David Lizerbram is an attorney in San Diego, California. He founded his law firm in 2005 to provide legal services to entrepreneurs locally and nationwide. He has provided legal guidance on multimillion-dollar funding rounds, negotiated strategic partnerships, managed international intellectual property portfolios, and advised many innovative startups.
David regularly speaks on legal matters and has presented as part of a legal education panel at San Diego’s Comic-Con every year since 2008. He has also created Products of the Mind, a podcast about the intersection of business and creativity.
In this episode, David and I discuss trademarks, legal entities and where you should form them, legal jurisdictions in the unfortunate event of a lawsuit, and the handful of things every SaaS entrepreneur should do to avoid legal problems.
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Key Segments

[00:13] The law (business law, intellectual property law) is a set of tools that, hopefully, will help your business grow and succeed. So, just like you need to learn whatever other skills are appropriate (maybe it’s coding software or maybe it’s sales or marketing), getting an understanding of these subjects can be interesting and can be helpful in terms of avoiding problems and training yourself how to think–not to think exactly like a lawyer but how to anticipate where you’re going to need to put your resources and time in the future. That’s going to be an important key to the growth of a business. Whether it’s a solo business or a larger enterprise, I think that’s probably the right way to think about these things.
[02:43] What due diligence is required when picking a company name to make sure someone else doesn’t have rights to it?
[02:48] David cautions that what he discusses on the podcast is only information and should not be taken as legal advice.
[03:18] What is a trademark? A trademark is anything that identifies the source of goods or services. A trademark could be a business name, a brand name, a logo, a slogan, or a tagline. It is almost unavoidable for a business not to have a trademark or trademarks. You are in the intellectual property business whether you like it or not.
[04:18] In the United States, and most other places, trademark rights are acquired through use in commerce. Generally, the first company to use a brand name for a particular type of good or service is going to have superior trademark rights even if they have not filed to register that trademark. You need to do some due diligence (research).
[05:58] What do you do to make sure that someone else doesn’t have a claim on a trademark? First, do the research to make sure that you are the first to use the name in that category of goods or services. Now, we’re going to get into some gray areas. It’s never exactly clear what falls into your category of goods and services. Another factor is that the names do not need to be 100% identical for there to be a conflict. The standard is “likelihood of confusion.” Is there a likelihood that a reasonable consumer would be confused as to the source of the goods or services?
[09:48] What are the minimum steps someone starting out on a shoestring budget should take to avoid getting into trouble with a trademark conflict? If you can’t hire a professional to do the research for you, the first thing to do, in the United States, is search the United States Patent and Trademark Office website. Search for variations on the name. Check spelling variations and plurals. Google it. Use any search engines that may be appropriate for your type of business. Psychologically, you have to avoid trying to convince yourself that something is not going to be a problem. The more research you do, the better off you will be. It helps if you chose a unique name. Pharmaceuticals chose made up names (coinages) for this reason.
[13:08] Is there a way to register a trademark in case someone does clai