The Old Joel on Software Forum: Part 4 (of 5)

not in my job description

I recently wrote a website for a client (one of my first), and they were pleased. I quoted them a fairly low price to get the business, and now they need another graphic design job that's several times bigger (and not as much of a bargain price), so our relationship is growing and shows promise for more business in the future (through referrals, etc).

About halfway into the web job, they came up with a great slogan, which is now on the website. They want to trademark it, great. But they don't know what's involved in trademarking. They ask me, and I say "I don't know all the specifics; it's not my area of expertise; ask someone else or search the web."

Today I got a call from the client, and he says something along the lines of "we really want to tradmark that slogan, would you mind figuring out how to do that? I know you'll probably need to know for other clients in the future, and if you could find out it would really help us."

I did about five minutes worth of googling and cutting/pasting from www.uspto.com, and sent a short email with a little info and a couple good links.

It wasn't any real work,

- BUT -

This work was completely out of my job description. The contract work was for a web package, not business consulting. If I were a salaried employee, I wouldn't think twice about it, but it's contract work, and I want to make sure to be paid for my time.

My first reaction is to say "forget it, it took 5 minutes".

My second reaction is "no, your time is valuable, and you don't want to set a precident for being pushed around. Bill them for it."

What do you think?

multi-tasking
Monday, March 8, 2004

so, you just want to be a code monkey. good luck.

sensitive bald guy
Monday, March 8, 2004

Legal advice - 2 hours at @ $250 per hour = $500

They've told you it would be important to your business to do it. You tell them it's important to their business to have the information.

Monday, March 8, 2004

On the other hand, do you really want the responsibility that comes with giving legal advice?

Kyralessa
Monday, March 8, 2004

why the hell wouldn't you contact a lawyer, get the advice or get the job done, then mark up the bill from the lawyer????!!!

Monday, March 8, 2004

(blank),

I've considered this, but I'd prefer not to sour the relationship, when "the big fish" of a job is still on the end of the line.

re: code monkey,
Not at all. I'd love to do business consulting as well, but our current agreement covers the design for, and writing of the website, nothing more. It's the precident that concerns me.

multi-tasking
Monday, March 8, 2004

(i meant to the first blank)

multi-tasking
Monday, March 8, 2004

They don't want to know how to trademark it. They want you to trademark it. The customer is always right. Figure out how to do it, tell them how much it will cost and what is involved, get their approval and then do it.

You should have a lawyer whom you work with on these things. One stop shopping- it sounds good to me.

name withheld out of cowardice
Monday, March 8, 2004

If you took care of a problem they're having, and charged appropriately for it, then you would not be "souring" the relationship. On the contrary, I say you would be _enhancing_ it.

Monday, March 8, 2004

name withheld,

Good point. Thanks.

multi-tasking
Monday, March 8, 2004

So, offer to find them someone to help, and charge a finder's fee of 5-10% of whatever they pay to the (I assume) lawyer you find. If they don't want to pay, let them do it themselves.

Greg Hurlman
Monday, March 8, 2004

Maybe here's the practical suggestion - ask them if they would like you to find a trademark lawyer for them. If they do, charge for your time. The lawyer will charge them directly.

If they don't, tell them what it will cost for you to research the topic. (And don't tell them you've already done it.)

Monday, March 8, 2004

That's really easy...

"I'd be happy to trademark this for you. However, this is not part of the original work we agreed upon. I would have to charge you $xxx for time and materials. Please notify me if you want me to go ahead."

That's it - just be honest and tell them politely it costs your time and money (because you want a lawyer to do it right). If they can't see the point in this, you don't want them as a client anyways. (Oh - it helps if you don't mark up the lawyer price tag too much :)

Robert 'Groby' Blum
Monday, March 8, 2004

This is a much bigger issue than most startup businesses realize. Charging for your time and seeking contracts that have a clarity of purpose should be your number one priority as a new business. Undercharging or doing work beyond the agreed upon description is bad business and worse than losing the client. In addition, most clients worth having will understand this argument and work with you to define both your roles in the relationship.

Dustin Alexander
Monday, March 8, 2004

I would have just told them that filing a trademark is a legal matter and they should contact an attorney. Trademark law is complicated enough that there are lawyers who specialize in it.

Anonymous
Monday, March 8, 2004

Think it from the longterm relationship standpoint, not your money. Do you trust them ? Do they trust you ? If yes to both, you have something there hard to find - protect it ! Just be honest.

I have some 5+ year clients where I have deferred payments and even worked for free when they hit tough times. And they have consistently sent me work and use me for general biz consulting as well as the coding. It's so nice to have those kind of relationships through the years.

Joe Hendricks
Monday, March 8, 2004

I suppose you could trademark it yourself and then offer to sell it to them.

Aaron F Stanton
Monday, March 8, 2004

Or just put a little ™ next to it and charge them $300.

Ron
Monday, March 8, 2004

Congratulations, you've discovered how to succeed in consulting: It's primarily about relationships. Your customer obviously TRUSTS you and trusts the rapor they have with you.

Thus, they've asked you to do something not because you are an expert, but because they feel they can trust you (and they probably have more time than money).

I agree with (someone above) who said the customer probably wants you to trademark it for them. Ask 'em. Let 'em know it'll cost 'em. Talk to a lawyer (I can suggest ours, who is pretty good) and get the work done. You will then have moved up from just "code monkey" to project manager. (Next stop: Trump Tower).

The real Entrepreneur
Monday, March 8, 2004

I know a photographer who trademarks every picture she takes for hire.

Then she licenses the picture. So just because my pic is going to appear in Better Software Magazine next month does not mean that _I_ can use it. That'll cost some extra $$$.

Apparently, it's a standard, boring procedure like mailing a the picture to a federal bureacracy, paying a fee, and including a SASE.

It sounds like the _PERCIEVED VALUE_ of doing this work for the client is far higher than the cost to do it yourself. I'd advise just doing it yourself and making $250-1,000 or so.

Heck, there are real, respectable lawyers that make 2 to 5 times that for the same service. :-)

regards,

Matt H.
Monday, March 8, 2004

I disagree, entrepreneur. The way they asked the guy to do this job suggests they were trying to exploit their leverage relationship, rather than assigning him important extra responsibilities.

I would bet my bottom dollar that they asked a lawyer first and, after he quoted $3,000, someone suggested getting the web developer to look it up. "Tell him it will get him more business." It's the oldest line in the book.

Original poster, you need to set clear lines in the sand and work carefully here.

Monday, March 8, 2004

Use your common sense, and don't be petty. You're trying to build a relationship, right? Well, do whatever they ask of you, and impress them, and don't look like a clock counting miser either..

If they need more legal advice, yYou can turn this into a referral for a lawyer, who willl then refer you 10 more clients who need websites.

bella
Monday, March 8, 2004

further correspondence suggests that they would like me to "take care of it". Furthermore, I don't think they really expect me to do the whole thing for free (they're not penny-pinchers).

So the plan is to tell them that I can do the whole project, for the enclosed fee. That way I have the possibility of doing the job (and being paid for it), they'll know I don't work for free, and if they want to figure it out themselves they can do so with the links I already sent.

I expect they'll prefer to pay me to fix their problem, since they're usually busy with day-to-day business. Thanks to everyone for the insight.

multi-tasking
Monday, March 8, 2004

Check out http://www.legalzoom.com They claim to do all the filing paper work for you, kind of like with incorporating online. Its only a couple of hundred bucks.

Ken Klose
Monday, March 8, 2004

The real Entrepreneur: "rapport", not "rapor".
And don't put spaces before commas...

Ali
Monday, March 8, 2004

http://www.ustpo.gov

Andrew Burton
Monday, March 8, 2004

That was transposed. The actual link is: http://www.uspto.gov/

Sam Livingston-Gray
Tuesday, March 9, 2004

The only things I would be concerned about in this situation would be liability for practicing a form of law without a license, and in general any liability for doing a task with which I was not well acquainted.

Not exactly like giving an exacto knife to a layman to do a little brain surgery, but the same general principle applies.

Just cover your ass. Doing new things and completing the entire job - doing whatever is required - is what distinguishes a "true asset" from a narrow specialist role.

Bored Bystander
Tuesday, March 9, 2004