While Ticora Davis was conducting scientific research on genetically modified tomatoes in undergraduate school, she was introduced to the concept of “intellectual property” and the importance of protecting your creative works via a patent and copyright system. But little did she know, she was setting the foundation for a successful career as a trademark attorney serving social media influencers, reality TV stars, TEDx speakers, and business coaches. “My clients are cosmic cuties and digital divas,” says Davis. They’re amazing creatives that are bursting with vision, innovation, and passion; however, they’re in need of some serious hand-holding and guidance to avoid making rookie legal mistakes. All of my clients have unique ideas that they cherish, but also [that they] value enough to protect.”
We caught up with Davis, also named a Top 40 under 40 attorney by National Trial Lawyers, to get some insight on trademarks and common small business legal mistakes.
When starting a business, how soon should you trademark your business name?
I believe you should begin the trademark registration process prior to launching your business. Trademark rights are established by “first use” in commerce, meaning the first person to sell goods or services connected to the name has superior rights over those who come after him or her. If you have a great idea and do not plan to launch your business until several months or years down the road, you can still begin the trademark registration process before you’re ready to launch to the public. This allows you to protect your idea and not be in fear that someone else will steal your name. Rihanna’s team did exactly this with Fenty Beauty. She filed her “intent to use” trademark applications 1-1.5 years prior to the launch of Fenty to ensure her rights were secure prior to selling her first Killawatt Highlighter.
Further, if you desire to enter into the realm of franchising or take on investors, securing a trademark is non-negotiable. It’s a way to communicate that you’re a savvy businessman or woman who knows that your business is important enough to invest in. A federally registered trademark puts you in the driver seat of how your brand shows up online. If an infringer is using your business name on Facebook or Instagram and you file a trademark infringement report, FB or IG will request from YOU a copy of your trademark registration certificate. By law, that certificate is like the BIG JOKER. You slam it down and 99% of the time FB or IG (or any social media site) will remove the infringing content or group page.
When it comes to protecting your business, what are the top three issues overlooked by new businesses?
- Failure to conduct a proper trademark clearance search. Many business owners think that a simple Google Search or Search of the Trademark record on the United States Patent and Trademark Office’s website is thorough when in reality it’s not. Another business who started using their mark before you could have superior rights to the trademark and petition to cancel your filing if you file an application.
- Attempting to protect a weak trademark. Many prospective clients come to me with a desire to protect a weak trademark. Weak trademarks are generic trademarks (e.g., attempting to trademark “apple” because you sell “apples” or the word “pen” because you sell “pens”) or attempting to protect descriptive trademarks which are names that merely describe your product or service (e.g., attempting to trademark “Business Coach” because you’re a business coach)
- Failure to have contracts in place. Many creatives share contracts that fail to adequately protect their services or enter into “handshake” deals where they have an oral agreement and no written contract is in place. The problem with sharing contracts is that everyone’s business is unique so it’s best to have a contract that is tailored to fit your business and unique situation.