An Interview With Chad Silverstein
Failing to file trademark applications. You wouldn’t build a house on land you don’t own. However, you might be surprised by the business owners who have built strong brands and have no trademark registrations. This puts the business at risk because if another company files a trademark application for the same or similar name first, the more established trademark owner must either challenge the new filer (a legal expense) or forfeit the trademark rights.
In today’s fast-paced business world, the complexity of legal matters can often be overlooked, leading to significant repercussions for businesses of all sizes. From startup ventures to established corporations, the absence of legal guidance can result in critical errors that affect growth, operations, and sustainability. These mistakes range from issues with contracts and intellectual property to compliance and employment law, each carrying the potential for financial loss and reputational damage. I had the pleasure of interviewing Kimra Major-Morris.
Kimra Major-Morris is an AV-Rated intellectual property attorney, award-winning author, Telly Award winning TV host, and principal at Major-Morris Law representing trademark and copyright clients nationwide. Kimra also conducts intellectual property risk management trainings for business stakeholders. She has trained teams and audiences at Meta®, Microsoft®, CNN®, Goldman Sachs 10,000 Small Businesses®, INTA®, The Florida Bar® and a host of universities. Website: https://majormorrislaw.com/
Thank you for joining us. To start, could you share your “origin story” with our readers? How did you begin your career? What challenges did you face in the early days? How did you overcome them? Is there a particular book that made a significant impact on you?
The Compound Effect by Darren Hardy comes to mind, because it helped me to be excited about chipping away at big goals by taking consistent, small actions. It resonated with me because I used to wait for the inspiration to do certain things. Years ago, before I started my practice, I wrote a book about copyright law. It was my intention to update it many years ago, and when I used The Compound Effect’s time-blocking methods to make the revisions, I completed the new edition. I have revisited The Compound Effect over the years to improve project management skills.
Do you have a favorite Life Lesson Quote?
My favorite life lesson quote is actually one from my dad who recently passed. “No one can take your skills away.” At first, he’d say it to encourage me to do my best in school. As I grew older and faced personal setbacks, he’d say it to remind me that my personal and professional development would be enriched by acquiring new skills. I often think of this quote as I grow through challenges and work on new goals.
Have you used your success to make the world a better place?
My work as an intellectual property practitioner and educator is extremely rewarding. By providing teaching business leaders about protecting and monetizing their valuable intangible assets, I play a small role in helping to close the wealth gap. In addition, according to the Commission on the Theft of American Intellectual Property, IP theft costs the U.S. hundreds of billions every year. Increased awareness about intellectual property will help businesses and creatives protect their most valued assets.
Most common legal mistakes I see businesses make due to lack of proper legal counsel and what are their potential consequences?
Hands down, the most common mistake I’ve seen is not properly vetting the business name to qualify for the protections available to federal trademark holders. Along the same lines there are many business owners who heavily invest in marketing without clear chain of title for the brand name. Often the consequences include accidental infringement on a pre-existing brand, loss of brand integrity, and litigation costs. Business partners who helped purchase intellectual property registrations might find themselves without authority or ownership rights in the same intellectual property, because the partnership agreement does not address who will own the intellectual property when one person leaves. These mistakes often result in costly litigation and endanger business sustainability.
Share an example where legal intervention could have significantly altered the outcome of a business dispute or challenge.
A great example is that of Mark Zuckerberg’s Harvard classmates disclosing their project (and its software code) to him without any restrictions, written agreements or intellectual property protections. Expert legal involvement is crucial in the startup phase of a business. It’s important to note that intellectual property law is a specialized practice area and not all business attorneys are intellectual property attorneys. Legal intervention would have helped the classmates protect their innovation and have appropriate written agreements before the disclosures. Although the classmates sued received a settlement of 20 million in cash and 45 million in company shares (which exponentially grew to more than 500 million), retaining experienced intellectual property counsel would likely have altered the outcome in the classmates’ favor.
How do changes in digital technology and online business practices complicate legal issues for businesses without dedicated legal counsel?
New technology usually outpaces the passage and adequacy of older intellectual property laws. This leads to gaps in legal protection. Another complication is there is sometimes no company training on the subject of the new technology to timely update their standards of procedure surrounding trade secrets, copyrights, patents, and trademarks. New technology can present unforeseen reputational, financial, and operational challenges and dedicated counsel is needed to mitigate those risks.
How does the absence of legal counsel impact a business’s approach to contracts and negotiations, and what advice would you give to mitigate these risks?
It’s not what’s in the contract that tends to be problematic but what’s not included. Legal implications are nuanced, and self-representation in contract negotiations is a huge risk. Misconstruing one or two words in a binding agreement can have a long-lasting negative impact on a business. Even with all the access to information we have, the fee to retain competent counsel should be seen as an investment in the business’s success and ability to leverage the opportunity presented.
What legal pitfalls do new businesses often overlook during their initial setup and growth phases, and how can they proactively address these issues?
Failing to implement terms and conditions among business partners regarding ownership of the brand name is far too common. The business structure and procedures for changes in leadership matter. If one owner leaves, does that person have the right to start a new business with the new name? Agreeing on how to protect the business name is one of the most important initial steps. After all, this is the brand identity that the public will come to associate with the quality of goods and services. A huge and frequent mistake is not engaging a trademark attorney to properly vet the name and to render an opinion on the brand strength for the desired channels of trade. Not only will this provide insight on the immediate question about the availability, but the search will reveal growth opportunities for the brand. Put simply, the trademark comprehensive search is essential for good business strategy.
Top 5 Mistakes Businesses Make Without Legal Counsel and share a story for each
- Selecting a weak brand name. There are a number of reasons why a brand name is not federally registrable (or protectable). Trademark applications for common surnames, geographic terms, and generic words are refused based on trademark law. Generally, words that describe the goods or services won’t qualify for protection. Children’s Books for children’s books is an example of a descriptive mark not eligible for registration. Coined marks (also referred to as fanciful marks) have no inherent meaning and are some of the strongest brand names. (Google and Exxon are examples of this.) After more than 15 years of practice in this space, I’ve observed that the name of the business is often one of the last considerations for new business owners. It follows the decision to become a business owner, to conduct the market research for growth potential, and to work through the cost of running the business. Hiring trademark counsel to confirm the brand strength can help avoid the need for rebranding to establish a strong brand identity later.
- Failing to conduct a comprehensive search to find conflicts. An experienced trademark attorney should be hired to conduct a comprehensive trademark search to identify potential conflicts in the marketplace before launching and before expanding. This is a search report that includes information about exact or similar active and inactive trademarks on the federal and state level, online activity showing the same or similar marks, social media handles, domain availability, and information that either supports or details the risks in proceeding with the selected brand name. The experience of the attorney in this area does matter, because the best search report analysis is what business owners need to make informed choices. The trademark registration process takes approximately 10–12 months. If important information is overlooked in the search report, the business owner may very well end the process with no registration and none of the fees are refundable. By the time the process is over, the business has launched, the website is up, sometimes there are company vehicles displaying the brand, there are storefront signs, business cards, social media pages, and apparel. With all of these potential expenses, there’s also the brand integrity that likely needs to be rebuilt. The value of the comprehensive trademark search cannot be overstated.
- Failing to file trademark applications. You wouldn’t build a house on land you don’t own. However, you might be surprised by the business owners who have built strong brands and have no trademark registrations. This puts the business at risk because if another company files a trademark application for the same or similar name first, the more established trademark owner must either challenge the new filer (a legal expense) or forfeit the trademark rights. In the meantime, while both businesses are using the same or similar mark, consumers may be Trademark rights are established by the first use in commerce date. Trademark rights are territorial. For those businesses focused on local customers only, a state trademark might be recommended. Worldwide protection requires a thoughtful approach to international trademark filings.
- Hiring a PR Firm to announce the launch of the new business without owning the name. It’s hard to keep it a secret when you’ve just birthed the next big thing! However, one of the worst things a business owner can do is draw attention to the brand that is not protected. First, trademark applications and registrations are public (government) records. The public can see if you filed, if someone else filed first, what the trademark office thinks about the strength of your brand, the public can even see if you filed it without an attorney! As counsel for hundreds of brands, the goal is to show up in the strongest way possible. We want to file a strong mark, deter copycats, protect the growth strategy, and show that you have representation. Announcing the brand too soon can jeopardize the availability of related domains, desired trademark classifications, and the business owner’s ability to acquire the trademark.
- Failing to acquire ownership of copyrights. Some of the most common copyrights for businesses include company photos, videos, website copy, newsletters, blogs, and social media posts. We broadly refer to it as creative content. These days, creative tasks are often outsourced. The copyright ownership for the creative content belongs to the author of the work — unless there is an employer/employee relationship or a written agreement that transfers ownership. Merely paying for the creative content services is not enough to claim ownership in the work. Businesses often fail to require copyright assignment forms (also known as work for hire agreements) from creative contractors. Doing so is a missed opportunity to acquire copyright assets that can generate income. It’s also a missed opportunity to control how the content is used by others.
If I could inspire a movement that would bring the most amount of good for the greatest number of people, what would that be?
I dream of a scenario where I continue to use my platform teach as many business leaders as possible basic intellectual property law to protect grow their businesses.
How can readers follow me?
Readers can follow me on LinkedIn and Instagram
Thank you for these fantastic insights. We greatly appreciate the time you spent on this.
About the Interviewer: Chad Silverstein, a seasoned entrepreneur with over two decades of experience as the Founder and CEO of multiple companies. He launched Choice Recovery, Inc., a healthcare collection agency, while going to The Ohio State University, His team earned national recognition, twice being ranked as the #1 business to work for in Central Ohio. In 2018, Chad launched [re]start, a career development platform connecting thousands of individuals in collections with meaningful employment opportunities, He sold Choice Recovery on his 25th anniversary and in 2023, sold the majority interest in [re]start so he can focus his transition to Built to Lead as an Executive Leadership Coach. Learn more at www.chadsilverstein.com
Attorney Kimra Major-Morris On The Top 5 Mistakes Businesses Make Without Legal Counsel was originally published in Authority Magazine on Medium, where people are continuing the conversation by highlighting and responding to this story.