I’ve had a business crush on Lela Barker for a long time. I love her straight-talking, no-nonsense business advice mixed with her southern charm.
So, I was so excited when I learned she was also going to be speaking this year at Craftcation. And Lela did not disappoint. She’s a teaching pro who knows her stuff. (Seriously, you need to check her out.)
And I was thrilled when she agreed to share her story about the trademark of her business. Particularly, because she and Tara Gentile had polar opposite experiences with the trademark registration process.
Without diving into the nitty gritty, tell us a little about a time you learned the “legal” ropes…
I knew precious little about trademarks when I first dove into the world of entrepreneurship, circa 2003. I knew that I probably needed one and I had read a wee bit about them on the internet, but I was severely “resource constrained” (read here: broke) and could only scrape together enough money to do a quick consult with a legal professional. After hearing about common law trademark rights, I naively christened myself “home free” and came into the marketplace without filing an application for federal registration.
A few years later, I had amassed a few hundred wholesale accounts for my apothecary brand, and I had a deal with a prominent home shopping network for a six-figure debut. As the business became cash-flush, I prioritized getting that trademark. Unfortunately, another business had entered into interstate commerce after I launched, but they filed their federal trademark application before I did. And that application had been approved by the USPTO. Cue twelve months of gut-wrenching stress, five-figure legal bills, and a six-figure settlement. Safe to say: it wasn’t my favorite year in business.
Cue twelve months of gut-wrenching stress, five-figure legal bills, and a six-figure settlement.
Yuck, that doesn’t sound fun, how did you feel at that moment?
I was utterly terrified that I’d lose everything I’d fought so hard to build.
I was angry at the opposing party, who was opportunistic and unscrupulous in our negotiations.
I was disappointed in myself for having not prioritized this important piece sooner.
Long story short: I purchased her business, and the sole deliverable was that trademark. It was a pretty hollow victory, but it certainly made me a stronger, more forward-thinking entrepreneur. It taught me to pay attention to the details, to find funds for the things that need doing, and to think several chess moves ahead of the current curve.
Did this impact your creative business? How?
Engaging in an intellectual property dispute proved to be exhausting and expensive. Beyond the frustration of burning through money at an alarming rate, the entire affair knocked me off my mental game. It sucked much of the joy of being in business into the ether and it did a number on my self-confidence and business momentum.
Beyond the frustration of burning through money at an alarming rate, the entire affair knocked me off my mental game.
Thankfully, I’m scrappy in nature and not afraid to work hard. If it wasn’t for those two traits, it might have spelled the end of my business (which is still chugging along beautifully nine years after the settlement!). I’ve made the money back many times over and I obviously hopped back on the horse, but the experience was transformative for me. I could have secured an attorney early in my business and paid the federal application fees for less than $2,000. Ultimately, my trademark cost me 76 times that sum. Let’s read that figure again: seventy-six x $2,000.
When I’m helping creative brands level up their business game, I always put this intellectual property piece under the microscope. I encourage them to tag in competent legal help and lock down their IP sooner rather than later. Securing federal registrations is an important paradigm shift: you’re building a brand asset you can monetize in the immediate and later, too, if you choose to sell the business. But more importantly: these registrations help us view our business as “big girl” endeavors. They build confidence… and confidence is everything when you’re a maker putting your work out into the world.
But more importantly: these registrations help us view our business as “big girl” endeavors.
What ropes did you learn from going through this experience?
Many lessons that revealed themselves on this leg of the journey…
- sometimes a little knowledge is an incredibly dangerous thing
- it’s often worth investing in an expert
- I’m more resilient than I ever imagined
- I’m now the proud owner of four trademarks (with a fifth being published for opposition this month!)
How you can avoid Lela’s lesson
I think that creative businesses can jump the gun and register a trademark too early. But you can also wait too long to register your trademark. This isn’t because you won’t get your registered trademark, but because situations like this happen.
I’ve found that there’s a sweet spot to when you should file your registration. When working with my clients, we use the following factors to decide if they are in that sweet spot. We figure out if they:
- anticipate using this trademark for at least the next 5 years
- have adequate cash flow to afford the registration process
- are at risk for someone else swooping up the name because the name is eligible for trademark, but isn’t super unique
If they are in the sweet spot, then we start the trademark registration process by doing an in-depth trademark search. We do this not only to evaluate the likelihood of them getting the trademark. But to prevent them from throwing away money on a trademark registration application that will be denied.
Want to know more about Lela?
Lela Barker sits on both sides of the table: she’s a successful maker with 13 years of experience building a creative business and a strategist who helps other makers build smarter, more successful businesses. She began bootstrapping her apothecary brand, Bella Lucce, in 2003 and has since cultivated 1300 wholesale accounts in 27 countries, generating more than $10 million in revenue.
Lela is also a wildly passionate about helping creative entrepreneurs bring their products into the marketplace. She’s parlayed her time in the entrepreneurial trenches into a series of innovative entrepreneurial teaching programs and a robust private consulting practice. Through Lucky Break Consulting, Lela enjoys the privilege of helping hundreds of product designers navigate product pricing, brand development and wholesale strategy.
When not arming makers with tactical business approaches, you’ll find her collecting passport stamps, perfecting the ultimate lemon meringue pie recipe, and clinging tightly to her sanity while raising four children.