About
Lisanne M. Butterfield is one of the founding members of Carr Butterfield, LLP, a boutique law firm that primarily services financial service providers and other licensed professionals. Lisanne manages all aspects of the firm’s commercial litigation, dispute resolution, and employment transition practice.
A significant part of Lisanne’s practice is also dedicated to counseling and advocating for financial advisers as they onboard new advisor representatives, formulate their exit strategies to form their own independent registered investment advisor firms, transition between firms, and litigate or arbitrate noncompete agreements, non-solicitation restrictions, trade secrets, and other employment-related contract disputes.
With 25+ years of litigation experience, Lisanne has practiced extensively in civil matters in state and federal courts and arbitration forums nationwide. Lisanne’s practice also includes negotiation and resolution of shareholder and partnership disputes, and representation of clients in all phases of trial and arbitration proceedings, as well as regulatory, administrative, and disciplinary proceedings before the U.S. Securities and Exchange Commission (SEC), Financial Industry Regulatory Authority (FINRA), and state regulatory agencies.
Lisanne is admitted to practice law in New York and Oregon. She also serves on several state and local bar committee, and the boards of various nonprofit organizations. In her free time, she feeds her passions for travel, cooking, floral design, hiking, paddling, skiing off piste, and reading nonfiction.
Summary
What is intellectual property? Why should you care, especially as an entrepreneur just starting out? How can you protect your hard work and investment in your business from undue risk? What can you do right now to get a head start? How should you select a good IP attorney?
In this episode, business attorney Lisanne Butterfield discusses her views on all these questions and more. Please note that the information and content in this episode are not intended as legal advice for any specific person or entity. Please seek legal counsel before taking any action.
Important Note to Listeners
Lisanne M. Butterfield is a lawyer, and the information on the podcast relates to legal topics and practical considerations that new business owners and other entrepreneurs may face as they seek to identify and protect their intellectual property rights. The information and content of this podcast is not intended as legal advice for any specific person or entity.
The concepts discussed in this podcast include an overview summary of a very fact-sensitive area of federal laws. State laws should also be considered and vary greatly. All listeners should seek their own legal counsel on these issues before taking any action.
The transmission of information on this podcast is not intended to establish, and receipt of such information does not establish or constitute, an attorney-client relationship. Listeners should not act on the information contained in any of the materials on this podcast without first consulting legal counsel.
This podcast is not intended to be advertising, and Lisanne M. Butterfield does not desire to represent anyone desiring representation based upon viewing this podcast in a jurisdiction where this podcast fails to comply with all laws and ethical rules of that jurisdiction.
Episode highlights
- How to tell the difference between trademarks, trade names, trade secrets and copyrights
- When to think about trade name as an entrepreneur
- The dangers of ignoring trade name implications of your brand
- Choices and strategies to safeguard your brand from legal risk
- How to protect your hard-earned business secrets
- How to tell if you have a protectable business secret
- Don’t look now but there’s a trade secret right next to you…
- Self-help tips for protecting your brand
- Where to go for professional brand name research help
- How to select the right intellectual property lawyer for you
- Questions you should ask your potential intellectual property lawyer
- Simple do’s and don’ts to protect your business IP starting now
Links & Resources
Carr Butterfield LLP – Lisanne’s firm
USPTO – United States Patent and Trademark Office
Corsearch – brand protection solutions firm
Interview transcript:
Shubha Chakravarthy: Lisanne, thank you for joining us today! I’m really delighted that you agreed to talk to us.
Lisanne Butterfield: It is my pleasure.
Shubha Chakravarthy: I know that you specialize in intellectual property and there’s a lot of confusion around the term “intellectual property” that we hear as well as around trademarks. Can you give us a little primer on these terms?
Lisanne Butterfield: Absolutely. These terms are commonly interchanged, but trade secrets, trademarks, trade names, and copyrights are truly different legal animals.
Before any business owner invests her time, energy and resources on branding or marketing, it is prudent to think about whether or not she wants to protect her trade secrets and her trade name. So, the difference generally is that a trade secret is anything that gives a business owner or an entity an economic advantage.
So, something that the business owner invested time, energy, and resources in protecting is a trade secret. It is something that gives the business owner an economic and competitive advantage over others in that space.
A trade name is typically something that is recognized in the law to protect a name or a symbol that a business uses to sell and market their services and/or products.
A copyright is something that protects — it could be a song or a play or music or a piece of art, something that has value that the inventors want to protect from infringing and that lasts typically a very long time, 70 years or longer under certain circumstances.
Shubha Chakravarthy: Today we are in the creator economy and a lot of businesses are internet-based. Where does copyright intersect with content and media businesses online, for example, if you are a Tik-Tok creator today. Is that a copyright? Is it a trade secret and how would I know as a beginning entrepreneur?
There may be somebody who is running a site and creating content, maybe they talk about how to live a minimalist life and what you are producing is your unique content because you have a brand name and people recognize you versus somebody else who is writing about the same subject. You put in time and effort to create this. Is that copyrightable or is there something else that should apply?
Lisanne Butterfield: The content that the business owner is creating is protected by copyright law. That is the actual artistic expression — the photograph, the article, the website design, the information on the blog.
Whereas the trade name is the manner in which the business owner is marketing and distributing her service or good. The trade secret is more of the secret sauce behind how she may have created that.
Shubha Chakravarthy: The one thing I’m also going to probe is about the trade name. Where does the brand and this whole intellectual property law intersect and what should a beginning entrepreneur or any business owner be thinking about in terms of their brand as it relates to intellectual property?
Lisanne Butterfield: Their brand is part of their intellectual property because the business owner created the manner in which they are going to market, sell, and leverage as well as develop their secret sauce or their professional services and the creative license.
So, the brand can be protected under the intellectual property laws and the brand can be protected through private contracts as well. For example, if you and I decide that we are going to collaborate on developing content for your newsletter then you and I might decide amongst ourselves that we are going to enter into an agreement where we both have shared rights to that intellectual property, whether it be copyright and/or trade name — the way in which we market it. Then if a third party comes along and infringes upon it then that protects us and gives us a basis upon which we can limit or perhaps prohibit third parties who haven’t invested in protecting that from using it.
Shubha Chakravarthy: So, this whole aspect of whether it is copyright or trademarks is not just something that big companies do later, but something that I should think about on day one as an entrepreneur or business owner. Is that something you would agree with?
Lisanne Butterfield: Absolutely. As soon as you are at the point where you are beginning to invest time, energy, and resources, you ought to be thinking about it.
Number one — Is anybody out there using either your brand or the manner in which you are going to market by way of a symbol or in image?
Number two — is anybody else out there having registered that trade name, the trade mark, or the copyright because before you get too far down that path as you want to make sure that you are not infringing on somebody else’s rights.
But that is not always a black and white inquiry as well because you have to think about what your marketing channel is. What is your region? Are you going to be offering your services and or products on the west coast or in the Midwest or across the country.
So, that might color your decision about whether, for example, you are going to register your trademark in one or two or a few states versus on the nationwide basis through the United States Patent Trademark Office.
Shubha Chakravarthy: Can you tell us a story that maybe pops into your mind about somebody who missed this or some damage that was incurred or the risk of just not paying attention early enough in the game to intellectual property?
Lisanne Butterfield: Yes, that’s a great question. As you know, a lot of what we do here at our firm is that we represent registered investment advisors, dentists, doctors, realtors, and other licensed professionals.
Sometimes they get down this path where they come up with a brand name, for example, and they begin to develop a client base and market their services but they don’t find out if there are competing providers on the front end. By that I mean people who are using the same trade name or a similar trade name to provide the same or similar services.
So, the risk then is that there is consumer confusion where a consumer may assume that, using a Dentist X in Portland as an example, who is offering dental services is affiliated with Dentist Y in Texas just because they have a similar name. Then if somebody gets licensed, disciplined, or has their license revoked, or something less than a stellar reputation, that consumer confusion can become negative.
The same is true on the other side of it because if a licensed professional goes down the path of incorporating in a few states and developing a website, business cards, and branding and doesn’t take the time to figure out if that name is already in use then they have already spent all that time, energy, and money — even perhaps consulting with a lawyer to create organizational documents and any formation documents, paying state licensing fees, even getting E&O insurance, all under the name of something they later have to change.
So, I guess in a nutshell, it just makes a whole lot of sense to do this on the front end. Maybe not on day one but definitely before you get too far along and invest time, energy, and money to number one — confirm if that name is already taken and if it is taken, what has that other provider done to protect it? I mean, do you just know that it is taken because you did a Google search and it looks like they might be offering the same or similar services on the east coast and you are on the west coast?
Well, maybe that is not the end of the story. Maybe then you can beat them to the punch and get registered in your region or on the national level through the US PTO.
But that is going to color your decision and so making those inquiries on the front end, preliminarily with information that is publicly available and free perhaps to the licensed professional or the business owner by checking on Google, but then secondarily as well by hiring a third party vendor to run a search report because that information is going to help color and guide the business owner about what steps she may want to take to protect her business or shift gears or know going into it that there is another provider in New Jersey — but she is offering something slightly different.
If you are really invested in using that trade name or trademark then there is an opportunity to do a shared use agreement, which is also very typical where you reach out to the provider and say, “I see you are in New Jersey offering a similar product. I’d like to cooperate or negotiate with you to come to terms that work for both of us. Here’s my proposal. Perhaps I either pay you X as a licensing fee or we have a shared use agreement where you pay me Y.”
So, there are options to do that, but the information is very valuable on the front end. Before you spend too much time, energy and money. Then the other big risk is if you don’t do that investigation then you may find yourself embroiled in a lawsuit which would be very costly to defend.
Shubha Chakravarthy: I’m getting the sense that there is a tendency to feel that this is a legal issue and I think what I just learned from listening to you now is that it is not strictly a legal issue but also a business issue.
Lisanne Butterfield: Yes, that’s exactly right.
Shubha Chakravarthy: What are the areas that a business owner, an entrepreneur— not being a lawyer, needs to look at and at least have a basic fluency or familiarity with?
Lisanne Butterfield: Getting a legal opinion or helping yourself figure out the viability of your chosen name is one of the very first steps you want to be thinking about — and then of course registering your business.
Registering your business is one path but then registering your trade name is a different path altogether. You can do that registration on a state level or federal level, like we talked about. As a layperson you can certainly do it on your own but lawyers are obviously skilled in providing the necessary information on an application to have a higher viability of the application being approved, which is very important.
So, to your question, what should you do at the beginning?
Checking the viability of whether or not your trade name is in use and creating formal written agreements with those whom you are doing business with, for example, a non-disclosure agreement, a confidentiality agreement, a written contract between two parties that if for whatever reason you separate — the business owner will retain exclusive rights to the intellectual property, is very important. Those are the basic steps.
I also think it is very important to make sure that you have formal written agreements with everyone that you are doing business with — an employee, independent contractor, or even a consultant. This is so that you spell out on the front end what the expectations are and what your rights are as a business owner to prohibit the infringement or the improper use by that consultant or employee after they separate from you — because you are giving them access to your secret sauce! You are giving them access to perhaps your client list, your pricing, or to the way in which you market your services.
So, the way in which you develop your services, all that stuff that you are giving your colleagues, your consultants, your agents, your contractors, and your employees is something you need to be thinking about on the front end. How are you going to protect that if things go south or for whatever reason you ultimately decide to separate?
Shubha Chakravarthy: That raises two questions that just popped in my mind based on that. The first is that a lot of bootstrapping entrepreneurs like myself use platform-based services because they are cost-effective. For example, I might go to Fiverr to get a logo or to design my website in a particular way that makes it recognizable. What should I do to protect myself?
Lisanne Butterfield: I think the best thing to do is to start by reading their service contract as they would presumably have one. Perhaps you don’t even realize it is there when you are clicking on the link to do business with them. We are all so guilty of that.
Reading carefully through the documents even though there might be legalese in there is important. Reading what they say in their agreements and what rights they wish to retain is vital. There might be opportunities to cross out or negotiate those terms if you have some leverage about doing business with them.
But the other flip side of that is to create your own service agreements. They don’t have to be complicated, but it is important to be thinking about them as a business owner. What are you trying to restrict others from doing whom you do business with?
We talked a little bit about independent contractors and people who work for you, but the same is true for other outside vendors. You need to be thinking about if you are giving them access again to your image, your contact, or your secret sauce and then you need to protect your work.
It’s called work for hire. If they are creating work by request and are being hired by you then you need to protect your rights and retain exclusive ownership.
Shubha Chakravarthy: Another follow-up question to that is — if I am a new business owner or a new entrepreneur then there are things that I do just because I do them, for example, building scrubbed lists, creating content, etc. So, as an entrepreneur or a business owner, what is a good way to get a handle on this list of things that would qualify as trade secrets so that I can start having my mind trigger every time I’m touching one of those areas?
Lisanne Butterfield: That’s a great question and I’m very glad you asked that because I do think it is something that people sort of get away from.
Generally speaking, it is anything that a business owner is investing resources in to protect from the public. It is something that sets you apart or something that makes you more competitive vis-à-vis the other people in your field providing the same or similar services. Those are the type of things, information, that could be digitally stored. It could even be verbal communication that you have exchanged. Those are the type of things you want to be thinking about protecting.
Not everyone has client lists that they are worried about protecting and I appreciate that but even if you choose to market or use customer testimonials on your website from chosen clients who give you authority, that is not the same as saying that you wish to have public disclosure of all your client lists because then other people may poach that or solicit that.
The client list is one example, but another list is the way you might structure your pricing or market analysis that you may have performed before you launch anything that you have elected as a business owner to protect from public disclosure — that is probably a secret sauce.
Even in this field there are cases that I actually have had about this, where publicly available information can also be a secret sauce in a trade secret if the business owner invested time, energy, and talent to compile it or codify it.
For example. if you as a business owner took the time to figure out which internet services are particularly adept at one particular aspect or doing businesses in one particular region or specialize in certain security features, then that compilation is your secret sauce that you are entitled to protect against public disclosure. You are entitled to protect it as an employer when you have subordinates to whom you are giving access.
So, when you give your subordinates access, you also need to be thinking about what you want to do as a business owner to limit the risks, so that when your employees leave or your contractors leave, they will not infringe upon your rights. In that respect you give them access while they were still affiliated with you but you want to preclude them or limit their ability to use that access after the work is over.
So, those are the things you want to be thinking about. Having everybody you work with, whom you are giving access to, sign a confidentiality agreement on the front end is very important and that brings me to another point where people often confuse the concepts of a non-solicit, a confidentiality agreement, and a non-compete to be the same.
In the eyes of employment, law, and business contract lawyers like myself, we call all of those collectively “Restrictive Covenants” because they are contract provisions that limit or restrict the ability of the contracting parties to do something either during employment and/or after association.
A confidentiality agreement is something that protects the business owner from keeping all that confidential information to the business owner’s own use during and after affiliation with the employee.
A non-solicitation provision limits or restricts those whom you do business with, such as employees, from soliciting your customers and/or soliciting their co-employees and/or soliciting other vendors that you do business with.
The non-competition agreement is typically a restriction that limits an employee or even co-business owners the ability to compete for business while they are still affiliated with you and/or after they leave. There are restrictions across the country in different states about the viability, enforceability, of non-competes in certain industries and for certain employees.
Shubha Chakravarthy: This is actually very useful for me because what I’m taking away is that if I am an entrepreneur then the first thing I can do is that I can just look at my calendar and see what I did over the last few months and know where I spent time and anything that I spend time on is yours to protect.
For example, I would have never thought of compiling a list, which a lot of business owners might do — for example, if they are catering to people with celiac, then a list of products that are celiac-friendly, even though that is publicly available information, is yours to protect. I didn’t realize this was so.
So, that was pretty informative for me because I hadn’t thought about those covenants in the context of everyday businesses. For example, your next door bakery or your retail clothing store, do you make your own custom jewelry and things like that?
Lisanne Butterfield: That’s one of my favorite examples because people say — help me understand trade secrets. What is “The Secret Sauce?”
Coca-Cola’s secret formula for making Coca-Cola or Little Big Burger — that is a chain here in the Pacific Northwest and they have the most wonderful truffle flavored French fries. So, their recipe for making truffle flavored French fries is their secret sauce. That is their trade secret. So, even though they have people who are actually flipping burgers and serving French fries, they can legitimately require those workers to sign an agreement that says that they will not violate or misuse the truffle fry recipe.
So, I think those are the most helpful examples that people probably don’t realize. You are interfacing with trade secrets all the time.
Shubha Chakravarthy: I’m a bare bones beginning entrepreneur. So, what advice would you give and what points would you give to a bare bones entrepreneur? What is a basic minimum list of things you have to watch out for and protect in terms of intellectual property?
Lisanne Butterfield: Well, I’d say first, go back to the basics. As you said, formalize your business plan, identify your existing and prospective intellectual property rights — trade secrets, the secret sauce that we talked about and consider to whom you’re going to grant access to. Is that going to be your employees, your vendors, your prospective business owners, obviously your CPAs, and other professionals that you seek consultation with.
Then I guess the third thing is for you to think about is whether or not you need formal employment agreements. That may include one or more of the restrictive covenants that we earlier talked about and that is something that you should probably think about revisiting on at least an annual basis. Just like you go and you get your teeth cleaned — do an evaluation, a self-audit, a self-exam as we sometimes call it and think to yourself, “Do I have the contracts I need to protect my intellectual property to protect from my trade secrets disclosure or the solicitation that may happen after somebody leaves?”
The fourth thing is conduct due diligence to determine before you get too far down along the path if there are competing businesses that are using your prospective or existing intellectual property or trade secrets and again, that is something you want to do on an annual basis.
You have a responsibility as a prudent business owner to not only look at this at the front end, but to be vigilant and protect your intellectual property as you continue to do business. In fact, your failure as a business owner to be vigilant to protect your intellectual property dilutes the viability of your intellectual property.
Put differently, if you invest more time, energy, and money to be vigilant and protect your intellectual property you are going to have a better chance down the road, because you are going to be able to make the argument, “Look at all this time, energy and money I’ve invested through the years to continue to be my own police monitor on this. I have negotiated shared-use agreements with that other entity that I talked about in New Jersey and I know they are using my name but we came to agreement and that’s why they are allowed to use my name because they paid me compensation.”
So, I’d say the fourth thing to think about is — who is out there using your intellectual property and what are you going to do to protect it?
Then, the fifth thing would be thinking about whether or not you are going to register your trademarks and trade names on the state and/or federal level.
Shubha Chakravarthy: Are there any principles, guidelines, or any rules of thumb that you believe can be helpful for people who are not legal experts to keep in their minds as they navigate this whole area of IP?
Lisanne Butterfield: I guess generally you have to just keep checking who else is out there competing in your space or in your perspective space. I know we talked about ordering a third-party search report, but getting an amended report every one, two, or three years or at a minimum checking online every now and then to see who is out there or who came on the horizon since the last time you checked, to make sure that what you are doing is not being infringed upon.
Then I suppose the other thing is the whole adage — the conventional wisdom is take a long time to hire and when you fire do it quickly. Take your time and make sure you are vetting the people to whom you are going to give access to and then when you discover or even have a hunch that somebody is infringing upon your intellectual property rights or interfering with your trade secrets and breaching your confidentiality, you should move with deliberate haste to terminate those relationships because the longer you wait, the more likely it is that you are exposing yourself to risk and the more difficult it probably will be to defend your decision.
Shubha Chakravarthy: Now let’s say I’ve been in business for a while and for whatever reason I haven’t done the work. What do I do now? Given that I have invested money, I potentially have put in a lot of time and emotional investment in my brand but I have not taken the steps to protect it because I didn’t know.
Is there anything different that you would recommend because I’ve already invested all this time and I’ve been running — let’s say, a bakery for five years. What do I do now?
Lisanne Butterfield: I think it’s never really too late. In a perfect world, you would take these prudent business steps on the front end because then you could have shifted gears and maybe rebranded or reconsidered your marketing plan. Maybe you would have limited your region.
But if you have already started a bakery and you’re already far down the path, it absolutely makes a lot of sense to continue to evaluate what’s out there and if you learn, like the story I told you about the dentist, that somebody is out there using the same or similar brand name then there is an opportunity to negotiate a shared use agreement as we discussed. That agreement might take formal legal representation with a lawyer but you can think about reaching out to that colleague and saying, ”I see you are out there operating a bakery across town and doing something similar to what I am. So, can we work something out here? I’d like to resolve this.”
This is important because as I said earlier, if you sleep on your rights or you turn the other way, then that might actually be exposing you to greater risks later because you didn’t act vigilantly when you knew somebody was out there infringing because arguably you waived your legal rights by doing that.
There is such a thing as waiver in this space. So, I think that the right thing to do is to be vigilant and check what is out there and if you are 50% of the way there, so to speak, it is never too late. It just means that you have more invested and maybe the stakes are a bit higher to make sure you negotiate a resolution that doesn’t tamper or dilute your intellectual property rights.
Shubha Chakravarthy: The next question may sound a bit unfair but I’ll ask it anyway because I know you are nice. Ideally, you have to get a lawyer, a good IP lawyer, but let’s say that for whatever reason you don’t have the resources and you still want some form of protection. Are there things you can do without a lawyer as the business owner that give you some sense of comfort or protection, even if they don’t protect you the whole way?
Lisanne Butterfield: Yes, absolutely! Starting with the publicly available information that you could search on your own, you could certainly hire a third party vendor to run the search report for you. You don’t need to go through a lawyer as those folks will work with anybody who will pay them money.
By the way, just to put this in perspective — we are talking about something in the neighborhood of 500-1000 dollars to get one of those search reports. So, I would argue that it is probably a viable and worthwhile investment for most business owners.
In addition to the search report, I would think that even coming up with the most basic form of a written contract between you and those you do business with is very important. In a perfect world you would probably want to consult a lawyer about what the laws in that particular jurisdiction permit you to include in that contract, if they are unreasonable and they are deemed to be an unreasonable restraint on trade then they may not be enforced. So, you want to make sure that it has teeth, but absent. Trying to draft your own agreement and putting down the basic terms of what your understanding is and what your expectations are, is probably better than nothing. Having a simple contract is probably better than trying to have a perfect contract. That said, all of it needs to be in writing. It needs to be signed by everybody.
Then as I said — calendar and docket a self exam. So, maybe you can’t afford either the time or the money to consult with a lawyer right now, but maybe put it on your plan for the next year. You can try to make sure that on your birthday you are going to treat yourself to having a consultation with your tax advisor and your lawyer about what you should be doing to better protect your intellectual property, your trade secrets, and the hard work that you have invested in developing this business.
Shubha Chakravarthy: You mentioned these third party services and I’m not sure if that is common knowledge for a lot of business owners. Do you have some names that you can suggest?
Lisanne Butterfield: Frankly, I am a little biased because we use a service called Coresearch. So, that is one.
I imagine there are others. I would Google third-party search vendors to see who else is out there. Anybody who wants to can certainly contact me as a professional courtesy. I just give that information out. But I do think having a search report is a good investment and at a minimum — doing your own search! There is publicly available information as we talked about and then there is third party subscriptions such as LexisNexis and other assorted subscriptions that are available to lawyers and non-lawyers where you can actually set yourself up for an alert, that is the service that my firm does.
So, if somebody hires my firm to assist them with the trademark registration, we set up an alert so that anytime somebody is out there using that name and it appears in some kind of a public forum or on the internet, we get an alert. So, the owner of that trademark can be vigilant and send out the appropriate notice and sometimes it is called a “Take-down notice”, for example, or a “Cease and desist letter”.
Shubha Chakravarthy: One of the other things you said in the self exam is “Go online and check.” When you say that, do you mean I should just do a Google search of my brand name or are you talking about something more specific?
Lisanne Butterfield: Yes, do a Google search of your brand name.
Shubha Chakravarthy: Then whatever else that comes up that sounds similar is something that you want to research and see if there is a potential conflict or an infringement that you might need to take action for?
Lisanne Butterfield: You want to see if somebody else is out there infringing upon your intellectual property, but you also want to be thinking about if you are about to invest further in a trade name that is already taken.
It is not the end of the inquiry if your answer is, “Yes, there is somebody out there.” There are opportunities to negotiate a shared-use licensing agreement, or maybe for all you know that person is about to retire and they are willing to sell it to you. There are opportunities there so I just think the information is good regardless of what you do with it.
The thing about treating yourself every year on your birthday — I remember a trusted advisor told me once that the best thing you can do for yourself on your birthday is to think about how you are going to clean up your client base so that you have more space to take on the clients you prefer to take.
I mean, it is similar to the idea that you should be good to yourself as a business owner, take care of yourself, and treat yourself to getting good advice and being a prudent business owner who is protecting your hard-earned money and emotional energy invested in that business.
Shubha Chakravarthy: Now I do understand that there are different types of lawyers, there are general business lawyers or IP lawyers. How do you find the right IP lawyer ? How do you find the right people and how do you use that time to figure out if they are the right fit for you and if they know what they are doing?
Lisanne Butterfield: Yeah, that’s a great question. I think the best way to do it is to ask your trusted advisors, your tax advisor, or your financial investment advisor. Generally speaking, other licensed professionals can probably be the best source for telling you who are the best lawyers or other professionals with whom you may want to consult.
I will also say that generally speaking, any lawyer who is worth her billable rate should be perfectly willing to give a complimentary phone consultation, regardless of how long it takes — within reason. For the first hour or maybe the first two phone calls that in total add up to two hours, you are courting each other. You are trying to evaluate whether or not it is a good fit and whether that lawyer with whom you are consulting can answer your questions, whether they are good at listening to you, whether they care about learning about your business, and all sorts of those things. So, I think trying to negotiate that preliminary consultation is very key.
I would say don’t rely on social media exclusively. That is probably an obvious, recommendation and don’t rely necessarily on publications that say “Best Lawyer” because as we know people pay to be featured in those programs. I would say that particularly in this heavily litigated world — and by the way, there is a lot of litigation circling around trade secrets and intellectual property rights, and it could become expensive very quickly. So, it is therefore very important to rely on expertise and people who have been down the road with these matters and they know what they are doing so they don’t cost you money later.
So, you might spend a few thousand dollars on the front end, evaluating and harnessing your intellectual property rights and protecting it from future infringement. But it is going to save you a lot of money down the road. So, think about it as, “What am I going to get from this return on my investment? Is it worth it in the end?”
I rely very heavily on my other professional advisors, my CPAs, my financial investment advisor, maybe even my realtor or my dentist, my doctor, I do think there is something about licensed professionals that you are just familiar with relying on the fact that you are operating in a very heavily regulated industry. So, you then appreciate the nuances of how best do I get my trademark or my intellectual property protected.
Shubha Chakravarthy: Then do you have a list of three to five questions I should ask that gives me a sense of whether someone is a good IP lawyer or not other than the integrity and the willingness to work with you?
Lisanne Butterfield: I would say ask the lawyer the simple question of, “Can you please better help me explain why it might be beneficial to me and my business to get my trademark registered or even to pursue this path? Help me understand why that would be valuable to me and why that makes good business sense.”
I would also ask if whether or not they have had success in getting trademark applications approved and if push comes to shove, litigating them. That said not all lawyers do transactional work and litigation work in the intellectual property space. That doesn’t mean that they are a bad lawyer but some people specialize in the transactional side or the litigation side, but not both.
So, you want to ask that question. You want to say “Do you handle both the transactional side, where you advise businesses and you help them with the application process and the registration or do you only handle the litigation side where you come into play when somebody is being sued or they want to sue somebody else?” That is helpful information.
Then I guess the third part is — don’t be shy about asking for a budget. Say, “I’d like you to help me formulate a budget. I want to know what the universe of expenses this might charge me and what are the factors that might change that budget.” That’s what I would ask.
Shubha Chakravarthy: That’s probably a tough question. I know it would be a tough question for me, but it is good to know from the other side that it is an acceptable question to ask.
Lisanne Butterfield: No, as a matter of fact, I would tell you from personal experience that I appreciate that question because then it is almost like talking about the big elephant in the room. Why are we avoiding the big elephant in the room? Let’s talk about the elephant.
You can also help your client or your prospective client make an informed decision. Suppose they have dedicated, for example — $10,000 that year in legal expenses, how much of that budget do they want to dedicate to this issue?
One thing that we did not talk about which also relates to that is that it is very important on the beginning end of this and as you continue to grow, to consider what category of services and/or goods you are going to be offering because it could get expensive very quickly if you pursue trademark registration in categories that don’t really apply to you.
You should also be thinking about what category are you likely to get approved in because you are paying per category. You’re not paying per application. So, that is another thing to think about and to talk with your prospective lawyer about. You could say, “Do you have an opinion based on what I’ve told you about my business about what category or category of services should I be thinking about and what will that cost me per category?”
Shubha Chakravarthy: Is there a list of documents or pieces of information that a business owner can prepare ahead of time to talk about with someone like you?
Lisanne Butterfield: I would say that “I would like to know more and help me better understand the services or products that you intend to offer.”
So, identify that, identify the product and the services, identify your intended growth — both geographically and in terms of how many employees you are going to have and who is going to have access, and probably your retirement horizon. For example, what are you going to do with this business? Are you going to launch it and make it become phenomenally successful and then try to sell it?
Those are the types of things that I’d want to talk to my lawyer about and what else you may have done before consultation with your lawyer to do your own due diligence? Why pay some lawyer to research information that you already have confirmed? So, you’re going to probably identify that as well.
That’s all I can think of right now.
Shubha Chakravarthy: Are there any other do’s and don’ts as you work with your lawyer to protect your intellectual property that are good to keep in mind?
Lisanne Butterfield: I would say definitely keep a record of all the effort and expense that you invest to protect your intellectual property. Maybe your relationship with that lawyer may end for whatever reason, he or she may relocate, they may retire, but establishing that historical database of what you’ve done from the beginning through the life span of your trademark, as I said earlier, could help protect you and bolster your legal claim if somebody infringes upon it down the road.
Sending a cease and desist letter costs money as well, maybe it is a few hundred dollars or a few billable hours of a lawyer’s time to send this letter but it will pay off in spades because it’s going to establish that you were vigilant.
So, one thing you might want to ask your lawyer is, “You have prepared a cease and desist letter for me. Can I use this letter later to send to other infringers without you signing it?”
Any decent lawyer will say, “Well, you certainly could but you should be mindful of the fact that laws change and often the circumstances and the facts change because who knows who else is out there using it and whether or not your trademark application has lapsed or been approved. All those factors can make that boilerplate letter you previously sent not up to date.”
Shubha Chakravarthy: . Achiiv is dedicated to women entrepreneurs, and I’m sure you work with both men and women. Are there special things you have noticed when you work with women entrepreneurs that are different and are there any special points of guidance or counsel that you’d give to women entrepreneurs?
Lisanne Butterfield: I suppose this isn’t necessarily unique to working with intellectual property lawyers, but generally speaking, I have found women business owners, particularly those who are bright and have invested in themselves to often be — shy if you will, or they lack the confidence that men have.
We talk about imposter syndrome and what that means just generally to females. But I think it applies in this space as well because women seem more reluctant generally than men to have confidence in what they have developed, in what they have harnessed in their compilation of publicly available information.
So, I guess my general advice is, think about how perhaps your male counterpart would be behaving in the same situation. Would they be, for example, reluctant to write a check for $2,000 to get a trademark application submitted on a federal level or a state level? Probably not because generally speaking, men have more self confidence than women do. So, I would say that’s the one thing.
The second thing is — be generous, as I think women generally are of collaborating with other professionals in your space, particularly other females.
I do think there is a lot of value in not just cross marketing and networking, but learning from other people’s mistakes and sharing those stories. It is valuable to others to think about and learn the path you have chosen and how you got there and perhaps how you exposed yourself to the risk of liability without knowing that you were doing that.
Shubha Chakravarthy: That’s certainly what you’ve done, Lisanne. So, thank you very much for taking the time to share all these valuable tips.
It has certainly been useful to me, and I know it will be useful to many more people. So, thank you so much!
Lisanne Butterfield: It is my pleasure and I wish you the best of luck.
