Ep. 59 How To Protect Your Brand With Trademarks with Lauren Bercuson
[This is a Six Figure Brand Society vault training from trademark attorney Lauren Bercuson]
You've spent years building your brand. You've crafted the perfect name, designed a beautiful logo, and built a loyal following. But here's the uncomfortable truth: if you don't have a trademark registration, you don't actually own your brand. You're essentially renting space in the marketplace, vulnerable to anyone who decides to challenge you.
This isn't meant to scare you. It's meant to protect you.
I hosted trademark attorney Lauren Bercuson in the Six Figure Brand® Society for a comprehensive training on trademark law, and the insights she shared are too valuable not to share more widely. With nearly two decades of experience in trademark law, Lauren founded Storylock Legal specifically to help entrepreneurs safeguard the names, logos, taglines, and creative assets they've worked so hard to create.
This is everything you need to know about protecting your brand, choosing a distinctive name that's actually trademarkable, and avoiding costly legal mistakes that could force you to rebrand your entire business.
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Understanding Intellectual Property: The Foundation
Before we dive into trademarks specifically, let's clear up the most common source of confusion: the difference between trademarks, copyrights, and patents.
Many business owners come to trademark attorneys saying things like "I want to copyright my name" or "I need to patent my brand." While these requests come from the right place (wanting to protect intellectual property), they're mixing up three very different types of protection.
Trademarks: Your Brand Identifiers
Trademarks are any brand elements that identify the source of goods or services.
Think about Nike. When you see the word "Nike" on a piece of clothing, you immediately know the source of those goods. Just hearing the word alone conjures an entire story: powerful athletes, quality products, innovation. Other Nike trademarks include the swoosh logo, the slogan "Just Do It," Air Max, and Dryfit. All of these identify Nike as the source.
Trademarks are your source identifiers: names, logos, and slogans.
Copyrights: Your Creative Works
Copyright protects creative works like books, music, performances, podcasts, and courses.
Copyright protection attaches automatically as soon as you create the work (legally, when it's "affixed to a tangible medium"). However, if someone steals your work and you need to take legal action, you must have filed for copyright registration with the U.S. Copyright Office. It's an online application process, but that registration is required to bring an infringement action.
Patents: Your Inventions
Patents protect inventions, technological advancements, and unique product functionalities.
Think of the ergonomic design of a computer mouse or proprietary technology. Patents cover the invention itself and the underlying technology.
The simple breakdown:
Trademarks = names, logos, business identifiers
Copyrights = creative works
Patents = inventions and technology
What Actually Qualifies as a Trademark?
Most people think trademarks are just business names and logos. While those are the most common, trademarks can actually take many forms.
Words and Phrases
Nike (the word itself)
"Just Do It" (Nike's slogan)
"Breakfast of Champions" (Wheaties)
"Every kiss begins with K" (Kay Jewelers—personally one of my favorite clever taglines)
Logos and Symbols
Strong logos function as source identifiers even without accompanying text:
The Nike swoosh
Apple's apple
The NBC peacock
Lululemon's circular symbol
You don't need to see the company name to know exactly who those logos represent.
Colors
Yes, colors can be trademarked when they become distinctively associated with a brand:
Tiffany Blue: That specific shade of blue is a registered trademark. If you're a jewelry store and start using that color in your branding, expect a cease and desist letter.
Christian Louboutin's Red Sole: That distinctive red sole is trademarked (though this has been a source of litigation in various countries).
Sounds
The NBC chimes (those distinctive notes)
The Netflix "ta-dum" sound
Various brand jingles
If you hear the sound and immediately know the brand, it qualifies as a trademark.
Characters and Designs
Mickey Mouse serves as a source identifier for Disney. It's both a trademark (identifying Disney as the source) and subject to copyright protection (as a piece of art). Some things can serve dual purposes.
Why Trademarks Actually Matter (Beyond Legal Protection)
Lauren made a powerful statement during the training: "If you don't actually have a trademark registration, you don't truly own your brand."
Here's what trademark registration actually gives you:
Legal Ownership Nationwide
When you have a trademark registration, you are the legal owner of that mark throughout the entire United States in connection with the goods and services you registered for. This isn't just local protection—it's nationwide.
Automatic Legal Leverage
If anyone tries to claim you're infringing on their mark, you simply present your trademark registration and the burden shifts to them to prove there's an issue. You have legal presumption of ownership.
Ability to Stop Copycats
Your registration allows you to easily stop others from using confusingly similar marks. The registration symbol (®) itself serves as a major deterrent. When copycats see that symbol, they know not to mess with you.
Building Customer Trust
Consider two businesses offering the same services at similar price points. If one has the ® symbol and one doesn't, which feels more legitimate? The registered trademark signals stability, longevity, and credibility. It tells customers "you can trust us as a company."
Brand Recognition and Consistency
Companies like Lululemon police their marks carefully. They ensure there are no copycats and maintain consistent quality. When you buy a Lululemon product, you know exactly what you're getting because they protect their trademark and maintain their standards.
Tangible Business Value
Here's what many entrepreneurs don't realize: trademarks are valuable assets that increase your company's worth.
If you're building a business with an exit strategy in mind, every trademark registration increases your company's valuation. Trademarks can be licensed and monetized (think about how much Nike makes from licensing alone).
Even for smaller businesses, if you're a course creator who licenses your course to business coaches worldwide, that's significant passive income. Or if you're seeking investors, having your intellectual property secured makes your company substantially more appealing.
Important Symbol Usage Rules
You cannot use the ® symbol unless you have a federally registered trademark. Using it without registration is illegal.
Until you have your registration, you can use the TM symbol (you've probably seen this in the top or bottom corner of brand names). This puts others on notice that you're claiming trademark rights, but it doesn't carry the same legal weight as ®.
The Trademark Spectrum: Why Your Business Name Might Not Be Trademarkable
This is one of the most critical concepts in trademark law, and it's where most business owners make expensive mistakes.
People often come to trademark attorneys wanting to protect names like "PR Blueprint Coach." When you hear that name, you know exactly what they do: they provide a strategic roadmap for PR. The problem? That descriptive clarity is exactly what makes it weak (or even impossible) as a trademark.
In trademark law, there's something called the trademark spectrum of distinctiveness. On one end are weak, generic marks that get zero protection. On the other end are strong, fanciful marks that receive the broadest protection possible.
Let's break down each category:
Generic Marks: No Protection Possible
Generic marks are simply the common name for the product or service. Examples:
"Cookie" for a cookie
"Aspirin" (in the U.S.)
"Car" for an automobile
You cannot register or protect these terms. Why? You simply cannot stop someone else from using the word "cookie" if they are, in fact, selling cookies. It's the common term for the product.
The Genericization Danger
Even brands that successfully trademark their names must be vigilant that their brand doesn't become the common term for a product. If it does, they risk losing trademark protection entirely.
Band-Aid is the classic example. The company is constantly at risk because when someone cuts themselves, they ask for a "band-aid," not an "adhesive bandage." While this ubiquity is great for brand recognition, if the name becomes completely genericized, anyone can use it.
Brands that actually lost their trademarks through genericization:
Jet Ski (became the common term for personal watercraft)
Escalator (was originally a brand name)
Aspirin (in some countries)
As a trademark owner, you must actively police the marketplace to ensure others aren't using your name in connection with their products, or your mark risks becoming generic.
Descriptive Marks: Extremely Difficult to Protect
Descriptive marks go beyond generic (not just the word for the thing) but still clearly describe the product or service.
The Container Store is actually a terrible trademark. It literally describes what they sell: containers. The only reason they eventually obtained protection is because they proved the mark had become famous through extensive use, advertising budget, and national recognition. Without that fame, descriptive marks simply don't get registered.
The challenge with descriptive marks:
Very difficult to register without proof of fame
Hard to make a name for yourself in the marketplace
Easily confused with competitors using similar descriptive terms
Why people choose descriptive names (and why it's a mistake):
Business owners think descriptive names help customers immediately understand their offering. They also believe it's better for SEO to have a name that directly states what they do.
While these concerns are valid, there are many other ways to optimize for SEO and communicate your services beyond your business name. The legal protection and distinctiveness you lose by choosing a descriptive name far outweighs any SEO advantage.
A Real-World Example: Happily Ever Elephants
Lauren shared a perfect example from her own experience. For years, she ran a children's book review blog on the side. Her blog name? Happily Ever Elephants.
The name came from her toddler son who, after finishing books, would say "and they lived happily ever elephants" instead of "happily ever after." It stuck, and she named her blog after it.
In a world of children's book blogs with names like:
"I Love Kids' Books"
"Kids' Books Rock"
"Mommy Loves Kids' Books"
"The Best Kids' Books"
Her blog stood out immediately. It was memorable. Major publishers sent her boxes of books daily. Why? Because while "Happily Ever Elephants" doesn't tell you what the service is, it's distinctive and memorable.
Through great branding and storytelling, Lauren created the association. She told her story, connected with her audience, and it became clear that Happily Ever Elephants was a children's book blog, not an elephant sanctuary.
The lesson: You want your brand to be as distinctive as possible. Distinctiveness beats descriptiveness every time.
Suggestive Marks: Where Protection Begins
Suggestive marks don't explicitly tell you what goods or services are being offered. Instead, they require the customer to make a mental leap, creating an association between the name and the offering.
Examples of suggestive marks:
Coppertone: You don't know it's sunscreen from the name alone, but it suggests something that might leave a copper tone on your skin.
Netflix: Suggests something related to movies or the internet, but doesn't explicitly state "streaming entertainment service."
Jaguar (for cars): Allegedly named because jaguars are the fastest and sleekest animals, and Jaguar cars are fast and sleek. The connection isn't direct, but you can make it with a little thought.
Storylock Legal (Lauren's own firm): The name suggests that she helps business owners "lock in" their brand stories, protecting them legally. It's suggestive without being descriptive.
Why suggestive marks work:
The best trademarks tell great stories. When you hear a strong trademark, you immediately conjure associations in your mind. Nike makes you think of athletes, sweat, hard work, dedication. The mark creates an entire narrative beyond just the product.
For brand strategists and namers: This is a fantastic exercise for clients. Ask them:
How do you want people to feel?
What ease or transformation will they get from working with you?
What metaphors or associations connect to your core offering?
There are many creative exercises to move away from descriptive naming toward suggestive naming.
Arbitrary Marks: Very Strong Protection
Arbitrary marks take a word with one established meaning and apply it to something completely unrelated.
Apple for computers is the most famous example. Apples have absolutely nothing to do with technology. (There are origin stories about schools and teachers, but even those don't create a logical connection.) The word "apple" and computers have no apparent relationship, which is exactly what makes it a strong trademark.
Other arbitrary marks:
Dove for soap (maybe you can stretch to make a connection: white, soft, pure)
Dove for chocolate (absolutely no connection to the product)
Arbitrary marks are fun, memorable, and offer strong protection because the connection is entirely created by the brand, not inherent in the name itself.
Fanciful Marks: Strongest Protection Possible
Fanciful marks are made-up terms that didn't exist before the brand created them.
Examples:
Pepsi (completely invented)
Lululemon (made up)
Xerox (created term)
Kodak (invented specifically as a trademark)
These marks garner the most protection, the broadest scope, and are easiest to enforce against infringers. Since the word literally didn't exist before you created it, there's no risk of overlap with existing uses.
The strategic advantage: If someone is looking for your business and the name is completely unique, they land on your website or page. There's no confusion, no competing results, no generic industry noise.
Why a Comprehensive Trademark Search is Non-Negotiable
Lauren emphasized this repeatedly during the training: Conducting a comprehensive clearance search is arguably one of the most important parts of starting your business.
While some people laugh at that statement, here's the truth: You should never build a business on a name you don't own.
The House Analogy
Lauren learned this from her first boss 20 years ago: "Think of your trademark like a house. You would never walk up to a piece of land and just start building a house on it. You don't know who owns it. You don't know if the foundation is safe. You don't know the zoning laws. You just would never do that. It's way too risky."
Building a brand around a name without clearing and searching it first is equally risky. There are countless things that can go wrong.
The Standard Isn't "Identical"
Here's what most people misunderstand: When evaluating trademarks, the standard isn't whether an identical mark exists. The standard is whether one mark is likely to cause confusion with another mark.
Example: The Bluebird Cookie Company
Let's say your mark is "Bluebird" for cookies, spelled B-L-U-E-B-I-R-D.
Then someone else tries to register "Bluebird" for cookies, but they spell it B-L-U space B-Y-R-D.
They might think they're clever and won't find an identical match in a DIY search. But the Patent and Trademark Office (PTO) will refuse their mark because it's likely to be confused with the already-registered mark.
Why? If we're having a conversation and I tell you I bought cookies from "Bluebird," you have no idea if it's the properly-spelled Bluebird or the phonetic spelling. You'll assume they're the same company. This is exactly what trademark law is designed to protect against: confusion in the marketplace.
What a Comprehensive Search Actually Involves
A proper clearance search is far more than Googling your desired name. It includes:
1. Patent and Trademark Office Records
Direct bars (identical marks)
Phonetic equivalents ("Bluebird" vs. "Blu Byrd")
Foreign language equivalents
Visual similarities
All existing registrations and pending applications
2. Common Law Marks Common law trademarks are marks being used in commerce but not registered (or not yet registered) with the PTO.
Why common law searches matter:
Even if someone hasn't registered their mark, they still accrue rights through use. In the U.S., trademark rights are based on first use, not first to file.
Here's the nightmare scenario:
Let's say Lauren is "Storylock Legal" on the East Coast. She files an application without searching and receives a registration because the PTO finds nothing conflicting.
But there's "Storylock Law" operating all up and down the West Coast. They started using the mark before Lauren did, but they never filed an application. The PTO didn't know about them, so they granted Lauren the registration.
Now the West Coast firm has to go to the Trademark Trial and Appeal Board and argue: "Lauren shouldn't have this registration because we started using the mark first."
Now you're in a litigation battle that could cost tens of thousands or even hundreds of thousands of dollars. The first user should have been the rightful owner, but because Lauren didn't search common law marks, she filed an application for a name someone else was already using.
3. Risk Assessment: Low, Medium, or High
Based on comprehensive search data, a trademark attorney will assess whether your mark presents:
Low risk: Pretty clear path to registration. Move forward confidently.
Medium risk: Some potential conflicts exist. You can make a business decision to proceed and fight any refusals, or choose a different name.
High risk: Existing registration or strong common law use in your industry. Don't proceed. You're likely to get a cease and desist letter, which is not how you want to start a business.
The Real Cost of Skipping This Step
Spending a relatively small amount initially to clear, register, and secure your trademark can save you tens of thousands (even hundreds of thousands) of dollars down the road.
For service-based businesses:
Rebranding means updating:
Your website
All marketing materials
Advertising campaigns
Social media presence
Business cards and stationery
Email signatures
It's awful and expensive, but survivable.
For product-based businesses:
Add to that list:
All product packaging
Bottles, labels, containers
Shipping materials
Retail displays
Distributor relationships and agreements
Wholesale catalogs
The costs multiply exponentially. It's a nightmare scenario.
The Intangible Cost: Lost Goodwill
Beyond the money spent on rebranding, you lose all the goodwill and brand recognition you built in the original name. That's priceless.
Now you have to create a brand new association from your old name to your new name. You're essentially starting over with brand recognition. Years of relationship building evaporate overnight.
It's a massive undertaking that could have been avoided by investing in proper clearance from the beginning.
The Application Process: What to Expect
Once you've conducted your search and it comes back clear, you're ready to file your application. Here's what the process looks like and what you need to know.
Two Types of Applications
Use-Based Applications
File this if you've already started using the mark in commerce. Important note: "using the mark in commerce" doesn't mean it's your social media handle and you've posted about it on Instagram. You must be actually offering a good or service in connection with the trademark.
Intent-to-Use Applications
These are strategic gold. An intent-to-use application is the only way to secure an earlier use date without actually using the mark yet.
Here's how it works:
You file your application today (let's say April 24, 2025) as an intent-to-use application. You're telling the PTO: "I haven't launched yet, but I'm taking concrete actions to use this mark in connection with these goods and services."
The PTO loves these applications because they show serious intent, not just speculation.
The application holds your place in line. If you don't actually start using the mark and offering your services for two years, that's fine. Once you show the PTO evidence that you've started using the mark in commerce (your website, product photos, etc.), your first-use date reverts back to the date you filed the application.
This is the only legal "loophole" for securing an earlier first-use date, which provides huge advantages if there's ever an infringement action.
Strategic use by celebrities:
Taylor Swift is famous for this. She files intent-to-use applications for album titles, song names, and merchandise concepts before announcing anything publicly. By the time "Tortured Poets Department" was announced, she had already filed numerous trademark applications. There are literally trademark enthusiasts who monitor celebrity filings to predict upcoming releases.
The Waiting Period
Once you file, prepare to wait. It typically takes 7-10 months before a PTO examining attorney is even assigned to review your application.
Three Possible Outcomes
1. Office Action (Non-Substantive)
These are minor issues: clarifying descriptions, fixing formatting, or administrative corrections. Relatively easy to resolve.
2. Office Action (Substantive)
These are significant issues:
The mark is too descriptive
The mark is likely to cause confusion with an existing mark
Other substantive legal arguments
You'll need to craft a legal response overcoming the examiner's concerns. This is why proper clearance searching matters—you want to avoid these situations entirely.
3. Approval to Publication
If your mark sails through or you successfully overcome any refusals, it moves to publication.
The 30-Day Publication Period
Once the examining attorney approves your mark, it's published in the Official Gazette. This is the PTO essentially saying: "Public, we approve this mark for registration. If you think you'll be harmed by this registration, you have 30 days to speak up. If not, we're registering it."
This is the final checkpoint before registration.
After Publication
For use-based applications: Your mark registers (assuming no oppositions during the publication period).
For intent-to-use applications: You have six months to submit evidence that you're using the mark in commerce. You can file five extensions (paying a small fee each time), giving you about three years total to launch.
This flexibility is enormous. You're securing your mark, and the moment you launch, you're fully protected.
The True Value of Trademark Registration
As a brand strategist and designer, you're the legal owner of your mark nationwide. Without it, as Lauren puts it, "you're kind of renting." That's a perfect way to think about it.
You can use the ® symbol, which is a massive deterrent to copycats. When potential infringers see that symbol, they know you have legal backing and think twice about using anything similar.
Your trademark becomes a valuable company asset that you can license and monetize. Nike makes extraordinary amounts from licensing. But even on a smaller scale, if you're a course creator who licenses your course to business coaches worldwide, that's significant passive income.
Think about baby businesses that created great intellectual property and now license it to others. You don't have to be Nike to benefit from trademark licensing.
You can create real asset value. If you're building toward an exit or seeking investors, trademark registrations substantially increase your company's valuation. They're tangible proof of protected intellectual property.
Common Questions About Trademark Protection
Can I Trademark Just My Name or Do I Need the Logo Too?
This is one of the most frequently asked questions, and Lauren's answer is clear:
Always start with your word mark.
Your word mark (the name itself, without design) protects those words however you stylize them. Even if you change fonts, colors, or design elements, your words remain protected.
Lauren registered "Storylock Legal" as just words. Why? After rebranding, she wanted to make sure she loved the logo and that everything felt right for a year or two before committing to a design registration.
Here's the problem with logo registrations:
If you register a specific logo design and then later decide you need a brand refresh or want to modernize your look, you've lost that protection. You'd need to file a new application for the updated design.
Your word mark stays constant regardless of how you style it.
When to consider a separate design mark:
Your logo is used independently without words (like Nike's swoosh or Lululemon's symbol)
The design element is highly distinctive and central to brand recognition
Customers recognize the design independently of your name
You have budget to build a comprehensive IP portfolio
Skip the design mark if:
Your logo is just your name in a nice font
You're bootstrapping and need to prioritize spending
You might rebrand or refresh visually
The design isn't distinctive enough to warrant separate protection
Lauren's advice: "If you're going to do one thing to protect your business, start with the word mark. That's the most important thing you can do. As you're building and growing, you can build your IP portfolio. But if you're just starting out and want to know your business is protected, protect your word mark."
When Can I Use TM vs. ®?
TM: Use this if you don't have a registration but want to put the world on notice that you're claiming trademark rights in a particular mark. You can use TM while your application is pending or even before filing.
®: Use this only after your mark is federally registered. Using ® without registration is illegal and can jeopardize your application.
What If Two People File on the Same Day?
First, the PTO would likely look at the timestamp to determine who filed first, even if it's a matter of minutes.
If they were filed at the exact same time (highly unlikely), the determination would go to who was using the mark first. Who can prove they were using the mark in commerce before the other party?
This is why in the U.S., trademark rights accrue based on first use, not first to file (unlike patent law).
What Does Hiring a Trademark Attorney Actually Look Like?
Lauren's practice focuses on clearance and registration rather than litigation. As she put it, "I've been there, done that with litigation. I have two kids. That's not the lifestyle I want. Clearance and protection is so much more fun because it lets me combine the logic of law with creativity."
Her signature package: Trust Your Trademark
Investment: $2,500
What's included:
Full comprehensive clearance search of one mark
Review of all Patent and Trademark Office records
Common law trademark research
8-20 page analysis determining risk level (low, medium, high)
All conferencing and communication (she doesn't turn on the clock for calls or emails)
Application preparation and filing
Support through to registration (ideally)
What's not included:
USPTO filing fees ($350 per class, paid directly to government)
Second search if you pivot to a different name
Fighting substantive refusals (separate fee if you choose to argue)
Understanding classes:
If you're a course creator who also built proprietary software, those are two different classes of goods. Your filing fee would be $700 ($350 per class).
If you're trademarking multiple marks (business name, signature course name, membership name), each requires a separate search and filing.
Lauren's philosophy on client communication:
"If you're not understanding something and you're my client, then I'm doing something wrong. That's why I don't like big box corporate law firms. All of our conferencing is included. I don't turn on the clock if somebody emails or calls to touch base."
This approach makes the process less intimidating and more collaborative.
When Should You Actually File a Trademark?
File an intent-to-use application if:
You haven't launched but have a solid plan
You want to secure your mark before building your entire brand
You're willing to pay small extension fees (worth it for the protection)
You want the earliest possible first-use date
File a use-based application if:
You're already using the mark in commerce
You can provide evidence of offering goods/services under that name
You want faster processing (you skip the specimen submission phase)
Wait to file if:
You're in your first six months and still figuring out your business
Your offers and positioning are likely to change significantly
You're not confident this is your final name
You haven't done even a preliminary search
The key is being strategic about timing. You don't want to file too early (before you're sure of your direction) or too late (after you've built your entire brand on an unavailable name).
Building Your Business on Solid Legal Ground
Lauren closed the training with some powerful advice for brand strategists and designers who work on naming projects with clients.
She loves collaborating with namers through what she calls a "Trademark Power Hour." The process works like this:
The namer presents a list of potential names to Lauren
Lauren quickly reviews them, eliminating obvious problems
The namer goes back to their client with a vetted list of 10 strong contenders
Once the client selects their top choice, Lauren conducts a full comprehensive search
This collaboration protects both the namer's reputation and the client's investment. No one wants to fall in love with a name only to discover it's not available.
The Bottom Line: Protection Isn't Optional
If you're building something you want to last, trademark protection isn't optional. It's foundational.
As Lauren emphasized throughout the training: "You would never walk up to a piece of land and start building a house without knowing who owns it, if the foundation is safe, or what the zoning laws are. Building a brand around a name without clearing it first is just as risky."
The investment to properly clear and register your trademark is minimal compared to the cost of rebranding, losing goodwill, or fighting legal battles down the road.
More importantly, trademark registration isn't just about avoiding problems. It's about building real value, creating licensable assets, and ensuring that all your hard work in building brand recognition actually belongs to you.
Key Actions to Take:
Assess your current marks: Do you have trademark protection for your business name? Your signature offerings?
Think strategically about naming: If you're launching something new, prioritize distinctive over descriptive.
Invest in proper clearance: Before you build your brand around a name, invest in a comprehensive search.
Start with your word mark: If budget is a concern, protect your business name before worrying about logo protection.
File intent-to-use if pre-launch: If you know your direction but haven't launched, secure your mark now.
Work with qualified professionals: Trademark law is nuanced. DIY searches miss critical conflicts that professionals catch.
The brands that last are the ones built on solid legal foundations. Make sure yours is one of them.
🔗 Links & Resources Mentioned In The Episode:
➡️ Connect Lauren on LinkedIn and Instagram
➡️ Check out Lauren's Website
➡️ Get Lauren's FREE 6 Day Guide to Trademark Protection
➡️ Learn More About The Six Figure Brand® Society (Use Code FIRSTMONTH for $50 Off Your First Month or FIRSTQUARTER for $100 Off Your First Quarter)
🎧 Listen to episode 59 of The Six Figure Brand Podcast on Spotify, Apple Podcasts, Amazon Music, and YouTube
