How to Protect your Brand with Erica Scott Tolbert

Mar 29

Do you own your brand?

You might think that, because you have an LLC, you by default own your actual brand, but that might not be the case!

Erica Scott Tolbert is an award-winning intellectual property and business law attorney and the founder of Scott Tolbert Law, a boutique firm based in Oneonta, Alabama, serving clients globally. She devotes her legal practice to helping female founders create, build, and protect their brands, assets, and legacies. With her extensive background in trademarks, contracts, and formation, she represents clients from multi-million dollar brands to local growing brands. When she isn’t running her law firm or nurturing her other growing businesses, she’s running after her babies at home as a mom to two under two, bonus mom, and wife.

Erica began her law firm desiring to serve and protect entrepreneurs and families, as the two are inseparable. We love her passion, as we too are in business with and for our families. So we invited her to help us build our trademarks awareness! She’s answering our entrepreneurial legal protection questions below—

I'm just starting a business, why should I worry about protecting my name?

Short answer:

“There’s only one way to build a sustainable business. You have to establish a strong legal foundation. Not prioritizing protecting your name when you are just starting your business would be equivalent to building your dream home on the most breathtaking piece of property…that you don’t own. Why build a brand and knowingly avoid the only thing that will actually protect it and make it yours?

“There is no substitution for this no matter how unique or personal your name may be–yes, this even applies if your brand name is your actual legal name, which is crazy, I know.

Longer Answer:

“The financial reality is if you trademark your name first, you’ll spend ~$3k. But if someone else files to trademark your name (or anything similar) first, you’ll spend $40k+ to oppose their application before it registers to prove you had priority (and there is no guarantee that you will win). If someone does successfully register the trademark for your same name (or anything similar), and you want to petition for their trademark to be canceled, you’ll spend another $40k+. If someone else actually already owns the trademark rights to the name you’re using and they find out, you’ll spend $100k+ to defend yourself in state and/or federal trademark infringement lawsuit, PLUS damages (they can sue you for any revenue plus loss of profits as a result of your infringement).

“Protecting your name when you’re just starting out is not just about preventing someone else from stealing it. It is also about making sure you’re not the one building a brand with stolen property (a name that already belongs to someone else).

“The legal stuff isn’t fun or glamorous (although my team and I try our best to make it so), but officially registering your trademark and seeing ® behind your name is the ultimate peace of mind to really go ALL IN with your business; no more looking over your shoulders.

“Establish the foundation that will give you the power to protect your reputation, cancel fake/fraudulent social media pages, cease and desist any other brand trying to steal yours, confidently navigate partnerships and investors, and so much more!

“For any business, no matter the industry, the name is the face of the brand. It is the first thing a client or customer will see, hear, and remember above anything else. Because of this, it’s the one thing a business can not afford to risk losing, especially in this ever-evolving digital world where your footprint sticks.

“While branding and marketing are undeniably important (and the part we all love, if we’re being honest), legally protecting your business name prior to even launching your brand should be a non-negotiable for you. Don’t just take my word for it, the United State Small Business Association also lists this in its Ten Steps to Start Your Business.”

I've had my business for several years, isn't my business name already mine by default?

Short answer:

“Definitely not (but this is a little tricky, so bare with me here).

Longer Answer:

“There is a little thing called Common Law Trademark rights which establishes ownership for your brand, but with severe limitations. This type of right is limited to your business’s geographic location/reach. For example, if you are Birmingham based, your “default rights” will stretch across Birmingham or maybe the state at most. However, these rights will not prevent someone in Atlanta, LA, Aspen, or anywhere else from successfully registering a Federal Trademark for that exact same name during the Federal Trademark review process, because the United States Patent and Trademark Office only considers their database of registered and pending trademarks to determine whether someone will be approved.

“And if someone else is awarded a Federal Trademark Registration, they can send you a Cease and Desist Letter forcing you to rebrand and/or threatening to sue.

“If you find yourself in the position of opposing someone’s trademark, then you’re looking at $40k+ to fight for the name and won’t be guaranteed a win.

“None of these things mean you have full ownership of your brand name:

✘ LLC

✘ Corporation

✘ Domains/URLs

✘ Social Media Handles

“And the list goes on…

“As founders of profitable businesses, our priority should not only be maintaining and growing revenue, it should also be to mitigate our risks as much as possible through Trademarks, Copyrights, Attorney-drafted Contracts (pulling contacts from Google is a strong NO), and legal-based business strategy.”

Trademarking just sounds expensive; could you break down the costs associated with this process?

“Working with a reputable Trademark Attorney/Firm to apply to register for your trademark typically ranges between $2500-$5000 per mark.

“The base inclusions will typically reflect conducting research, drafting an opinion letter to explain the results and advise whether your application will likely be approved or denied, drafting and filing your application, and your application fee of $250 for one class of products/services.

“Our packages, however, have been tailored to include significantly more value; we are intentionally less transactional because it has always been important to me to serve my clients and their brands with the level of attention and detail I want for my business.

“Our clients receive 1:1 In-Depth Legal Brand Strategy time with me where we dive deep into your business to identify asset protection strategies and solutions for exposures, not just for trademarks, but all things legal in your business; brand monitoring throughout the application process (1+ years); and so much more.

“To better accommodate the range of clients we serve, we offer three different packages ranging from $2,750-$5,129.”