I'm thrilled to be a guest on this episode. Join me as I sit down with Victoria Collier, to explore the intriguing world of protecting and selling your law firm brand. On this insightful journey, we unravel the nuances of protecting and selling your Law Firm Brand.
Victoria Collier:
Protecting and Selling your Law Firm Brand, Smart Lawyers: Position to Transition. I am Victoria Collier and this is the Smart Lawyers: Position to Transition podcast. I am with a special guest today, Tamara Pester, a trademark attorney, and today we will be discussing protecting and selling your Law Firm Name and Brand. Smart lawyers position to transition brings timely and valuable information to lawyers seeking to sell or buy a law firm between now and five years from today. The information provided is not intended to be Legal, Financial, or any other kind of advice, just good information, and entertainment.
Well, you would think that lawyers would know but they don't know and it's not their fault. For the longest time, attorneys were not able to use trade names for their law firms. Rather, it was required to use their own boring name, and that's why you see so many firms that say Collier and Associates, Collier and Sons, Collier and Collier or you know I mean these names they go on forever and ever that list every single lawyer in the practice.
Slowly that's changing and trade names are being permitted by States. And so today, we have a special guest, Tamara Pester who is the founder of TMBTQ Trademark Law, as well as the creator of the learn trademarks class. She's been practicing for more than 20 years and leads a small team, helping businesses increase their value by protecting their unique brands. And she's here today to speak with us on how a well-branded and protected Law Firm name can help the owner transition it to a buyer without having lots of confusion among clients. And I'd also like her to talk to us today about how a buyer can feel confident if they're getting a protected brand or if somebody can come to steal it from them after they bought, what they thought was protected.
Victoria Collier:
It's funny because when I was positioning to sell my firm, I knew I was going to, and I started three years in advance which is about when I tell people that, if you haven't done this yet, you need to do it at least three years in advance and I'd love your clarity on that in a second. I had a DBA done just like you mentioned, doing business as, and it was Estate and Elder law practice. I think it’s what we call it. The Estate Asset Protection Law Firm and so I started using that on our letterhead and everything. A lawyer three hours away actually put in a complaint to the State Bar. And I had used a lawyer to do my DBA because I know I shouldn't be doing things that isn’t in my wheelhouse. So I had used a lawyer to do the DBA, a local lawyer. Three hours away, and I got a notice from the State Bar saying that “hey, even though your DBA is approved, you still have to reference your other name”. And I'm like, then what is the point of a DBA? And so for a full year, we did that. And then finally the State Bar came out and said, you don't need to do those shenanigans anymore. Your DBA is good enough. You know I felt like saying take that, you know, lawyer 3 hours away from here.
Tamara Pester:
Was it a competitor? Why did he file a claim against you?
Victoria Collier:
No, it wasn't a competitor. I don't know. He apparently does not have enough clients. Too much time on his hands because I wasn't the only one. I knew of some other lawyers that I am friends with in my area, that lawyer had also called on their law firms as well. So, at least I had the heads up.
Tamara Pester:
Interesting. Do you think that a lawyer would have better more productive uses of their time and like randomly sending letters about Law Firm names? But okay, whatever.
Victoria Collier:
They have to have something to talk about at the bar events I suppose. So you mentioned a long process and stuff, let's actually go through that because you said, well, you know, it's a long process. Well, I don't know. So Tell me, what does the process look like?
Tamara Pester:
It is a pretty long process. Basically, there's a flurry of activity at the beginning and then there's a long pause and then there's a lot of activity after month eight. If you've engaged an attorney, or if you're doing your own trademark search, the first step is always to do a comprehensive search to make sure that the mark is available for use in registration. You don't want to see any similar marks, of course, no exact matches, but you also want to look for things that are phonetically or visually similar, which would prevent your use, because the trademark office and trademark infringement centers on, whether a consumer seeing two marks next to each other will be confused about whether the goods or services emanate from the same source.
Assuming that you've done a comprehensive search – and when I say comprehensive I'm not just talking about looking at the patent and trademark office records, it’s important to look through Secretary of State records, Dunn & Bradstreet records, the internet, and social media. So, basically, you get your comprehensive search of the way. You figure out your description of goods and services, you apply for the mark, then it's taking a long time. When I first started practicing, I think it was like two months between when you filed and when your application was assigned to an examining attorney at the PTO. Right now, it’s taking eight and a half months between when you file and when your application gets assigned to an examining attorney. They had a huge influx of new applications during COVID and they just never really caught up with their staffing.
So you've done your search. You figured out your description of goods and services, and you applied. You wait for a really long time and then, after eight and a half months, sometimes a little sooner, sometimes a little later, it gets assigned to an Examining Attorney at the US Patent & Trademark Office. The Examining Attorney will do their own search. Just like, we've done our comprehensive search, they will look through the Patent and Trademark Office database for things that are visually or phonetically similar. They also, believe it or not, look at external evidence to see if the trademark might be descriptive of the goods or services. There's a number of other grounds that they review. They want to make sure that you're not not using any geographic terms, and it's not someone's last name. There are a lot of grounds for potential refusal. So if they find one of those grounds, they send out an office action. You used to have six months to respond, but right now, there are floating deadlines. So, you have between three and six months to respond, depending on what type of initial refusal, you get I mean, hopefully, if you're done your work properly and or consulted with an attorney, you won't get any refusal. But assuming that you do get an office action you have a few months to respond, you can file a response to the office action. If that is successful, then it gets published for opposition or if you have no office action and the examining attorney at the patent and trademark office approves your application.
Victoria Collier:
You know, when you said, if you've done it all yourself, or if you've used a lawyer now, I don't know how anyone candidly can do it themselves. Because, I mean, I am a lawyer and I've looked at that paperwork. And I don't when it asks questions, like are you going to use this for, you know all the different things you could possibly use this and like I don't know, I don't know where I could possibly use all this stuff, you know? And so it seems to me. I need a lawyer to actually do the counseling part of this and tell me. If you're going to use it you know ask the good questions, where are you going to use it? What do you plan? And high pie in the sky, where would this go? And then the lawyer would know which options to pick. I'm still not sure. I would still know what options to pick after doing all that. And then there's the, you know, I mean does it include like if it's words doesn't include all fonts or just this fonts, do I have to think about that in the beginning? So can you shed some light on some of those? What I would call nuances, but seem to be what the Mark is.
Tamara Pester:
You're right. A lot of people think that filing a trademark application is just a matter of clicking a bunch of buttons on the patent and trademark office website, and you can do it that way. And there are always services like LegalZoom. You can pay them to just file an application for you but that doesn't really help because a lot of times you end up just throwing your money down the toilet. If you do it that way, you do need to think about all of those initial considerations you need to, you know, trademarks are only good in connection with particular goods and services. So you want to narrow down the scope to things that you're using now or that you will definitely be using in the future. If you have unlimited funds, you can apply for the trademark in connection with various Services that you may or may not use and then just drop them off of the application.
As far as whether you should apply as a word Mark or design Mark, I always think that the best protection is as a word Mark that way you can use it with any font or stylization or logo attached to it. Sometimes there are reasons for applying as a design Mark instead. If it's what we call a “crowded field", when there are a lot of users using similar marks for similar goods and services, and you want yours to stand out. Or if there's, you know, one particular user that you want to get around. I mean, you know, there's a lot of strategy, honestly involved upfront before we even think about filing an application and that's unfortunately where people kind of go wrong and just rush through it. And then, like I said, it is taking eight and a half months. So worst case scenario, you've clicked a bunch of buttons, and you think you did, okay. You invest a lot of money into the brand and then eight and a half months later, you get a rejection. Well, you're basically back to square one. I mean, you can still use. So one of the myths is that you need to have a trademark registration or to use a brand. You never actually like need to have a registration, but there are a lot of benefits of having one.
Victoria Collier:
Well, but in during that eight and a half months, you're waiting and then you get this decline. Somebody else could have filed one. That was actually more acceptable and successful and now you can't use it. All right?
Well, let's bring it back to law firms and is it a name just enough like, you know like I changed mine to the Estate Asset Protection, Law Firm, isn't that enough? And like, I registered it with my state of Georgia. Does that mean that nobody else in the state of Georgia can have that name because I don't care if they're in Colorado.
Tamara Pester:
No. Unfortunately, not. You know, I wish that I was your lawyer at the time, but actually, it doesn't matter because you sold your firm for a ton of money anyway, right?
Victoria Collier:
I sold it for money. Yeah. And I'm about to buy another Law Firm. So it is still relevant to me.
Tamara Pester:
So it really does help to have a unique branded name. Something like an Estate Asset Planning Law Firm is pretty generic. You're going to have an uphill battle enforcing that against other users. So that's the thing with getting a Trademark registration, you want it to be as strong as possible. When you have a brand that uses commonly used terms to describe the service like Trust and Estate Planning Law Firm, you really have a pretty narrow scope of protection. It probably would be limited to the actual Geographic scope where you were using it. There's kind of an inverse relationship between the strength of the trademark and the amount. Well so marketing people always get That with me because they always want to use the most descriptive terms for the products, right? Lavender scent candle. Well sorry guys, but if you really want to start a new brand and have a new line, let's make it unique. Let's make it like purple cow lavender or something, where no one else is using it.You are going to have to invest more in marketing to get people to associate the brand with your particular company, but you'll have a really strong Mark. So I remember when I was looking at a different names or abbreviations that could call my firm, I really like Maven law, you know, I'm Jewish and Maven means a very wise person in the Yiddish language. So when looked at Maven law, well, believe it or not, there was another Maven law out there. I think it was something in Florida and they did Family Law, so I emailed them. Hey, I'd like to use Maven law too, I only do trademarks. I don't think there's going to be any confusion. Is that okay, I'd really like to register the same. I think she also had a trademark registration. By the way, she said, no. And I was like, all right, you know, I don't want to get into that battle because it's already taken.
Victoria Collier:
There's a quid pro quo wine out there as well. So yeah.
Tamara Pester:
Well, wine. I mean, sometimes lawyers drink wine when we're stressed. . . . I wouldn't worry about too much though.
Victoria Collier:
Except that if I wanted to send my clients wine as a gift that has a logo on it. Right, right. Could be a problem.
Tamara Pester:
Yeah, so yeah, there's an inverse relationship basically between descriptiveness and the amount that you're going to need to spend building up that recognition in consumers' minds. But the strongest brands will be really unique and different.
Victoria Collier:
And so I think you said moments ago, that we can't really use geographic or locations either. So like I couldn't say, I don't know, Stone Mountain estate planning Law Firm. That's a place in Georgia.
Tamara Pester:
I mean, you can use that in your DBA in Colorado. You wouldn't be able to use it but, you know, maybe in Georgia you could. But if you tried to register it with the USPTO, you wouldn't be able to.
Victoria Collier:
But it wouldn't really help. Okay, so what are the most beneficial things for people specifically lawyers that when they are renaming their firms? That would be the best for them to consider. As far as names go now I'm not asking you to give names out but you know what are the kind of things that would be unique? Because I think we all think that was unique. You know, and then obviously, you know, what would they need to? How can they find the right kind of trademark lawyer and are there different kinds? You know, I mean, the good ones, the bad ones, the ones that, you know, the trademark in the Box.
Tamara Pester:
Well, that's a complex question. So, you know, I'm working on the trademark trial and appeal board matter right now. We sent our initial request for admissions and we had like, I think 60 questions, but some of them have subparts. An opposing counsel was like, well, you said it's 60 It's actually 240 because you have all these subparts . . . But anyway. Yes, there are a lot of benefits to trademark registration. One of the main benefits is that it will automatically or auto-magically as my husband says, prevent other people from getting registration for the same Mark. There is a myth that the patent and trademark will actually enforce your trademark for you. Their enforcement is really limited just to rejecting other applications that come after you. It's always up to the individual owner to enforce their trademark. But you do have at least the benefit of getting in line with the PTO. Anyone after you will be rejected and not only for the exact mark, but also for things that would be visually or phonetically similar. If you ever have an instance of trademark confusion, if someone else starts using a firm name, that's very similar to yours. Your trademark registration will automatically get you into federal court. You don't need to go through the whole hassle of potentially educating a judge about trademarks and State Court federal courts judges generally have more knowledge about the Lanham Act - the Trademark Act. Trademark registrations are an asset of the company; they can be transferred to the new owner. If you sell your company, your firm and you know, they can be assigned or licensed. If you think that you're going to sell it. To me, one of the main reasons that I wanted to Rebrand from Tamara Pester LLC to TMBTQ is that I, as, you know, my goal is to eventually sell the firm and in the meantime to get my clients to have the same trust in the other attorneys that are working for me as they do in me. So by rebranding to something a little bit more generic. That's not just, you know, Tamara’s Law Firm, my thought was that it gives clients the feeling like okay, they're all part of the same team and they have the same training and I'm going to get the same great level of the service that I have with Tamara.
Victoria Collier:
Absolutely. It is a big boost in value when looking because buyers, see the value versus well, where is Tamara? Do you know? I'm still calling for Tamara kind of thing.
Tamara Pester:
Yeah, exactly.
Victoria Collier:
And so, how can a buyer really research and determine if this has been trademarked or if it's just what you're calling yourself now, you know, I mean, I could call myself Sam tomorrow if I wanted to, but that doesn't mean it's my name.
Tamara Pester:
Just like in any due diligence, they should be able to do a quick search with the patent and trademark office record or at least with Secretary of State records. Hopefully, even if someone isn't going to the trouble and expense of filin a federal trademark application, they are at least filing a trademark or trade name registration with their local Secretary of State. And then, I wanted to address your question about how do you know whether a trademark attorney is good, bad, or otherwise, there are a lot of attorneys out there that kind of do trademarks on the side. These are generally people that have another practice area like especially corporate attorneys sometimes litigators, but I feel like it's more transactional attorneys who were like oh yeah, no big deal. I just you know click those buttons on the patent and trademark office website. Well, those are the people that come back to me, nine months later and they're like, hey, so I thought I could do this trademark, and turns out there's someone else using it and now they're asking my client to stop. So if you are going to hire another attorney to do your trademark, definitely look for someone, that's got at least a couple dozen registrations under their belt. You know, you don't want to be a guinea pig, you can also search through the trademark trial and appeal board and just see if that person's ever represented a client in an opposed proceeding, they should have some like either coursework or experience and trademarks. I mean, I think that people can learn trademarks and actually which brings me to something that we talked about at the beginning, I created a learn trademarks class. It's actually accredited for, I think two credits with the state of Colorado. Now as a CLE trademark principles aren't that hard to learn, it's just that there's a lot of complexities in the process, and you know, it's like you have a general path that you can take for most applications, but then there's a lot of different things and different ways around hurdles, you can find if you do have experience. So That's helpful.
Victoria Collier:
But yeah, I mean that makes the difference between the do-it-yourselfers and when you need a lawyer.
Tamara Pester:
Yeah, exactly. Like, someone could create their own will or estate plan, but how do you know if you're doing it right? You know, means it's just, I could get LegalZoom I guess and probably create a will.
Victoria Collier:
But then I'll see you nine months later and fix that. Yeah, absolutely. So this learn trademark class is for lawyers then who want to get a start in that?
Tamara Pester:
Yeah, I have two versions of it. One is for non-lawyers and then I realized that there was a big market for attorneys as well. It's pretty inexpensive, it's available on Udemy. Now used to be on a more expensive platform but we switched it I think it's like 25 dollars or something. If you go to learn trademarks.com it should redirect to the new page for it.
Victoria Collier:
Great. So, learn that trademarks.com is yours. Wonderful. And I love this kind of stuff.
Tamara Pester:
I could talk about trademarks forever. So, We will do part 2.
Victoria Collier:
Maybe we will. So let me ask you this, is there anything that we didn't say today that you absolutely think our listeners need to know before they turn off the radio and head inside and see their family?
Tamara Pester:
I guess, the main point I want to make is again, just emphasizing that inverse relationship between the strength of a brand and how descriptive it is. Just remember that the weirder the Mark is, it's actually a stronger trademark even though everyone wants to do like, Like Tamera's trademark firm or you know, Victoria's Estate Planning firm, those marks are going to be a lot harder to enforce than something that's really unique, and unusual, which will be the strongest Mark.
Victoria Collier:
So go back to what we were told as kids, stop trying to you know, fit in with everybody else. Just be yourself.
Tamara Pester:
Yeah, exactly great advice.
Victoria Collier:
The weirder the better so well you heard it here to increase the value of your law firm and protect your brand, a tradename that is protected by a trademark by a trademark lawyer is the way to go and now you know. Tamara thank you so much for being with us today.
Tamara Pester:
My pleasure. This was really fun, Victoria.
Victoria Collier:
It was fun. I invite all of our listeners to become a member of our private Facebook group called The Art of Buying and Selling law firms where we provide tricks to the trade and offer free seminars for members of the group. And lawyers do not have to have any present interest in selling their firm to be a member and they could also find more information at our website, quidproquolaw.com. You have been listening to Smart Lawyers Position to Transition, which is a weekly show bringing timely and viable information to lawyers seeking to sell or buy a law firm between now and five years from today, the show is available, 24/7, online, anywhere you listen to podcasts as well as on our website quidproquolaw.com.