69: Trademark Your Business with Marcella Dominguez

March 20, 2019

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Yigal Adato: 00:00 Hey pawn family, it’s Yigal. Welcome back to another episode of the Pawn Leaders Podcast. This week I have my friend Marcella Domingez, who is a trademark attorney going to talk to us about the importance of trademarking your pawn shops name and maybe even some of your slogans and your branding that you use and what happens if you don’t. Before we get into that, a huge shout out to the sponsor of the show podium who is working some magic when it comes to Google reviews. I’m seeing more and more pawnbrokers jumping on using their service and really crushing it with Google reviews. I don’t ever think that the pawn industry has had this many reviews since podium came on board and supports the industry. They’re out almost every single convention. They support the pawn industry and they really helped us pawnbrokers to gain access to those reviews when it comes to our clients. So go to podium.com/pawnleaders to get your discount to use podium. Now, back to this episode, I believe it’s so important to trademark names. Pawn Leaders is being trademarked, I have three or four of the trademarks that I’ve used and Marcella is awesome at it. So check out my episode with Marcella Dominguez for your trademark.


Yigal Adato: 01:13 Hey everyone, my name is Yigal Adato and this is the Pawn Leaders Podcast, a podcast that help you make more money, stress less, and live an epic life all while working at the pawn shop.


Yigal Adato: 01:37 Marcella, welcome to the show.


Marcella: 01:39 Thank you Yigal. Thanks for having me.


Yigal Adato: 01:41 No, first of all, I was on your show last week. That was a pleasure. So it’s cool to have you on my show now. So cool. So kind of give us a background, you’re an attorney and today we’re talking about trademark and copyrights. How did you get into that niche of just really focusing on trademarks and copyrights?


Marcella: 02:01 When I graduated from law school, this part is just kind of interesting to me anyway, is that I felt like I didn’t really fit in with everybody else in certain aspects because everybody was doing like the mock trial and like the moot court, which is basically where you simulate a real life court experience and I just, it wasn’t my thing, you know, and although I love defending positions when I feel like they deserve to be defended. I felt a little bit out of my element because what I’ve always done for myself, even when I was younger is I’ve always thought creatively. I’ve always tried to be a little bit entrepreneurial. I’ve always loved hanging out with artists or people who are a little bit Bohemian. And so this was just a little bit too traditional for me. So I think the closest that law could bring me to being creative was working with other creatives and I wanted to do entertainment law. And in my hometown entertainment law, you know, is a little bit limited. And so the closest I could get to that was trademarks and copyrights. And as you know, when you work with people who are needing trademark assistance, it’s business owners, it’s artists, it’s people who are in the creative space. So I think that I took a good turn for the best when, you know, when I went down that path unknowingly.


Yigal Adato: 03:29 Awesome. So this is a show for pawn shops and there’s tons of pawn shops that have the same names out there, right? It’s kind of why I brought you on. There’s 18,000 easy pawns and best cash and best pawn and all these types of things. Let’s really talk about the importance of trademarking your name and what it does for Your Business and why it’s so important to reach out to somebody like yourself to make that happen.


Marcella: 03:55 So on the most basic level, having a registered trademark, not a trademark, a registered trademark allows you to use the name in your space. So your space is where it starts to get complicated when we start to define it, because your space means in your, in this case it would be a pawn shop. So if there is somebody who would try to register your business name in an area that is confusingly similar to a pawn shop, then that would’ve still be considered your space because the trademark office wants to keep people out of your space once your name is attached to that space.


Yigal Adato: 04:38 Got It. So that way you can use it in the space and obviously once it’s a registered trademark, if somebody else tries to use the name, they can’t use it.


Marcella: 04:48 Right. And so what will happen is that if they submit an application for the same name that you have pawn leaders or something of the sort, then, and it doesn’t even have to be Pawn Leaders exactly, but if it’s like a
pawn leader or leading the pawn industry or something like that,


Yigal Adato: 05:06 Like leaders of pawn.


Marcella: 05:07 Leaders of Pawn or something like that, then what would happen is they would receive what we call an office action from the trademark examiner and that it would say your mark is confusingly similar to Yigal’s Pawn Leaders registered trademark. So we’re going to put a stop on your application until you’re either able to tell us how you are different from Yigal’s Pawn Leaders trademark or you have some other good basis for registration.


Yigal Adato: 05:38 And I’ve seen this in other places before too, but when a business gets going, they often forget or they say, oh, I’ll do that later on. [Inaudible] I’ll do the trademark later on. But this is what happens to me. Like I think of a name. I go online, I go on go daddy, I try to find the URL. I’m super excited that like I’m a genius and I come up with the name and so if I do the work and then I go out there and I don’t trademark and somebody else takes it, I’m devastated.


Marcella: 06:07 Yes.


Yigal Adato: 06:07 Like I would be devastated, you know.


Marcella: 06:09 Yeah. When we were having this conversation, you know, that is the way I totally thought about it at the beginning when I started doing this, like, man, how come people aren’t working harder to secure the name? You know, they put all these, they put all this effort into coming up with the name or into branding. It’s been a year now when are you going to register it? And you know, I was explaining to you that over the course of time you, like lawyers and doctors, unfortunately we kind of become immune to that initial emotion. And I feel like you’re so right. Like that is the emotion that so easily, we forget about being on the flip side, but that is so raw for entrepreneurs who are starting businesses. You know, if you have invested so much time, energy, effort, sweat equity, financial equity, why aren’t you working to protect it? You know, it’s kind of like having a baby. You know, like when mothers initially have a baby, some moms, they don’t want other strangers coming up to them, kissing them on the face. You know, like God forbid you give me a disease. And so I wonder how come people don’t treat their business in the same way. Like, you’ve carried this baby for so long, when are you going to protect it? Like you’re just leaving it open now for anybody to just, you’re giving people ideas in other words. You’re giving people ideas about how amazing your name and your brand now is after a year. And you’re saying, oh, just come and take it. I mean, it’s not a big deal.


Yigal Adato: 07:48 Yeah, I [Incomprehensible] anyways,


Marcella: 07:50 Yeah, I didn’t want it that bad anyway. You know? And that’s what that circle R does for people. You know, I think people understand a little about trademarks unfortunately, but I think what they do understand is that when they see the circle R they know it’s off limits. Because you’re not going to go-


Yigal Adato: 08:08 Really quick. What’s the difference between TM and then the circle R?


Marcella: 08:11 So the TM is a place holder. The TM allows you to put people on what we call constructive notice. Layman’s terms, just you’re putting people on notice that you are claiming a right in this name. It’s not registered yet, but it’s a place holder. Like, Hey, I’m using this name and I might or I might not register it. And the circle R is, it’s registered.


Yigal Adato: 08:34 It’s for real.


Marcella: 08:36 It’s for real. The real, real.


Yigal Adato: 08:38 So just a quick story, a lot of people don’t know this, but before our pawn shop was called CashCo Pawn, it was called Easy Cash Community Pawn Center. Don’t ask me why it was that long. That’s just what we called it. And we never thought that one of the big boys, the national chains were going to come. And all of a sudden we had an easy cash open up, five miles down the street. And confusion started happening, right? Just people were confused, our ads they’d go over there, their ads would come to us. And so we said like, forget this. And we like two or three years into it, we did a whole name change. Now this was our fault. If we would have gone to the trademark and said, Hey, we want to trademark Easy Cash Community Pawn Center, they would have come back to say like, I’m really sorry, there’s an Easy Cash already, you know, that’s already trademarked. Go think about another name. And so it cost us money. We had to rebrand, change the signs, change our pawn tickets. It was just such a hassle. And I think that in the beginning, if we would have just found a name, trademarked it and someone was like, stop, go look for another name, it would have really saved us so much time, effort, emotion. And so yeah, I think that you should do it. I really do.


Marcella: 09:53 It’s the headache and the emotion and the [Incomprehensible] of having to potentially put yourself through that, that you’re saving yourself from what the registered trademark, like you’re kind of tying up loose ends from the get go. And yeah, making sure that nobody’s going to either come and take your name and also to make sure that you’re not trademark infringing because in your case, if they came before you, then you could have really been on the hook for a lot of money if they wanted to sue you. It’s [Incomprehensible]. You’re protecting your name and you’re also making sure that you’re not going to be on the hook for trademark infringement.


Yigal Adato: 10:32 Yeah, love that. So let’s quickly talk about, there’s a lot of like done for you services online where you can go on and it’s cheap and they do the trademark for you. But I believe that going to an attorney who knows what they’re doing is the best route. Even if you spend a little bit more money, kind of walk us through why that’s the case and some cases where you’ve had to fix people’s applications.


Marcella: 10:57 Yes. So a lot of what I do is correcting people’s mistakes on trademark applications via office actions. And so these are people that just thought, you know what I took some random person’s advice in a Facebook group because they said they had done it themselves without any issues. And so I thought I could do the same. So then they said, I don’t understand what this letter means. And so just to give you a taste of what the issues could be in an office action, they could range from a disclaimer issue to the identification of services needing clarity to the most difficult, which our likelihood of confusion and descriptive refusals. And those last two that I mentioned are tedious. I mean, even for lawyers, they’re just annoying issues because they require arguments supported by case law that will move your name to registration. Another words, if you don’t have an understanding of case law, if you don’t understand how trademark law works, then you’re not going to be able to draft an argument in order to get a registration. So you’re going to be stuck. So what some attorneys will do is, you know, we basic, sure we might be a little bit more expensive upfront, but it’s an investment. It’s not just an expense. When you make an investment, you’re expecting to get something in return, which in this case is a registered trademark. It’s also advice along the way, somebody to kind of hold your hand and when you do get an office action response at any single one of those issues that could present themselves. So I kind of analogize this whole thing to being dropped off, sort of like in the wilderness. Like do you feel strong enough and confident enough that you’d be able to navigate in the wilderness? Well maybe, I mean if you’re,


Yigal Adato: 12:54 [Incomprehensible]


Marcella: 12:54 Yeah, I mean maybe, I mean if you’re that kind of person, but the reality is if I dropped you off with a guide with a map, with extra water, with extra food, I mean I think you’d feel a little bit safer through the journey.


Yigal Adato: 13:11 Yeah, totally.


Marcella: 13:12 And so that’s kind of, you know, that’s kind of what it’s like, is do you want support? Do you want somebody to, or do you want somebody to blindfold you and throw you in?


Yigal Adato: 13:22 Now I have a question. I have a friend who had a podcast in social media getting trademark his name and somebody had the names so he had to rebrand the whole social media aspect as well. Now this is crazy what I’m going to ask you, and you’re telling me if it’s right or wrong, but if you don’t trademark your name couldn’t essentially somebody go out there and open up a name on social media using your name and just say whatever they wanted to say. And if you have the trademark, you can kind of have action against that, is that how it works?


Marcella: 13:53 So that is kind of like one of the benefits to having a registered trademark. And it’s not written anywhere. It’s not a law. It’s not a rule. It’s not something that the USPTO tells you. But again, when you have a lawyer, these are things that are explained to you. So it’s a benefit in the sense that it provides leverage. So if you have a registered trademark, you have an armor so to speak, and you’re able to tell other people who don’t have that registered trademark, you know what you’re using my name and you better cut it out. Okay, you better cut it out. Whereas if you don’t have a name, like the example you just gave, it’s a little bit harder to leverage the other person because I mean, they’re going to say, well, you don’t even have a registered trademark.


Yigal Adato: 14:36 Yeah, so sorry.


Marcella: 14:38 So sorry. So it doesn’t mean that they should be allowed to use it because that’s not necessarily the case. But we start getting into more complicated trademark rules and laws that basically say you’re allowed to use your name Yigal even though you don’t have a registered trademark, but only in the geographical area where you’ve been using it. So if Joe Schmo in New York started using Pawn Leaders and you were only using it in San Diego, well then guess what? You’re both going to be able to use it, but he can’t enter San Diego and you cannot enter New York. And when you’re trying to create a national brand or if you have a national presence where you want this podcast to reach a national audience, you’re not going to want to be, you’re not going to say, okay, well I won’t use my mark in New York. I’ll just use it everywhere but New York, I mean it doesn’t work like that. You create a brand and you created 100% Yigal all the way.


Yigal Adato: 15:36 Yeah. And as an entrepreneur you want it to grow and you’re not thinking, well let me just carve out New York or Texas because somebody else is using it there. You want to eat the world, you want the whole thing.


Marcella: 15:45 Right, exactly. And I mean, there are some business owners that just say, you know what, I just have a brick and mortar store, you know, in San Diego, I’m not interested in, you know, franchising or going anywhere outside of California, so whatever. But you know, there are state trademarks in that case.


Yigal Adato: 16:01 Yeah. I think like when I think about that, I might have, you know, San Diego pawn shop, but if somebody came in and got San Diego best pawn shop, I want to be protected. Like there’s a confusion there. So if you’re a pawn shop sitting here listening, thinking like, Oh, you know, it doesn’t really matter. First of all, I know that the investment isn’t crazy, right? Marcella it’s not like it’s a, we’ll talk about a little bit later on, but it’s an investment in your business that if you’re up and running, you should make asap. Pawn Leaders, by the way, is in the process of getting trademarked. So, we actually had somebody, it was pretty funny. Somebody wanted to create the Pawn Leaders summit, they got the name, they used it, I don’t know if they listen to the podcast or not. They send me an apology afterward. The whole community like was like, no, that’s Yigal’s name. I was in the process of trademarking. So I just said, hey man, it’s in the process, let’s not fight, use something else. And they were like, yeah, cool. You know, it made everything that much better. Slogans, I see a lot of like pawn slogans, which is something that you can trademark or copyright?


Marcella: 17:06 Trademark.


Yigal Adato: 17:07 You can trademark that. Like, you know, we lend you the most or wide shop, pawn shop, retail, and then you see like 10 other pawn shops using the same slogan. So it’s not just your brand name. What else should you as a business trademark.


Marcella: 17:22 So you have the business name, you have the slogan, and then of course you have the logo. And so everybody says, well, what if my name is included in the logo? And so the answer to that is, you know, all big brands, Coca-Cola, Mercedes, Puma, Nike, everybody, they do registrations for everything. So if you were to look them up, they have 20 million trademark registrations for every single possible thing somebody could steal. And so if you feel like, well I’m not huge, I am not one of those big companies like you have the wrong mentality then because the mentality is not, I’m not big. The mentality is I want to protect what I’ve created. That is what you should always default to, is do you want to protect what you’ve created. If you don’t, then fine forgo it. But if you do, then it’s not, am I a big company? It’s do I want to protect what I’ve created?


Yigal Adato: 18:20 Yeah. And I think like also with the logo in pawn, there’s only so many different types of logos you can have in pawn sometimes and a lot of them look exactly the same within the same city. And so if you want to stand out, I believe you should trademark it that way your competitor doesn’t get it, you use it. Plus you’re spending so much money on social media ads, advertising, television. That if there’s a confusion now you’ve lost money.


Marcella: 18:47 Exactly. Yeah. I mean like I said before, a confusion is probably just the worst issue that you could have. And I tell every, I have a YoutTube video actually that I’ve created because this issue is so important and you can find it on YouTube if you just search likelihood of confusion Marcella Domingez and it explains everything there is to know about this likelihood of confusion issue. And the way to avoid it is simply to talk to a lawyer about doing a search or you can do a search yourself but I don’t recommend it. Mostly because you don’t understand how to analyze the results cause it’s not just based on what you see. It’s also based on results that are actually not even in the database.


Yigal Adato: 19:34 Got It. Cool. So this has been incredible, Marcella. I think that if you are listening to this, you’re a pawnbroker. You need to reach out to Marcella to get your trademark done. I know the fee is, it’s not much like really for this type of investment. I know there’s probably a range if you want to give us a range Marcella like what a trademark entails.


Marcella: 19:55 Yeah. So the fee is usually somewhere between like 650 to like 1,250 and then there’s us USPTO fees that are attached to that.


Yigal Adato: 20:05 You’re talking about somewhere in the range of like on the high end, $1,500 just to protect your brand. Really. You’re a palm broker. That’s a ring out of your showcase. It’s an item in your inventory that you’ve been hoarding, sell the merchandise and get your trademark done.


Marcella: 20:23 Yeah, that’s exactly right.


Yigal Adato: 20:25 Awesome. Marcella where can they find you to give you a call if they’ve made the decision, if they’re smart enough to say, I want to trademark my brand, how can they reach out to you to make that happen?


Marcella: 20:36 So you can find me at marcellatm.com and that’s M A R C E L L A T M .com or you can even look me up on Google or YouTube, just type in my name, Marcella-


Yigal Adato: 20:50 I’ll put the link to the website in the show notes. But pawn family, don’t wait on this. Give Marcella a call. Get that trademark done. We made the mistake of not searching when we first opened up and it cost us way, I mean, think about it. We had to change our sign. We had to change our shirts. We had to change our forms, we had to change our mail. I mean, we had to change everything because we didn’t call an attorney to say, hey, should we use this [Incomprehensible]


Marcella: 21:22 How much did that cost you by the way?


Yigal Adato: 21:24 Just the sign was thousands of dollars. Just the sign was like $4,000. Just the sign itself. Forget like the paper, the shirts, the notices, the flyers, just the sign on the outside of the building was like 3000 bucks plus the permit plus putting the damn sign up.


Marcella: 21:42 And you know, not to mention that you really can’t put a price on how much you’re confusing your own customers and clients. So when they show up at your location and it has new signage, they’re wondering if they’re still at the same old shop. You know, like why confuse your customers? You know, people go to the same places over and over, whether it’s restaurants, doctors, lawyers, because it’s consistency. They know what to expect and they get what they expect. And so do that for your business.


Yigal Adato: 22:12 Awesome. Marcella, this has been incredible. Once again, pawn family, go to marcellatm.com that will be in the show notes. Thanks again for being on Marcella. I truly feel that this is something that a lot of pawnbrokers are not doing and they need to give you a call to make this happen. So pawn family, if you’re not in the Facebook group go to Pawn Leaders Podcast Community on Facebook, go to marcellatm.com to reach out to Marcella and stay tuned for the next episode.


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Yigal Adato

Yigal is a 3rd generation pawn broker, and is now a mentor, coach and educator with the pawnbroking industry.

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