Are you starting a business during the pandemic, whether it's an online service, a product or a brand? Should you protect it? And how do you protect it? On this episode, we chat with Yuri Mikulka, a top intellectual property lawyer with 25 years of industry experience. Yuri is a partner at Alston & Bird in Los Angeles. Her clients are world-wide and range from Fortune 100 companies to emerging high-tech to cosmetics, fashion and luxury goods to consumer electronics and more. Yuri will tell us the difference between a trademark, patent, copyright and a trade secret, from Tiffany blue to the Nike swoosh to the Louboutin red sole. Yuri will explain why it's important to have your own trusted board of advisors in your career. She'll tell us why she let go of the need to always be perfect and embraces making mistakes.
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On The Madeline & Becca Podcast, we chat with leading women from a variety of industries about their career journeys and how they developed professional self-confidence.
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Episode #17: Protecting your brand with Yuri Mikulka
Yuri [00:00:01] Again, it's very important that you have trademark protection over your brand you know, whatever your marketing, the name, logo, define your marketing, because if you don't have that protection, then anyone who has used it before you, who is the senior user, can assert their trademark right.
Madeline & Becca [00:00:29] Welcome to The Madeline and Becca podcast. The mission of our podcast is simple, to inspire professional self-confidence in women everywhere. I'm Madeline. And I'm Becca. On our podcast, you will hear stories from real world influencers, women who have experienced tremendous success in their careers by building self-confidence. Thanks for joining us.
Becca [00:01:08] Are you starting a business during the pandemic, whether it's an online service, a product or a brand? Should you protect it? And how do you protect it? Today, we chat with Yuri Mikulka, a top intellectual property lawyer with 25 years of industry experience. Yuri is a partner at Alston & Bird in Los Angeles. Her clients are world-wide and range from Fortune 100 companies to emerging high-tech to cosmetics, fashion and luxury goods to consumer electronics and more. Growing up as a Korean immigrant, the expectation for Yuri was to work hard, go to college and become a doctor. Since she couldn't stand blood, Yuri decided to attend law school. She found a passion for IP law and the excitement and challenge of learning new technology. On today's episode, Yuri will tell us the difference between a trademark, patent, copyright and a trade secret, from Tiffany blue to the Nike swoosh to the Louboutin red sole. Yuri will explain why it's important to have your own trusted board of advisors in your career. She'll tell us why she let go of the need to always be perfect and embraces making mistakes. Here's Madeline.
Madeline [00:02:40] So, for our listeners who have no idea what intellectual property is, can you give us a very high level overview? What is intellectual property and what are the different types?
Yuri [00:02:50] So, patents are usually novel inventions, often related to technology, method or design. Second, trademarks. Trademark includes a brand that you may recognize, such as maybe the pants you're wearing, Lululemon or the cup you’re holding, Pete's or Starbucks, and can incorporate surprising things such as Tiffany Blue color on Tiffany packages or the red soil under Christian Louboutin stilettos. It could also include slogans such as "Just Do It," by Nike or the swoosh logo. And copyrights, those are different. They are, for instance, musical composition, photo images and art. So, what you may see on social media, sometimes is copyrighted. IP rights are important because once established that it's yours, you're the owner, you can prevent others from using it without taking a license from you. So, you can use that to distinguish your product service or use it to license the products.
Madeline [00:03:59] So, you know, during this pandemic, we've heard from a lot of our listeners who are thinking, jeez, this is a great time to start a business. And many of them are not lawyers. And they hear the term, I think, intellectual property. And it can be perhaps a bit intimidating or feel like, jeez it's such a barrier. So, do you have any advice for listeners as they're getting going, thinking about why it's important to consider intellectual property when you're starting a business.
Yuri [00:04:27] Absolutely. So, if you're starting business now, online service, perhaps. And even if it's not online service, there is going to be some aspect of it that's going to be online and perhaps virtual as well. So that will require that instead of just regular having a store front, you will be using online services for a lot of your business. So, more than ever, intellectual property becomes important. So, for instance, something as basic as making sure you put the right name for your business, right name for your brand and your products and services. And you need that at any time. But during Covid-19, that becomes very important because you want to be able to distinguish yourself online. And secondly, if you think that you may have a novel invention related to how you're doing business or technology, that's very important. So, just basics. So, if you're starting business, consider applying for trademark protection on business name or brand or product or service. Before you pick the name, just a tip, conduct search on USPTO. That's United States Patent and Trademark Office website to see if that trademark has been used by somebody or is registered by somebody and do a little online search. And consider applying for trademark protection. In terms of what is protectable, the more arbitrary and fanciful as a mark more protection you're going to have. For instance, if you're simply describing something descriptive and you want to make that your name. You're probably going to have a harder time getting trademark registration for that. So, if you're going to be offering computer services, you're calling it computer services, you're going to have a difficult time. But, if for instance, I'll give you some examples of famous ones. Google is arbitrary for the function of searching online. Apple is arbitrary for computers, Lululemon for fitness outfits and Sharp for TV. Those are arbitrary and fanciful marks that are able to gain more protection. And again, if you believe that you have novel enough product line or technology that would warrant a patent protection, tip for you there, is that you need to seek protection within a year of publicly disclosing it or you may lose the right to seek any patent protection. Oftentimes we are advising folks who are very excited about taking patent protection. They realize it's too late. So, those are some tips I have for new business owners in this time.
Madeline [00:07:25] And what about for business owners who wonder if they even have anything that might be intellectual property, if they're starting, just say, a you know, a cold brew coffee company or some sort of an online lifestyle service? What are some of the things, and at what point should they start deciding whether or not jeez, maybe I should go see a lawyer and discuss whether I have something that qualifies as intellectual property.
Yuri [00:07:48] Absolutely. Well, I mean, certainly everybody could consider protecting the brand name and mark and design. I think that's pretty important to do, actually. I was talking to a friend recently who started a business during Covid-19 and she realized after the fact that the name that she chose for her business was registered by somebody else. And so, she received a cease and desist letter. And then all of a sudden, she had to start over. You know and pick a new thing. And you know that's really difficult, because here you are investing time and effort and money in marketing that business, using that name. So, it's really important that, that is taken care of. And if you want to seek legal assistant, that's even better. In terms of what it is that you're doing, if you think about the type of service that you're providing and the technology you're using. I mean, I think we use common sense. How novel is it? I mean, you can always do online search to see how novel it is. And you think it's novel enough and it's unusual and cutting edge perhaps there's patent right protection. Copyright again, photos and things like that. If you're a photographer, you don't actually need to seek registration in order to get copyright protection. So, you know, that's already there. But so, for photos and art or musical composition that's already protected, so I would just assume that, you know, that it is protected and act accordingly.
Madeline [00:09:28] So, beyond, say, just going to GoDaddy, to see if a domain name is available, the USPTO, the patent office has a search function, you said that people can go in and look and see whether or not their brand is associated with the type of product or service they're starting?
Yuri [00:09:45] Absolutely. That's exactly right. And it's easy to do. And you don't need a lawyer for that. But, if you want to be really sure, 100 percent sure, I would seek counsel before you invest a ton of money in marketing that name or brand.
Madeline [00:10:04] So, for our audience then, who's at the juncture where they say, geez, I do want to hire a lawyer? What do you think is important in finding the right person and fit for your business about picking a lawyer?
Yuri [00:10:14] Oh, that's a very good question. There are a lot of lawyers out there, would you agree?
Madeline [00:10:21] Definitely. It's a saturated market.
Yuri [00:10:25] There are a lot of lawyers out there. I think, with anything in life, it's chemistry. And of course, you want them to have the expertise that you need. You can have a generalist trying to do trademark application and registration for you. You can have patent analysis conducted by generalists. However, even more important than that, it's somebody that you can trust and that your gut tells you this is somebody that is experienced enough, confident enough to do the right thing for you because legal fees can really run up. I mean, it's one of the most expensive costs when you're starting a business sometimes. And so, you want to make sure that you can trust them enough to be experienced so that they're not like wasting time failing you. And that they've done the sort of work that you're looking to do. And I would caution that it's very important and if I were hiring a lawyer, I would always ask for a budget upfront and make sure they stick to it.
Madeline [00:11:32] That's really good advice. We've heard from some of our listeners, geez, I hear this term nondisclosure agreement and I want to get some feedback from my family and friends. Do I need to go out and have someone, you know, get a nondisclosure agreement and have everybody sign it before I tell them about my idea? Can you just tell our audience what is a non-disclosure agreement and why are they important?
Yuri [00:11:52] Absolutely. Nondisclosure agreement is important for protecting your confidential information. And sometimes it's called trade secret. So, another type of intellectual property that we didn't talk about is trade secrets. And trade secret is something you do not disclose, and you get the value of it and the reason it's valuable is because it's secret. So, the most famous example is Coca-Cola's secret recipe. We still don't know what that is because they keep it under tight and sealed. And so, that means that let's say you have this brilliant idea or technology and you want to make sure that it's not disclosed because once it's disclosed, you lose the value of it unless, for instance, you have patent protection and what not. So, in that case, you may want to prepare an NDA. And, they are not too complicated. And have folks that you're sharing the idea with, sign it. Now, I would tell you, practically speaking, people may not want to sign them. And in fact, I advise clients to not sign it if they're getting approached by an inventor or some small company or individual wanting to offer services because a company may already know about that service. But if they sign an NDA then, you know, they're bound to keep that information confidential, even if they have something very similar. So, but as a business owner with something that you think maybe protectable and if you think that you have confidential information, I would certainly advise that you try to get people to sign an NDA.
Madeline [00:13:46] Yeah, it's great. I think a lot of people think, gosh, it's a scary term, but that it serves a purpose.
Yuri [00:13:53] Absolutely it does. Yes.
Madeline [00:13:57] And so, with respect to your practice area, I know you do a lot of litigation. So, you see it, the problems after they've arisen downstream. So, can you tell us, in terms of starting a business, if you have these things in mind and you do go ahead and you seek protection, how does that help you? Should something arise and you end up in litigation down, down the line?
Yuri [00:14:23] Sure. So, let's say, let's say potentially somebody thinks that you're infringing on their patent. That happens very often. It's especially as a company becomes more visible and more successful. So, if you already have patent protection on and you're not gonna be able to cover everything you do, which is impossible. But, if you already have some patent protection that can be used to demonstrate that you have your own, you have your own technology, that you know it's your own invention. So, that could be helpful. Now, in the actual litigation for patent litigation, it's much more precise than that. But in terms of, practically speaking, it could be something called a clock license, or they could simply be, you know, demonstrating that maybe they infringe your patents. So, that can be argued. For trademark, I mean, again it's very important that you have trademark protection over your brand and you’re the you know, whatever your marketing, the name, logo, design, your marketing, because if you don't have that protection, then anyone who has used it before you, who's the senior user can assert their trademark right. And you don't really have much opportunity to be able to defend yourself because you're the junior user.
Madeline [00:16:07] Can you give us an example of a success story that you've litigated? For our listeners? And something that was really interesting and perhaps an accomplishment that stands out in your mind?
Yuri [00:16:23] Well, I I'm trying to think of an example that would be more relatable to the listener. They may not be as interested in corporate litigation. Recently, I had a case that was very interesting. It's ongoing, but I will talk about aspects of it that's public. I had a case where a good client of mine experienced a situation where they received complaints from some employees about the conduct of the executives. And we looked into it. We took it very seriously. And we realized that they had been misappropriating our clients trade secrets for confidential information and using that to form their own mirror companies and diverting business opportunities to those companies. It was a fascinating, elaborate scheme that they had created. And so, we had to act very swiftly to go in there and investigate and terminate those executives and engage in litigation. So, the court that handled this matter was federal court in Florida. And the judge is a very smart judge. She's wonderful. And she understood the issues right away and granted a temporary restraining order to stop these individual from acting wrongfully, continuously. And recently granted a preliminary injunction order as well, which would require them to continue to stop what they're doing until the end of the case. Until everything's decided.
Madeline [00:18:15] And for our listeners who don't know what a temporary restraining order is, can you just tell them what that means in practicality?
Yuri [00:18:22] Yes, it's a very draconian order by a court stopping somebody from engaging in certain conduct. So, for instance, a temporary restraining order can include return all data and information that you have regarding the company that you just left. And to do so within three days. And if you don't comply and it's later determined that you did not return it, you could be in contempt of court. So, that could be pretty drastic, it could be anywhere from monetary sanctions to a bad inference in the case to going to jail. So, it's very important. And this actually is applicable to a lot of the listeners here now because there's a lot of mobility and movement right now in terms of folks leaving jobs, starting jobs, starting new companies. And it's very important that you do not take information from your prior job that may be deemed confidential or proprietary to your former employer. And also, if you're starting a new business, it's good for your employees to sign confidentiality agreements to ensure that they know that they're not supposed to take your confidential information after they leave.
Madeline [00:19:48] That's a really, really good point. So, for our listeners who are starting businesses and potentially hiring employees, what would you recommend at the threshold of when they hire people?
Yuri [00:19:59] So, depending on what level of work they do. But certainly, if they are, any employee should know that they can't share confidential information. So, there should be an agreement that requires them to keep information confidential. There should be an employee manual that lays out what that is. And I think it's important not only just give it to them, but they should acknowledge that they received it. That's always really helpful down the line in terms of litigation, because an employee will often say, I never received that manual. I don't know what you're talking about. And so, when there's a feature that they acknowledged receiving it, that's very helpful.
Madeline [00:20:45] That's a really good point. So, then you've got proof that they've actually acknowledged, I've read this and understand it and I'm agreeing to it. I want to shift a little bit here and talk about your own career, being a successful female litigator. And obviously, that is a very demanding profession, of which I'm sure you faced different types of challenges. Can you describe for us something that just perhaps a challenge moment in your career and what you took from that, those lessons going forward? Perhaps it was a trial or something in the office or a case that you worked on.
Yuri [00:21:22] Sure. So, let's see. Challenges and milestones. Let me talk about what I think that a lot of listeners would understand. It's about having a fulfilling personal life in addition to career. I knew that I wanted to be a mother. So, and still have a satisfying career. But the legal career, as you know, is brutal and you do some long hours there. I remember for the longest time I was coming home at nine, ten o'clock every night, even when the kids were little, and they were babies. So, I figured out early on, even before having kids, that in order to have more control over my schedule so I could spend time with my kids and my family, I would need to generate business at my firm instead of just relying other partners to do the work. Because if you do, even if they have the best of intentions, they may say, well, next week, on Wednesday to Friday, you're flying to Wisconsin to take depositions. And if you don't have childcare lined up, I mean, how will you do that? And for a while, I was a single mom and that would have been impossible to do. So, my milestones included landing my first big client and that was Nike actually, when I was a baby partner 16 years ago, my first year as a partner. I mean, even before I became a partner, I met the general counsel of Nike when I was pregnant, and we developed a good working relationship and he took a chance on me and we ended up working together. And that was really, really helpful. Another milestone was leaving a big firm I was with at the time to join a small boutique law firm, which was very scary for me because I knew most of my compensation was going to be based on the work I generate on my own. But that really paid off because I was forced to prove myself and develop a wonderful business relationship that I still benefit to this day. But that was a huge risk I took because my daughters were one and three at the time. And to be a working mom, driving and commuting from Orange County, California, to downtown Los Angeles every day to have that sort of very intense practice that I had. And it was hard work, but it paid off in terms of my confidence, in being able to generate business that I needed to do. And developing trust and lasting relationship with corporate clients. So, even to this day, I have developed a relationship during that timeframe, all those years ago that are very satisfying that I was in touch with.
Madeline [00:24:38] And, for our listeners who are perhaps facing similar situations, they're working long hours, perhaps as litigators or in finance and seeking sort of what that next chapter is going to look like for them. What advice would you give them?
Yuri [00:24:55] I've been practicing for nearly 25 years. I will have to say, the first 10, 15 years, I know that sounds like a long time, were hard years. I put in very long hours, but the way I saw it was I always tried to find something interesting about what I did and just focus on that and be grateful for having that opportunity and being grateful for providing value to my clients and being able to assist them in a meaningful way. And most importantly, developing meaningful relationships with clients and colleagues around you that can support you. Often those people, the colleagues and people that support you are outside of your organization. So, I have always had what's called a board, my board. So, these are the folks that support me. And they may not even necessarily know they're on my board, but they are. And I often reach out to them to seek their input. And we support each other. And they're mostly women. But I have some men on that board as well. And it's been so helpful to me because often times I remember I had this hearing last year and it was very stressful and it was going to be high exposure, a lot of people there and I just was nervous about it. And I was thrown into this case and I didn't know as much about this case as other folks on the scene. And so, I put up the phone and called my friend, my girlfriend who was also a lawyer. And we just had this long talk when I was in Washington, D.C., going for a walk and she was in California and she helped me realize, like, look, you've done this, you know, you're going to be able to do this. No problem. And that pep talk was so helpful. So, I think it's about having people around you that support you. And that truly, they truly care. And that goes both ways. I mean, you know, we need to be invested in other people's careers. And actually, that brings out the best in us. And that's one of the reasons that I work as hard as I do now, because I'm at a point where I've been doing pretty well in my career for a while. But what drives me now these days, has to do with helping others and creating a pathway for other women to come up through the ranks and making sure that I do what I do at my firm. I work at a very large firm now, a wonderful firm called Alston & Bird, and making sure that I am part of the leadership. So, I'm at the point where I can help other people. So, we make sure that it's not just the same type of people selecting leadership and it's diverse in every way and it's well thought out in that way.
Madeline [00:28:11] And can you tell us? About your mindset that has helped you be successful. I know you mentioned gratitude. You know, we've heard that actually from quite a few of our guests about how gratitude and thinking I get to do this. And I'm lucky I get to do this is a big part of the mix in their success. But, what would you say in terms of your mindset that has helped you?
Yuri [00:28:37] I will tell you that I am imperfect in so many ways. I think a couple of things that helped me, one is I have pretty good ability to laugh at myself. I mean, when I was younger, I was terrified of making mistakes and making a fool of myself. And now, I embrace it because it's not about being perfect. It's about being able to accept the way things are and making the best of it.
Madeline [00:29:12] What? What is the most rewarding aspect of your job? What do you get the greatest satisfaction out of?
Yuri [00:29:15] Two things, one is, it's incredibly challenging what I do. I love it. So, oftentimes I'm working on brand new technology that I had no exposure to. And what's good about my background is that I don't have technical background and most patent litigators do. And so, the advantage of that is I have to learn new technology each time and be able to understand it enough that I can communicate that to judge, jurors and clients in an understandable manner. So, I'm less focused ... When I learn new technology, it has to be understandable enough for someone like me. And that's very helpful for litigation because juries, they need to understand themselves and make it relatable. So, I love that, taking something super complicated and challenging and making it into something that's relatable and workable and practical. And I think being a mother helped me with that because I have to always make sure that I try anyway to get my daughters to understand that what it is that we're doing really matters to them as well. So, I love that about my job. And secondly, I love the freedom that it gives me. I didn't always and even though I was ambitious as a young person, I wasn't always sure I would be working full time at this age. But I am grateful that I have worked a very demanding career because I've learned so much. And I also gained a lot of freedom in terms of, because I have my own clients and I work at an established firm, where are I am appreciated. I have a great team that I can select, that I can work with. I get to I honestly, actually, I get to actually select clients in industry locations that I want to work with. So, one of the things I have set up to do a few years ago is to work with clients in parts of the world where I love to travel to. So, I have wonderful clients in Europe and Asia that you know, obviously I'm not able to do this and that this. But I get great pleasure being able to be a lawyer that works with clients in different parts of the world. And I find it very interesting to learn about how they work and bridging the gap and having that multicultural experience that I think makes us better professionals.
Madeline [00:32:16] We always like to ask all of our listeners about how they've developed professional self-confidence. And what advice they would give to our listeners about how they can develop their own professional self-confidence, whether that's in law or whatever profession they may be in.
Yuri [00:32:34] I think what I find the most helpful is thinking about things in the terms that when you feel the fear, lean in. And for me, that was a very helpful way to gain confidence over the years. Because, again, it's terrifying, a lot of the things that we're doing when you're doing it for the first time or when you're public speaking and when you're, for instance, going up against challenges where you have to have, for instance, difficult conversations with your colleagues. So, I have always thought of things throughout my career that every time I meet challenge, that means I'm supposed to learn from that. And that even if I end up not being successful in what I'm doing, it's the fact that, I leaned in and I have faced that challenges. Faced that difficult conversation, faced that difficult witness. And face the difficult colleague and that I was able to assert myself with integrity in a way that I could be proud. And that in itself is success, even if it was not outward success, if there was internal success for me, then that was good enough. And, I often tell myself that's the best I could do. And, I think keeping that in mind, then you could apply that to any type of career and any type of challenge that you are facing
Becca [00:34:27] We hope you enjoyed our interview with Yuri. If you want to access the USPTO website that Yuri discussed, you can find it linked in our show notes. Thanks for tuning in. If you enjoyed our podcast hit, subscribe and leave us a review. Thank you to Nico Vettese for composing our original music. And thank you always to our home team of friends and family for supporting us in our mission. This episode was produced and edited by Madeline and Becca. Thanks for tuning in. And remember, you are somebody.