trademark world that's all catered to online business owners.

Kathryn Binkley:

Just yesterday, I actually caught one of his lives. It's yesterday at the time of recording, so you might have to scroll back a little bit to find the one where he's chatting about protecting your book title, and there's some interesting caveats there that I learned. So, anyway, if you're thinking about writing a book, that's one to catch, but there are so many good lives there. So go check those out. We'll have that link in the show notes as well. Thank you so much for joining me, Joey, this is such an important topic and I'm glad that you could come on and share with everyone and not only educate them, but then kind of explain in two degrees why I'm shifting gears here with the podcast name.

Joey Vitale:

Well, I'm so excited for your new direction. Happy to come on. And again, if anybody has Any questions about this? Or I found that some business owners also just find this stuff really interesting. So, if you wanna learn more just kind of to geek out on this stuff, I have some resources to send you as well.

Kathryn Binkley:

Awesome. Amazing. Well, thanks.

Joey Vitale:

Of course. Bye, everyone.