0:00:03.4 Kurt Baker: Searching for guidance on brand protection. Meet JJ Lee, founder and trademark lawyer, law firm, PLLC in Ann Arbor, Michigan. With over 15 years of experience and more than 7,000 trademarks registered. JJ specializes in helping entrepreneurs safeguard their brands. Tune in for expert insights on trademark law and practical tips for securing your business’ identity. This is one of those things that I find interesting because it’s far more important than most business owners realize until sometimes it’s too late. That’s been my personal experience. [chuckle] So, I don’t know what your experience is, but it’s kind of one of those hidden values in a company, right?
0:00:50.7 JJ Lee: Well, yeah. People don’t go to attorneys until they need help, right, or something like that.
0:00:53.7 Kurt Baker: Right. It’s like too late. Like, Oh, shoot… [laughter]
0:00:56.9 JJ Lee: Exactly.
0:00:57.7 Kurt Baker: I’ve been using that for years and years, and now somebody else wants to use it. Now we’re gonna argue about who owns it. Right?
0:01:02.6 JJ Lee: Right, right. Exactly.
0:01:06.2 Kurt Baker: So how did you get into this? I mean, it’s kind of an interesting area. I find it fascinating once I find, kind of learned about it, what it’s all about. But what kind of spurred your interest in trademark law? Or have you always just liked this stuff? You buy Coca-Cola years ago or something? [laughter]
0:01:20.2 JJ Lee: No, no, no. Actually I started out in bankruptcy.
0:01:23.2 Kurt Baker: You started out in bankruptcy?
0:01:24.6 JJ Lee: Yeah, I did.
0:01:24.8 Kurt Baker: Oh my goodness.
0:01:25.5 JJ Lee: So the story that I have is, I realized I had to go when I was doing an intake for one of my clients. And I was inputting that, and the client was sitting across the desk and, and as I was doing the inputting, the client was literally clipping his toenails on the other side of the desk as I was doing the input. [laughter] And I’m thinking, I’m in the wrong industry. Why am I here doing this while this guy is clipping his toenails? So I found another work. We did… A friend of mine brought me into that business and they did LLC incorporation filings and on the side…
0:02:00.6 Kurt Baker: Okay.
0:02:00.8 JJ Lee: They did trademark filings as well. But along the process, we didn’t do any legal work, we just kind of had to manage some of the… We just wanted to make sure everything was aligned. And what we found is that this company was also filing trademark applications. The thing about trademark applications is as soon as you file it, you do get a serial number. But the BUSTO, USPTO won’t examine it for about six months. And so about six months later after the applications were filed, then they had… They issue what is called an office action, which let’s the applicant know there’s something wrong with the application. All these applications were receiving office actions, but because we were not offering legal services there’s nothing we could do. And so we had to refer them to outside attorney or outside counsel. And then another colleague of mine, we decided, well, why not create a law firm to help these people.
0:02:49.2 Kurt Baker: Right.
0:02:49.6 JJ Lee: And that’s how our law firm got born. But it was really out of a necessity of it, I felt bad that we, that this company was just filing applications without further guidance and legal guidance along the way. Because it is a long process. It is legal documentations. It is a legal filing. So we wanted to make sure that as a law firm specializing in trademark law, we were addressing and helping these people out.
0:03:11.2 Kurt Baker: So you were, I mean, you’re a lawyer, so you’re always a law firm, you just weren’t doing that particular area of the law. Is that my understanding? Or, then you created the law. Is this a separate law firm that you created? Is that what happened?
0:03:20.3 JJ Lee: It’s a separate law firm that we created. But the company that I was working for, they were only hiring JD for the purposes of the JD background and experience…
0:03:28.4 Kurt Baker: Oh, but they were not a law firm?
0:03:30.2 JJ Lee: Correct. That’s exactly, right.
0:03:31.1 Kurt Baker: I gotcha. Okay. So then you broke off, have an actual law firm to do all of this. Which is fascinating to me. And I think the first time I really got involved in it when we started our nonprofit, we started using terms and, as we go out there and start to serve the community, so to speak, what we found out was that other people like to copy you, which is kind of like, to some degree, okay, but to a certain degree not okay, because they’re gonna start taking away your value. And we pretty early on realized that we needed to do it. And fortunately, we were referred by a friend to, so, they knew a trademark attorney ’cause of course, a nonprofit, especially at early stage nonprofit, doesn’t have a whole lot of money to work with. So we needed somebody pretty much almost pro bono, let’s say, it was pretty close. [chuckle]
0:04:17.8 Kurt Baker: So they helped us kind of protect our basic information. And now we’re so happy that we’ve been doing that over the years. ‘Cause every… We’re constantly adding, as we add programs that we actually feel like we’re gonna keep, you want to protect the name because somebody else is gonna come in and not model, but they’re gonna actually take it and just use it exactly. We’ve already had to send a few things out, telling people, “Hey, look, we own that. You can’t use that.” Which is a good feeling ’cause now you feel like, well, okay, at least we’ve slowed the tide against ourselves, so to speak, as far as protecting our own property and our intellectual property. Right. So.
0:04:53.4 JJ Lee: Well, that’s the best you can do. You can only slow the tide. I mean, people are gonna copy you anyways. And I give the example of street corners, you see people selling Nike shirts… [chuckle]
0:05:03.6 Kurt Baker: Right. Right.
0:05:04.6 JJ Lee: Etcetera. Nike’s not gonna go after that street corner necessarily, because it’s just not, it’s not profitable enough to do so. But if it is on a larger scale, the more successful you are, yeah, the more targets you have and people want to copy success.
0:05:16.6 Kurt Baker: Yeah. And I think part of ours was we didn’t want people confused because if somebody goes out using the same names, the name, same terminology, but their quality is not the same as ours. Sort of like the Nike thing, right. If you’re doing knockoffs, probably that shirt’s not as nice as the original you… If we’re doing programming or we’re providing services and somebody else goes out and has a name that’s the same, you’re like, “Wait a second, that’s not the same service.” And then it, then it dilutes our value, ’cause then they come back to us and say, “Well, we know somebody that did that.” But it wasn’t actually us and they didn’t like it. You’re like, “Wait a second. That wasn’t us.” So.
0:05:47.2 JJ Lee: And if the customers go to you to complain about a product or service that they went to another company. Yeah. That’s a problematic situation as well. For sure. Yeah.
0:05:55.3 Kurt Baker: Right, right, right. Okay. So what were some of the early things that you got involved in as far as the different kind of patents and trademarks? What are some, initially when you first started doing it… Because you said you were doing LLCs and companies, so was it mostly corporate stuff that you were doing? So what kind of things did you get involved in right away?
0:06:10.9 JJ Lee: Right. Trademark falls under the US Department of Commerce. So anything trademark related is always business related. And usually it’s whatever companies want to protect and register their trademark. So in this process, most of our work, probably 95% of their work, was really trying to help the application reach registration with the US Patent and Trademark Office. And I think you alluded to this, which is it’s not required to have a trademark registration, it just helps you protect that brand and that slogan or whatever you have, your trademark even better by having it registered with the US Patent and Trademark Office. So the term is prosecuting it. And so what we would do is if there’s an issue with an application, then we would help prosecute it to registration. Now, there are some cases, if somebody wanted to file a trademark application for Nike, Reebok, USP deal will take their money and you’ll pay the filing fees, but they’re gonna say, “No, you can’t, you won’t be able to register that trademark because it’s just likelihood of confusion with existing trademark registration.” So we kind of tell people that as well. We get clients that we tell, or prospects we get, we tell ’em, “Sorry, there’s nothing we can do. This is unfortunately a waste of money. You gotta start all over with something else.”
0:07:14.6 Kurt Baker: So let’s kind of walk through the process a little bit, ’cause I, I’m, I hope I get the name right. I remember we, TES, I think is the name of it, right? You go into the system and you can do a nice search. So if I say, “Oh, if we want to trademark… ” In our case, we actually trademarked it Air, A-I-R in our area. So.
0:07:29.2 JJ Lee: Oh, nice.
0:07:29.4 Kurt Baker: Just for us, even though there’s the Jordan Nike Air, we have Air for mental health. [chuckle] So we were able to get that registered. So, I tell my friends, I go, “You gotta be nice to me ’cause if you wanna breathe, we own the air, so you better be nice.” [laughter] And so.
0:07:44.6 JJ Lee: Right. And then you tell ’em you want gratuities for every time they say…
0:07:48.6 Kurt Baker: Yeah, exactly.
0:07:49.4 JJ Lee: You want air, right, [laughter]
0:07:50.6 Kurt Baker: That was a tough one. That took a while because it’s such a small, it’s such a generic word, so to speak. But there’s lots of things. So whenever we felt like there was something that was gonna be an ongoing piece of our organization, we said, “Hey, we’re using this all the time, and so we better go check it.” So that’s the first thing we did, I learned that you can go on that system. So kinda walk us through, if you would, when somebody might consider an item they might wanna trademark, and then what steps should they take to see if maybe it’s not already, who’s out there in the different categories. You wanna walk through that little bit of a process? ‘Cause it’s… I was fascinated to find out all these different registrations you can do, which I thought found very interesting.
0:08:28.6 JJ Lee: Yeah, absolutely. I’d be happy to go through the process. The TES system that you’re used to, USPTO did update it. So it’s no longer called TES anymore. There’s a new, brand new system. Arguably people don’t like it, but it is…
0:08:42.0 Kurt Baker: Oh okay. All that’s the one I’m used to. All right.
0:08:44.2 JJ Lee: It’s a new, yeah. So I would do that. I would do, I would go to the US Patent and Trademark Office website first. So uspto.gov. Go under the trademark section. And there is a trademark search. Now, it’s not gonna, it’s not a refined search and it’s not a comprehensive search, but it’s gonna give you a good idea of whether or not that name’s already taken. That’s really what we wanna start off with. From there, if you do, there’s ways to narrow the funnel even further, so you have a more precise search, that will take some time to play around with. But once you find a name that you think is relatively not, well not used or abandoned, that’s a good time to probably talk to a trademark attorney or an expert in the area because that’s not enough, just because the trademark’s not registered in your class is not significant. Trademark classifications, there’s about 45 of them.
0:09:32.8 JJ Lee: And so when you file an application, it always has to be associated with some sort of goods or services. There’s this wrong, I guess, conception that people think that once I file a trademark name, I own it for everything. And you don’t, you only register it for the specific goods or services that you’re offering. In your case here, you’re offering a radio broadcast program and that’s what we would file your trademark application under. But if you want to expand that to clothing and etcetera, or mugs then we could possibly do that. It really depends on how strong you wanna keep into, keep that trademark into the different categories. So once you determine the trademark, whether it’s cleared and what classifications that you want to file it under, that’s when, and then you also have to provide proof of use. So you don’t have to provide proof of use when you start the trademark application. But before you get it registered, a proof of use has to be, you have to provide proof of use. So in other words, USPTO will not grant your registration unless the trademark is actually in use in commerce.
0:10:28.8 JJ Lee: And that applies to everyone. So people, when people prospects come to me and say, “I wanna just reserve it,” there is no reserving. It’s not like a domain name registration where you could just hold onto it and park it. You actually have to have it in use in commerce before it is actually registrable. And the USPTO will wait for that. There is a time limit on how long you can wait, it’s three years after they ask for it. But you do have to provide proof of use. Some industries, I noted this in one of my videos, some industries will take a very long time. [chuckle] Royal Caribbean’s Icon of the Seas, ship building is not, [chuckle] it’s not a three year endeavor.
0:11:04.6 Kurt Baker: Takes a little while.
0:11:05.2 JJ Lee: It takes longer than, exactly. So they kind of ran out of their extension, but they refiled it again because they had no choice. It wasn’t in use in commerce. So by that time, when it was finally in use in commerce, they were able to provide the statement of use. [chuckle] And so that’s, you just be aware that you have to have something in use in commerce, if it’s not in use in commerce, or you don’t think it’s gonna be ready within three years, wait on it. It’s not a good time to file a trademark application until you have something ready.
0:11:33.6 Kurt Baker: Excellent. We’re gonna take a quick break. You’re listening to Master Your Finances. All right. You’re back to master your finances. I’m here with JJ Lee talking about a trademark. So you said it’s a, you wanted to wait if you didn’t think you’d be able to use the trademark right away. ‘Cause it has to be in use, which is something we kind of found out too, is ’cause we had like programming, we were thinking about putting together that we wanna make sure we protected. And I just remember it’s kind of a little bit of a dance. We’re still developing the program and we wanna protect it, but we haven’t actually started doing it yet ’cause it’s not done. So we would kind of, I forget exactly what we did, but they would off, they would always sell us, you gotta show us proof that you’re actually using.
0:12:13.4 Kurt Baker: So as soon as we actually implement it, we would give ’em all the brochures, the flyers, the dates, the whatever we were doing to prove, like when we actually implemented something. And then that would get added to the filings. I just, this is quite a little process. I don’t know, to do it correctly, I think. People can do this on their own. This is one of those things where I’m like, you don’t want to be your own lawyer, so to speak in this, because there are a lot of nuances on this one. And if you don’t word these applications right, because they’re gonna give you what you’re asking for. And if you don’t actually know what you need, do you wanna talk about that a little bit? Because I know that that was a big part of our process was actually defining which of those categories we needed to be in and why we had to be in each one. And do you wanna wanna maybe use an example or I can tell you what we did if you want, but…
0:13:02.2 JJ Lee: Yeah. Well let me start with example, well, let me explain the premise of it and then you could give your example. But the USPTO will not allow you to make material alterations to the word itself. So you have to be, or the word or drawing itself. So you have to be pretty sure. And we’ve seen applications prospects of drawings on napkins, and they submitting that, not realizing it has to match exactly like the drawing on the napkin. And of course, they’re, they didn’t complete the registration because it wasn’t the final result. They were just hoping that concept would be preserved. But the USPTO is very, very literal and very strict. So in your trademark application, if your words have a period or a space and it’s missing that in your specimens, that is an issue. The USPTO will not accept the specimen or the drawing if it doesn’t match together. And so that’s how literal they are. And in the past they used to be a little bit more, let’s say, compassionate with some of the applicants where they say, “Okay, it looks like you’re trying to combine couple of trademark applications together.” And this is, I’ve seen iterations of that, different fonts in a, an almost stacked version of it, “I want this, this, this,” but the USPTO nowadays is gonna say, “Well, your specimens doesn’t match the literal line by line items of your different variation.” And they’re gonna hold you to that.
0:14:23.2 JJ Lee: And that’s what, that’s a specimen they’re gonna be looking for. And when I talk to the prospects, I’m like, “Are you ever gonna have a product or service or goods where you’re gonna list all these three different fonts together?” And they’re gonna, they say, “Inevitably no.” And I said, “You can’t, we can’t do anything for you. We have to start all over because USPTO is gonna be very literal about how you file your application.” So you point, you touched on something that’s very important is that once you file that application, there’s very few things that you can alter to adjust anything. And so, I bet you, so you say you have an example of that?
0:14:54.2 Kurt Baker: Well, no, yeah, that one I was thinking about something different, the categories, but I do have an example of what you just said is when… I’ll use my example of AIR, when we registered AIR, it’s A-I-R. Okay. And it stands for Attitudes In Reverse, which is mental health’s like AIR, just because you don’t see it, doesn’t mean it doesn’t exist. So our name is Attitudes In Reverse. Our DBA is Attitudes In Reverse, but we all, we often consolidate it down to AIR. And one of the things we ran into is whenever we would consol, we would, somebody to write an article about us, they would write A period, dot period, R period. And we would have to constantly tell ’em, “No, no.”
0:15:29.7 Kurt Baker: And this is before we were filed, we were like, “We want to use AIR, no periods because we want to be able to protect that at some point.” Right. So this was just us thinking ahead a little bit. We were, we had a little, and so we, no, we did, that’s not how we want to be known. And I would say probably eight outta 10 times people would put the periods, ’cause technically that’s correct. It’s abbreviation for our thing. But we we’re like, “No, no, no, this is another DBA of our organization. Because that’s what most people tell us they, that’s what they call us.” And we eventually got it, of course. But it was a hard time. We had to go find all these samples and all these articles that people, like a large paper would write something about us, even though we would tell them the editor would come in and put the darn periods in there. The editorial staff would add ’em back in and we’d back drive us crazy. ‘Cause we’re like, “No, no, no. That’s not the term that we’re using.” [laughter]
0:16:18.9 JJ Lee: And that’s not your brand. That’s not…
0:16:20.2 Kurt Baker: That’s not the brand. Exactly.
0:16:21.3 JJ Lee: Representing your brand. That’s exactly right. But to go to the category part, you’re absolutely right. We’ve seen too many applications where people wanted to produce a clothing line, but there’s this one classification where it’s a printing service that offers printing on clothing, mugs and pens, etcetera. And people mistakenly think, okay, well I’m printing stuff on my clothes that that’s the category that I wanna file it on there, it’s a service class. Now that’s a service that’s appropriate for businesses like Vistaprint where they’re actually printing other people’s products, other people’s brands on different products. It’s not appropriate if you want to offer your own clothing line. So inevitably the USPTO was gonna say, where’s the service? We need proof that you’re offering this service. And when prospects come to us regarding that, I’ve only had one time out of probably 50 or 60 when I question them, they don’t, they’re like, “Yeah, we are doing printing services.” But everybody else, we had to tell ’em, ” Sorry, we can’t change the category. You have to start all over.”
0:17:21.8 Kurt Baker: Right, right. And I know in our case, and I, I’m not gonna get the categories right, but we would like, AIR would be like, “I don’t know the categories by heart.” But they, we, I think we ended up with either three or four different categories based on mental health education. I think we do, I dunno, some kind of thing like concerts and I don’t know, there were three or four. And I think AIR we got three out of the four. One we ended up dropping. Because it was too close to something else that was out there. And so we couldn’t get it. But that was fine with us because it was enough for us to need, to do what we needed to do, honestly. So.
0:17:57.8 JJ Lee: Well good job. [laughter]
0:17:58.4 Kurt Baker: You kind, well, you kind of go for everything, you think, or within your realm, right. And if you get 75, 80% of it, you can usually work around it. You’re not gonna infringe on the other person and that was the case in our case. So, oh, a website, that’s what it was, websites I think was one of them we got, ’cause our actual url is air.ngo. So we, that was part of what we could lock down because that was actually something we’ve been using for years. So, but anyway, yeah. So I mean that’s, I guess that’s the thing that the categories are really, really important. And it’s not, as you point out early in the program, it’s not like you just say, “I want this name or this… ” Because every, there’s different slices of the world out there and you can register in one area and somebody else could register the exact same name and be a totally different product or service. And you’re not gonna overlap ’cause you don’t do the same things. That’s kind of their point of view.
0:18:48.6 JJ Lee: The classic example of that is Delta Faucets, Delta Airlines…
0:18:52.4 Kurt Baker: There you go.
0:18:52.8 JJ Lee: And Delta Dental, that’s a classic example. ‘Cause Delta is in all three of them. Apple records, Apple computers, Apple employment.
0:19:00.2 Kurt Baker: Okay. [laughter] All right. So there you go.
0:19:03.4 JJ Lee: You have all three of those. Exactly. You can tell I’ve been doing this for a while, [laughter]
0:19:06.4 Kurt Baker: I guess you have. Absolutely. So if I’m a… I guess let’s get to the point where like somebody has a business, so what businesses should actually seriously think about? ‘Cause they have, isn’t there… And we were talking about this with before the show, the GM here was talking about how they, somebody was coming to them, but they had, and I forget what he called it, but basically common, I’ll call it common use. They’ve been using their information for years and years and years.
0:19:31.6 JJ Lee: Yeah. Yeah.
0:19:32.2 Kurt Baker: And then somebody else went in and tried and trademarked something, but in their case it’s not really the same anyway. So it doesn’t matter. But if I’ve been using a name or a term or whatever for years and years and years and years, but I never protected it for, as far as a trademark goes, do you wanna tell us what maybe inherent protections I might have and why you may or may not need to go through the registration process? If you’ve been kind of doing something for a long period of time using certain terms or certain names or whatever the case may be? You want to kind of walk us through that?
0:20:00.6 JJ Lee: Absolutely. Yeah, absolutely. So that’s referred to as common law trademark rights. And it’s like a barber or a restaurant, a cafe that’s been in business for a long time, maybe 20, 25 years or any amount of time. Well, let me back up a little bit. The trademark is yours once you start using it in Commerce. The question is, [chuckle] who had, who has greater rights? Is it you or the other person? Depends on the usage. And so if you’ve been using it for a long time, let’s, for example, this barber or this cafe, let’s say they’ve been in business for 20 years. There is, even if somebody registers that same trademark with a US Patent and Trademark Office and it’s been done after the first usage of your common law rights, they can’t tell you to stop using it.
0:20:41.2 JJ Lee: What, but what happens is there’s an imaginary kind of fence around your area of influence. So if you’ve been working in one state or with this one county and they have this trademark registered for the rest of the country, which is what a US patent trademark office, federal USPTO trademark registration offers, you can’t expand beyond that. That’s kind of where the… That’s where the conflicts and the friction happens is that if that barber decides, well I’m doing pretty well, let me go to this other state and open up. If there’s a trademark application that was filed and registered in between that time that you started yours and you opened up a new location, that’s where the friction will happen. But for the most part, even if somebody registers a trademark with the US Patent and Trademark Office, they cannot tell you to stop using it because you have prior use and you have priority in the US first usage dominates. That’s what wins the day, is whether or not you use the trademark first. And in common law rights where.
0:21:41.8 Kurt Baker: Right. So at minimum, take photo, take date stamped photos of what you’re doing, [chuckle] somehow document when you start using something, I guess is what I’m saying. For, because you have to go back and actually, and that’s part of what we had to do. We started these things we’ve been using for years. Okay. What, that was the first question they asked. Well, when was the first time you actually used it? It will say, “Well, we think it was… ” And I remember we used like the way back machine for some of our stuff. We’re like, yeah, I remember we published a flyer somewhere and we were searching and we were getting snapshots to go, okay, we can date it at least to March of whatever, 2013. There’s a picture of it online. That kind of stuff. I remember doing that. But I guess if somebody’s using something, even if it’s like your barbershop, at least document that you’ve been doing it. Because if you never, if you can never show that you ever used it in any way, shape or form, then you may have an issue proving when you started. If you have to have something, it’s always a good idea, I guess to keep some kind of record, even if it’s an informal record of what you’re using.
0:22:43.4 JJ Lee: Right. And to clarify that, I appreciate you brought up, it’s a great segue to this next thing, which is, just ’cause you filed a LLC, or corporation, or DBA, that’s not sufficient for trademark law in terms of first usage in commerce. It means nothing at all. The best example I could give you is a hotel chain that had a hotel file the application. They could not provide proof of use even though they built the whole building, wired it, plumbing, all of that until they could open the doors for the first client to come in. That’s the first use in commerce. Not the building, not the plumbing, not everything else. And people sometimes say, “Well, I go to trade shows and I do this.” Well, that’s not offering it to the public, you have to actually offer your services and goods. It has to be consumable by the public. And that’s when it’s actually, that’s the first date of use in commerce.
0:23:32.8 Kurt Baker: Awesome. We’re gonna take another quick break. You’re listening to Master Your Finances. All right, Kurt Baker. I’m here with JJ Lee. We’re talking about Trademark law, which is awesome because it’s kind of that, part of that value of your company and you kind of protect your brand and your name and things like that which we’ve used it a lot in our nonprofit. We’ve been very happy that we’ve done it ’cause we haven’t been able to protect ourselves ’cause we’re kind of cutting edge. Especially going out and doing things that are new and innovative and things like that. Eventually somebody’s gonna copy you and they may try to take those pieces that actually identify you. In that case there’s a problem. For you because now you, they could dilute your product or service and actually really cause you some serious financial harm.
0:24:15.3 Kurt Baker: So what… I guess one thing, let’s talk about a little bit. So what… So some people work like just in one state, so you got the federal. And then you’ve got international. So do you want to talk a little bit about the different levels if I’m a company that’s just working in one state, and if I’m a company that wants to make sure I can go across the country, or let’s say I decide I’m gonna go international, what kind of thing… How should I think about that as far as trademark and protecting the brand and things like that?
0:24:42.3 JJ Lee: Right. For trademark registration, especially if you’re, if you want to, you’re protecting it nationwide. So it benefits you, especially if you are planning on selling your services either outside of your geographic area or online. And that’s really an opportunity to protect your brand across the whole nation. If you’re very limited by physical presence, and you’re only at one location, it may not make sense to register a trademark unless, let’s say you’re a very popular barbershop, the example that we just gave, what if you’re selling clothing with your barber logo? That’s a great idea too. Especially if you’re expanding onto other services or goods, that’s still an opportunity for you to register a trademark. Because even though you are offering barbers the barber service in one location, doesn’t mean you can’t sell other paraphernalia or other products outside of your local localized area.
0:25:35.6 JJ Lee: And then you can also expand that across, to other countries as well. We, US is part of the Madeira protocol which reciprocates protection across many, many of the countries, almost all the countries out there, there’s some very limited countries that we can’t reciprocate with. But there’s opportunities that once your trademark’s registered or even before that you can actually extend your protection to other countries. The benefit of that, especially when you do it through the US WIPO system, is that a lot of these countries don’t require proof of use in those other countries, although some do. But there’s an opportunity to extend and expand your protection to either Europe, the UK, Japan, etcetera, if you want to extend your protection. Now, it’s not required and it does tend to get pretty expensive. So those countries that you’re actually planning on doing business in that it makes sense to extend it there.
0:26:29.2 Kurt Baker: Yeah. That’s great. Yeah. So you want to protect it. So what other situations you’ve seen where somebody maybe had a challenge. So I’ve got a trademark. So how do you handle when you start to see somebody infringing? Or how do you monitor to make sure somebody’s not even infringing? Those are kind of two separate but similar questions. So once I’m trademarked, next thing I wanna do is make sure nobody uses it. Because if they start using it, I wanna make sure that I come after them sooner rather than later. And give them a cease and desist, so to speak. So kind of walk us through that process where like, “Okay, one, how do I monitor to make sure that that’s not going on ’cause I’m doing my job, I’m not necessarily seeing the world all day long and paying attention to my trademark. And then if I do see something, when should I respond or how should I respond?” And things like that. What are your thoughts about that?
0:27:15.7 JJ Lee: So monitoring is a… It depends how much monitoring you want to do. You could be overly inclusive or be very selective. There are some monitoring, if you’re monitoring just the US Patent and Trademark Office, that’s probably the most efficient way, but doesn’t mean it’s comprehensive. The people filing a trademark application with the US Patent and Trademark Office, use, they do have a couple of barriers to having their trademark registered, which is, first of all, you have your trademark registered first. That’s the other benefit of that too. If your trademark’s already registered, somebody else tries to file an application very similar to yours, the USPTO will warn them and prevent that application from reaching registration unless they’re able to distinguish or differentiate them from the others. Now, it’s not 100% foolproof situation. So you do want a monitoring service, either a service from either a law firm. We are starting to offer that service probably at the end of May, beginning of June. Or you could just, a free way to do it, it’s just do Google alerts to just do…
0:28:15.6 Kurt Baker: That’s exactly what I do. [laughter]
0:28:17.2 JJ Lee: Yeah. Do you do that? Have you done that?
0:28:18.6 Kurt Baker: I get… Oh, I do it, I’ve done it daily. Google alerts, they come up, but it can be overwhelming to be honest with you.
0:28:23.2 JJ Lee: Yeah. It, it’s overwhelming though. It’s…
0:28:24.2 Kurt Baker: It could be overwhelming. [laughter]
0:28:24.3 JJ Lee: It’s very overwhelming. But that’s a cheap way to do it because you don’t have to pay anybody to do it. Google just alludes all these different instances of it. But you can also monitor the US Patent Trademark Office to put something up, to put your words in there and just monitor it every month. Because you do have opportunity to oppose the registration. And it does take about six to eight months before the USPTO examining attorney reviews it. So let’s say you forgot to do it one month, but at least in month two or whatever, you can actually look it up and see whether or not somebody else has filed something similar. You have an opportunity to file a letter of protest. That’s something that you can do early on before the USPTO examining attorney looks at it. What that does is alerts the commissioner, the director of the US Patent Trademark Office, they’ll send it to the examining attorney saying, “This anonymous letter has come from somebody else and they’re concerned about this trademark application because of these reasons.”
0:29:18.5 JJ Lee: And in your letter of protest, you would dictate all the reasons why it could cause likelihood of confusion. Now, the examining attorney could choose to ignore all of that and just go based on their own opinion. And, but they could also use that as well. So that’s one stage. The second stage is once it gets to publication for opposition, you have an opportunity to oppose your trademark registration. But going back to your trademark application, that’s the, also the other part that’s very helpful, which is, it’s vetted. It’s vetted not only by the USPTO, seeing whether or not your application is in conflict with somebody else’s, but then also a third party can choose to oppose it. And if they choose to oppose it, that’s a lot cheaper than going to litigation afterwards. And they, and upfront whether or not this is, you should stay away from this or this is relatively clear for usage.
0:30:04.2 Kurt Baker: Yeah. Fascinating. So I have a different question. Like if you trademark something, in our case, we trademarked Start The Conversation. Okay. And we actually had this happen to us where somebody else came in and argued that was too common of a term, even though we have a registered trademark for that, for mental health. And we were the first ones to ever use it for sure. Somebody else came in and incorporated that into a longer phrase and they actually won that argument. So my question would be, and this is what I said, I said, “Well, but that means they have to use the whole term, right?” If they say Start The Conversation A, B, C, D, let’s say, right. And they go, “Yep, that’s approved.” What if they go on and they just use our little slice instead of using the full name? I think that’s a violation, right? If they just use what we’ve already registered, they have to use the whole trademarked phrase. Correct. That, that’s my interpretation. That’s what would make sense to me.
0:31:00.7 JJ Lee: Right. So, I, I’m a little shy of getting into…
0:31:02.5 Kurt Baker: Don’t gimme legal advice. [laughter] Let’s term it this way, if you have a short phrase and somebody tax on a long phrase… [laughter]
0:31:09.4 JJ Lee: Yes. Yeah.
0:31:10.6 Kurt Baker: Don’t they have to use the whole thing if they’re, are you supposed to use a whole thing that’s trademarked, not half the car?
0:31:15.9 JJ Lee: Well, let’s go with that scenario. [laughter] So the question is…
0:31:21.2 Kurt Baker: I didn’t wanna get, I didn’t mean to entrap you. Sorry about that.
0:31:23.2 JJ Lee: No, no, no, you’re, don’t worry. [laughter] So the question is, have they abandoned the other trademark? And so in that instance, we would go and look to see whether or not there’s an abandonment by the trademark owner on whether or not they’re not using the whole phrase ’cause if they can… If they stop using it for three years or longer, that’s prima facie abandonment. In other words, they have to show that they’d be using the whole phrase because that’s what’s registered. If they don’t, then you can come in and try to cancel their mark based on abandonment.
0:31:55.6 Kurt Baker: And you bring up another point, ’cause and I’ll… I think I may have this, I may have the timing wrong, I believe it’s every five years. Don’t you have to go back and recertify otherwise, you’re, can I… Explain that because once you trademark, that’s not the end of it.
0:32:10.6 JJ Lee: Yeah. And so…
0:32:11.1 Kurt Baker: Walk through that, if you wouldn’t mind.
0:32:12.2 JJ Lee: Yes. So you do have to maintain your trademark registration. And let me start with what’s normal. Almost all countries, it’s 10 years. And the US is registration renewal every 10 years as well. However, they added a five year mark, because they’ve noticed there’s a lot of deadwood out there. People, the businesses don’t last for 10 years. And so there’s a lot of trademarks that have been registered for way too long. Maybe they went outta business in year one. You don’t wanna hold on and kind of lock up that trademark for nine years because they’re no longer using it. So they have a section eight filing, which is an affidavit stating, “I’m still using this mark in commerce. Here’s my proof.” And that’s between the fifth and sixth year anniversary of your trademark registration. So, yeah, so it’s hard to explain that succinctly with our clients. We just say, “You have a renewal after the five year, after the ten year, and after the ten year. It’s always, everything… “
0:33:08.0 Kurt Baker: I remember it was really simple. It wasn’t like, it was not a heavy lift, but it, I looked at it, I go, “Oh God, the government wants me to go do something.” I don’t remember it taking me very long once I started actually going through the process. That’s all I remember. But, [laughter]
0:33:22.4 JJ Lee: Yeah. That part…
0:33:23.2 Kurt Baker: It wasn’t too scary.
0:33:23.4 JJ Lee: As long as you’re using a, yeah, it’s not too scary, right. You’re, you’ve already had your trademark registered. You’ve already had it reviewed by USPTO examining attorney. It’s just now maintaining the usage of it, as long as you’re continually using it in commerce, you should be fine.
0:33:37.8 Kurt Baker: Okay. Awesome. Okay. So what new and interesting things are you seeing going on out there right now? Because we have a lot of AI stuff going on and a lot of, anything, ’cause I know they talk about, well can… If a computer is building this and you make it and you do, and, can you talk a little bit to the, this kind of next generation of “creativity”. Blended with some human aspect, I guess is what it’s supposed to happen. So what’s going on with that as far as trademarks go?
0:34:04.8 JJ Lee: So trademarks are not really affected by that. But I will give you a weird, weird, funny thing. So Amazon requires trademark registrations in order to access their top tier marketing platform. And in order to market to others through their top tier, you have to actually have a trademark register. So what we’re seeing, it’s the craziest thing. So you see a lot of foreign companies actually just typing random letters on the keyboards and trying to get those registered just for that privilege. They don’t care what it says…
0:34:35.8 Kurt Baker: Even though it has nothing to do with their business?
0:34:37.2 JJ Lee: It has nothing to do with their business. [laughter] They’re just trying to get that top tier. So that’s one of the funniest things I’ve seen. I’m like, the most common terms that are, the qurity, Q-U-R, the keyboard terms, they’re just typing random…
0:34:49.4 Kurt Baker: Oh, Cordy?
0:34:50.2 JJ Lee: Random. Yeah. They’re just typing random things in there just to get a trademark. And they know no American will [chuckle] care about whether these random letters are, they make sense or not, or pronounce even able, you’re able to pronounce them. But the whole point for them is just to get a trademark registered so they can access Amazon’s top tier platform. Now we’re also seeing this from Alibaba as, and Walmart as well. So you’re gonna see an increased number of trademark registrations because Amazon’s saying, “We’re not gonna deal with this. You go through this platform and have it registered. And then from there, as long as it’s registered, then we will consider you legit.”
0:35:27.3 Kurt Baker: Awesome. We’re gonna take another quick break. You’re listening to Master Your Finances. Welcome back. You’re listening to Master Your Finances. I’m here with JJ Lee and we’re talking about trademarks. Nationally is the most common one to protect it nationally, which is awesome. It gives you a lot of, I know it gives us a lot of peace of mind, so to speak, to know that once we have at least a little bit of protection, we can kind of slow that tide against us. What do you do like about all of the nefarious players out there, which seem to be growing and growing and growing and the people that are creating things that are not legit? So how do you you protect against those types of people?
0:36:05.6 JJ Lee: It is, it’s getting more and more in nefarious and it’s getting harder to just discriminate between whether something’s legit or not. The USPTO will typically send email notifications and nothing else. And that’s, that becomes problematic, especially when you file an application. It’s public information, so they have access to your email, your phone number, and your address. So just be aware of that. One way, the best way to avoid this is probably have an attorney or representative put their information on there, that way yours is not listed on there. So just note that if you have an email address, you will get email solicitations from them. Sometimes they spoof their numbers, their email address to say they’re from the USPTO. There are a lot of letters that come out. The USPTO, if you look it up on their website for trademark scams, there’s a whole list, I would say probably almost 100 different companies sending out letters specifically saying, “You have to file this, or your renewals coming up and you gotta pay us now for these sort of things.” So just be wary there are ways to look for your trademarks to make sure it’s legitimate, but even scammers are now calling our clients, [chuckle] because they have their phone numbers listed on there. They’re saying they have to pay extra money. It’s just, it’s just really, it makes it much more difficult to do business legitimately because everyone else is suspicious of you.
0:37:32.5 JJ Lee: Number one and number two, even if you are doing things legitimately, they are being picked off or pawned off by scammers who are taking advantage of people and their fears about whether or not they’re trademarks up for renewal or has been abandoned. So just, I… We post videos on this. We do have a weekly newsletter that we post. You can reach, you can go to TM, that’s TM for…
0:37:57.7 Kurt Baker: Trademark?
0:37:58.2 JJ Lee: Trademark, tmtelegram.com. And we offer weekly newsletters, trademark tips and tricks and news including scams like this. It’s just, the more informed you are and the more vigilant you are, the better… Our clients typically contact us saying it’s this legit. We’ll let them know whether or not it is.
0:38:17.2 Kurt Baker: Yeah. And I agree with that. I mean, scams in general are a big problem. I’m in the wealth management side of it, so it’s the, any… Everywhere there’s money involved, people are gonna kind of come after you and there’s value in this where they can get some money from you. And as you point out, you can go back to the source. So I’m a big believer in, if you’re not not 100% sure about an email, you just, you go outside of the email system and just go search the source yourself directly. However you’ve saved it or found it, call your attorney, don’t go back through the same system that solicited you, is what I always tell people is pretend it wasn’t there and say, “Okay, well this is interesting. It’s a trademark issue. Let me call JJ up and see what the heck the deal is.” And he’s like, “I dunno what you’re talking about. I we didn’t send you an email about that.” [laughter] So.
0:39:01.8 JJ Lee: We do so, they do text us saying, “This is you.” And we’re like, “No, that’s not, you can put it on.” But if they do call you or email you, or, especially calls, get their name, get their number, and then get their email address.
0:39:13.7 Kurt Baker: Oh, that’s awesome.
0:39:14.2 JJ Lee: If it’s legit, then they have no issues. USPTO will have no issues for you calling them back, if it’s not legit, hang up. [chuckle]
0:39:23.2 Kurt Baker: Yeah, that’s a good point. That’s a good point. Get their information, I’ll call you right back, I’m busy, I can’t talk right now. Any excuse you can come up with. That’s interesting. So do you ever have any things where like maybe there’s a dispute between what I’ve registered and maybe what somebody else is registering. So what do you do when you get involved in these little nuanced things? I remember, this may be off the topic once I remember, I think it was, this might be getting back to what we talked about before, but I think it was like a Coke, a place down in Texas or something that had some little shop, but then one of the big brands came down and they were like, they could keep it. Ultimately they kept it because they had been there like forever, for decades and decades and decades. And so are there any tips about what I should do to make sure it’s clear who I am as opposed to who somebody else is? So there is no confusion about brands and things like that. Any ideas about that?
0:40:16.2 JJ Lee: Just promote it more. I guess make it, make your public associate that phrase with you. That’s really the best you could do. You have to be proactive about keeping your brand protected in that regard. There was this one prospect that came to us, they used to own the word Hoodie as a registered trademark, [chuckle]
0:40:34.6 Kurt Baker: Oh, Hoodie. Wow. That’s awesome.
0:40:35.8 JJ Lee: Yeah, Hoodie. Yeah. In clothing too. And they allow, allowed it to be canceled because they forgot to renew it.
0:40:42.8 Kurt Baker: Oh my goodness.
0:40:43.1 JJ Lee: And they say, “Can I get it back?” I’m like, “It’s too late. There’s nothing I or anyone could do to get that word back for you.” But just be vigilant about your trademark. It’s, it is a frustrating endeavor, but the more, it is part of the price of success, I guess, that’s the best way I could put it. But there, you should put some time and budget in terms of enforcing your trademark because it’s gonna be, it’s a constant, it is constant work, but know that in advance before you go ahead and proceed with it. It’s not an invincible defense, but it is a great shield and sword in terms of helping you move forward. So there are… We’ve had situations where there are scammers that would copy domain names of their trademarks. And so, without those mistyping or dot net, or dot io, we can transfer that over. We’ve done that for our clients where if you have a registered trademark and they’re just trying to copy your domain address, we could… We can go through this mediation service to show them that they’re not using it in good faith and that they’re taking your brand and diluting it. And we can, if successful, we’ve transferred those over to our clients. So there’s, there are a lot of protections that you have. Just be aware that you have to be constantly vigilant and fight for them.
0:42:07.2 Kurt Baker: Yeah. You gotta touch on something a little bit, maybe we’ll talk about a little bit more, is that how do you prevent your brand from becoming a common term?
0:42:14.6 JJ Lee: Generic, yeah.
0:42:15.8 Kurt Baker: Generic term, like the Hoodie, right. ‘Cause hoodie was trademarked, I think, what, Kleenex as an example is tissue. I mean, there’s certain things that you, Xerox, Copier, I mean these things that started to becoming like generic because that’s what everybody referred to them as. So as a brand, how do I make sure that the world doesn’t start using it and it becomes a generic term. And then the argument’s like, “Well, that’s generic and I can use it however I want now, regardless of your trademark.”
0:42:44.0 JJ Lee: So it’s enforcement. It’s all about enforcement. And that’s what I’ve… I don’t know if this is a true story. I don’t know if it’s urban legend, but there, about Coca-Cola going to fast food drive-throughs and asking for a drink. And if they replied, do you want a Coke, you know how in some parts of the county they would refer to everything as Coke or pop, yeah, Coke, right. [laughter] And so they would enforce that if they, if the employees would repeat it and they weren’t selling Coke, they were selling Pepsi. And they say, “Do you want Coke with that?” Then they would then send them ceases and desist. So and it’s a matter of enforcing it, making sure that people are using in proper context, if they’re using it in public, you want a letter to go out to them, the publicist to go out to those either newspaper, magazines or any other publications saying, “You’re using this in a generic fashion. This is not, this is a registered trademark. We’re enforcing our trademark rights. And it, and we want you to use it properly. This is the generic term we want you to use the generic term and not refer to as Kleenex, for example.” It’s facial tissue. That’s what it is. [laughter]
0:43:50.8 Kurt Baker: Tissue. Yeah, exactly. [laughter]
0:43:51.8 JJ Lee: Yeah, exactly.
0:43:53.3 Kurt Baker: See, you had to think about it, didn’t you? [laughter]
0:43:55.4 JJ Lee: Yeah, I had to think about that too. The funny thing I associate people like, “Should I get a patent or trademark?” I’m like, “Well, trademarks you, if you make an association with your invention with that trademark, it gives you much more volume and much more help.” The best example I give is the Swiffer. You know what the Swiffer is? It cleans up dust.
0:44:14.6 Kurt Baker: Yes, I do.
0:44:15.5 JJ Lee: Etcetera. Yeah. And there are so many copycats that made something very similar. I just don’t know what number two is. [laughter] The number two brand of Swiffer, I have no idea. So that’s almost at that, the level of being generic. ‘Cause I don’t know what else to call it. [chuckle] It’s a dust picking up device.
0:44:31.3 Kurt Baker: Yeah. I mean, I don’t know what the name is, ’cause they, yeah, their Ads were so good and it described it so well what it did.
0:44:37.3 JJ Lee: And if I explain to you, yeah, I have a Swiffer, you know exactly what I’m talking about. So they’re on, they’re gonna have to start enforcing it or identify a generic term to call that. Otherwise people are just gonna refer to it.
0:44:48.9 Kurt Baker: Oh, interesting. Have to identify a generic term. That’s an interesting, I didn’t really think about that, so, as opposed to Coke, you have to call it a soda. You have to call it a pop. You have to call it a…
0:44:56.3 JJ Lee: Exactly.
0:45:00.8 Kurt Baker: Wow. So you touched on one, you wanna briefly describe the difference between a trademark and a patent because you touch on a little bit, ’cause they are different.
0:45:07.2 JJ Lee: They are different.
0:45:08.2 Kurt Baker: So explain the difference between the two.
0:45:10.5 JJ Lee: Yeah, happy to. Trademarks, it’s a brand protection, it’s a protection of your brand name, Coca-Cola, the symbol, the, even the bottle of the Coke bottle, it’s a trade dress. So if you see that silhouette from afar, you know it’s Coca-Cola. So trademark will always associate, it’s an identifier of goods and services. So if you look at a specific logo, name, word, even motion or smell, you know where it comes from. Whereas patent is a design for inventions. So your, the iPhone itself, anything kind of mechanical or anything that’s, a device or design that’s more in the patent realm and we don’t deal much with that. But that’s the difference. But you, but those go hand in hand with each other because you could create a device and you could create a certain process, just like the Swiffer is probably, there’s a patent to that. But doesn’t mean that people will identify it by the patent number. They identify it by the trademark.
0:46:07.4 Kurt Baker: Right. And like your iPhone example, I mean there’s the iPhone, the name, and then there’s the iPhone the actual mechanical device, so there’s… I’m sure there’s lots and lots of patents in there to protect the actual device itself. But we all know what the iPhone is so. [chuckle] So.
0:46:22.2 JJ Lee: Exactly. Exactly.
0:46:23.6 Kurt Baker: That’s awesome. So any final tips or tricks or things that we should be aware of out there in the trademark world? Advice to people out there that maybe should be thinking about trademarking things that maybe aren’t doing it and they might be a little more open than they thought?
0:46:37.8 JJ Lee: Well, I guess just evaluate your business, evaluate what terms and phrases that you use constantly that you don’t want somebody else to use or that you want protected. Are there certain phrases that you use very frequently or that people know you as? Would it be problematic if somebody in a different state used the same phrase as well or same term. And this doesn’t apply to just your name of the company, it applies to how we’re using a service or goods or how you associate in a certain service or goods. So I’d say kind of do an internal audit to see whether or not there are some things that you would not want somebody else to take or also use as well.
0:47:17.6 Kurt Baker: Excellent. Thank you. JJ has been very helpful. You’re listening to Master Your Finances.
0:00:03.4 Kurt Baker: Searching for guidance on brand protection. Meet JJ Lee, founder and trademark lawyer, law firm, PLLC in Ann Arbor, Michigan. With over 15 years of experience and more than 7,000 trademarks registered. JJ specializes in helping entrepreneurs safeguard their brands. Tune in for expert insights on trademark law and practical tips for securing your business’ identity. This is one of those things that I find interesting because it’s far more important than most business owners realize until sometimes it’s too late. That’s been my personal experience. [chuckle] So, I don’t know what your experience is, but it’s kind of one of those hidden values in a company, right?
0:00:50.7 JJ Lee: Well, yeah. People don’t go to attorneys until they need help, right, or something like that.
0:00:53.7 Kurt Baker: Right. It’s like too late. Like, Oh, shoot… [laughter]
0:00:56.9 JJ Lee: Exactly.
0:00:57.7 Kurt Baker: I’ve been using that for years and years, and now somebody else wants to use it. Now we’re gonna argue about who owns it. Right?
0:01:02.6 JJ Lee: Right, right. Exactly.
0:01:06.2 Kurt Baker: So how did you get into this? I mean, it’s kind of an interesting area. I find it fascinating once I find, kind of learned about it, what it’s all about. But what kind of spurred your interest in trademark law? Or have you always just liked this stuff? You buy Coca-Cola years ago or something? [laughter]
0:01:20.2 JJ Lee: No, no, no. Actually I started out in bankruptcy.
0:01:23.2 Kurt Baker: You started out in bankruptcy?
0:01:24.6 JJ Lee: Yeah, I did.
0:01:24.8 Kurt Baker: Oh my goodness.
0:01:25.5 JJ Lee: So the story that I have is, I realized I had to go when I was doing an intake for one of my clients. And I was inputting that, and the client was sitting across the desk and, and as I was doing the inputting, the client was literally clipping his toenails on the other side of the desk as I was doing the input. [laughter] And I’m thinking, I’m in the wrong industry. Why am I here doing this while this guy is clipping his toenails? So I found another work. We did… A friend of mine brought me into that business and they did LLC incorporation filings and on the side…
0:02:00.6 Kurt Baker: Okay.
0:02:00.8 JJ Lee: They did trademark filings as well. But along the process, we didn’t do any legal work, we just kind of had to manage some of the… We just wanted to make sure everything was aligned. And what we found is that this company was also filing trademark applications. The thing about trademark applications is as soon as you file it, you do get a serial number. But the BUSTO, USPTO won’t examine it for about six months. And so about six months later after the applications were filed, then they had… They issue what is called an office action, which let’s the applicant know there’s something wrong with the application. All these applications were receiving office actions, but because we were not offering legal services there’s nothing we could do. And so we had to refer them to outside attorney or outside counsel. And then another colleague of mine, we decided, well, why not create a law firm to help these people.
0:02:49.2 Kurt Baker: Right.
0:02:49.6 JJ Lee: And that’s how our law firm got born. But it was really out of a necessity of it, I felt bad that we, that this company was just filing applications without further guidance and legal guidance along the way. Because it is a long process. It is legal documentations. It is a legal filing. So we wanted to make sure that as a law firm specializing in trademark law, we were addressing and helping these people out.
0:03:11.2 Kurt Baker: So you were, I mean, you’re a lawyer, so you’re always a law firm, you just weren’t doing that particular area of the law. Is that my understanding? Or, then you created the law. Is this a separate law firm that you created? Is that what happened?
0:03:20.3 JJ Lee: It’s a separate law firm that we created. But the company that I was working for, they were only hiring JD for the purposes of the JD background and experience…
0:03:28.4 Kurt Baker: Oh, but they were not a law firm?
0:03:30.2 JJ Lee: Correct. That’s exactly, right.
0:03:31.1 Kurt Baker: I gotcha. Okay. So then you broke off, have an actual law firm to do all of this. Which is fascinating to me. And I think the first time I really got involved in it when we started our nonprofit, we started using terms and, as we go out there and start to serve the community, so to speak, what we found out was that other people like to copy you, which is kind of like, to some degree, okay, but to a certain degree not okay, because they’re gonna start taking away your value. And we pretty early on realized that we needed to do it. And fortunately, we were referred by a friend to, so, they knew a trademark attorney ’cause of course, a nonprofit, especially at early stage nonprofit, doesn’t have a whole lot of money to work with. So we needed somebody pretty much almost pro bono, let’s say, it was pretty close. [chuckle]
0:04:17.8 Kurt Baker: So they helped us kind of protect our basic information. And now we’re so happy that we’ve been doing that over the years. ‘Cause every… We’re constantly adding, as we add programs that we actually feel like we’re gonna keep, you want to protect the name because somebody else is gonna come in and not model, but they’re gonna actually take it and just use it exactly. We’ve already had to send a few things out, telling people, “Hey, look, we own that. You can’t use that.” Which is a good feeling ’cause now you feel like, well, okay, at least we’ve slowed the tide against ourselves, so to speak, as far as protecting our own property and our intellectual property. Right. So.
0:04:53.4 JJ Lee: Well, that’s the best you can do. You can only slow the tide. I mean, people are gonna copy you anyways. And I give the example of street corners, you see people selling Nike shirts… [chuckle]
0:05:03.6 Kurt Baker: Right. Right.
0:05:04.6 JJ Lee: Etcetera. Nike’s not gonna go after that street corner necessarily, because it’s just not, it’s not profitable enough to do so. But if it is on a larger scale, the more successful you are, yeah, the more targets you have and people want to copy success.
0:05:16.6 Kurt Baker: Yeah. And I think part of ours was we didn’t want people confused because if somebody goes out using the same names, the name, same terminology, but their quality is not the same as ours. Sort of like the Nike thing, right. If you’re doing knockoffs, probably that shirt’s not as nice as the original you… If we’re doing programming or we’re providing services and somebody else goes out and has a name that’s the same, you’re like, “Wait a second, that’s not the same service.” And then it, then it dilutes our value, ’cause then they come back to us and say, “Well, we know somebody that did that.” But it wasn’t actually us and they didn’t like it. You’re like, “Wait a second. That wasn’t us.” So.
0:05:47.2 JJ Lee: And if the customers go to you to complain about a product or service that they went to another company. Yeah. That’s a problematic situation as well. For sure. Yeah.
0:05:55.3 Kurt Baker: Right, right, right. Okay. So what were some of the early things that you got involved in as far as the different kind of patents and trademarks? What are some, initially when you first started doing it… Because you said you were doing LLCs and companies, so was it mostly corporate stuff that you were doing? So what kind of things did you get involved in right away?
0:06:10.9 JJ Lee: Right. Trademark falls under the US Department of Commerce. So anything trademark related is always business related. And usually it’s whatever companies want to protect and register their trademark. So in this process, most of our work, probably 95% of their work, was really trying to help the application reach registration with the US Patent and Trademark Office. And I think you alluded to this, which is it’s not required to have a trademark registration, it just helps you protect that brand and that slogan or whatever you have, your trademark even better by having it registered with the US Patent and Trademark Office. So the term is prosecuting it. And so what we would do is if there’s an issue with an application, then we would help prosecute it to registration. Now, there are some cases, if somebody wanted to file a trademark application for Nike, Reebok, USP deal will take their money and you’ll pay the filing fees, but they’re gonna say, “No, you can’t, you won’t be able to register that trademark because it’s just likelihood of confusion with existing trademark registration.” So we kind of tell people that as well. We get clients that we tell, or prospects we get, we tell ’em, “Sorry, there’s nothing we can do. This is unfortunately a waste of money. You gotta start all over with something else.”
0:07:14.6 Kurt Baker: So let’s kind of walk through the process a little bit, ’cause I, I’m, I hope I get the name right. I remember we, TES, I think is the name of it, right? You go into the system and you can do a nice search. So if I say, “Oh, if we want to trademark… ” In our case, we actually trademarked it Air, A-I-R in our area. So.
0:07:29.2 JJ Lee: Oh, nice.
0:07:29.4 Kurt Baker: Just for us, even though there’s the Jordan Nike Air, we have Air for mental health. [chuckle] So we were able to get that registered. So, I tell my friends, I go, “You gotta be nice to me ’cause if you wanna breathe, we own the air, so you better be nice.” [laughter] And so.
0:07:44.6 JJ Lee: Right. And then you tell ’em you want gratuities for every time they say…
0:07:48.6 Kurt Baker: Yeah, exactly.
0:07:49.4 JJ Lee: You want air, right, [laughter]
0:07:50.6 Kurt Baker: That was a tough one. That took a while because it’s such a small, it’s such a generic word, so to speak. But there’s lots of things. So whenever we felt like there was something that was gonna be an ongoing piece of our organization, we said, “Hey, we’re using this all the time, and so we better go check it.” So that’s the first thing we did, I learned that you can go on that system. So kinda walk us through, if you would, when somebody might consider an item they might wanna trademark, and then what steps should they take to see if maybe it’s not already, who’s out there in the different categories. You wanna walk through that little bit of a process? ‘Cause it’s… I was fascinated to find out all these different registrations you can do, which I thought found very interesting.
0:08:28.6 JJ Lee: Yeah, absolutely. I’d be happy to go through the process. The TES system that you’re used to, USPTO did update it. So it’s no longer called TES anymore. There’s a new, brand new system. Arguably people don’t like it, but it is…
0:08:42.0 Kurt Baker: Oh okay. All that’s the one I’m used to. All right.
0:08:44.2 JJ Lee: It’s a new, yeah. So I would do that. I would do, I would go to the US Patent and Trademark Office website first. So uspto.gov. Go under the trademark section. And there is a trademark search. Now, it’s not gonna, it’s not a refined search and it’s not a comprehensive search, but it’s gonna give you a good idea of whether or not that name’s already taken. That’s really what we wanna start off with. From there, if you do, there’s ways to narrow the funnel even further, so you have a more precise search, that will take some time to play around with. But once you find a name that you think is relatively not, well not used or abandoned, that’s a good time to probably talk to a trademark attorney or an expert in the area because that’s not enough, just because the trademark’s not registered in your class is not significant. Trademark classifications, there’s about 45 of them.
0:09:32.8 JJ Lee: And so when you file an application, it always has to be associated with some sort of goods or services. There’s this wrong, I guess, conception that people think that once I file a trademark name, I own it for everything. And you don’t, you only register it for the specific goods or services that you’re offering. In your case here, you’re offering a radio broadcast program and that’s what we would file your trademark application under. But if you want to expand that to clothing and etcetera, or mugs then we could possibly do that. It really depends on how strong you wanna keep into, keep that trademark into the different categories. So once you determine the trademark, whether it’s cleared and what classifications that you want to file it under, that’s when, and then you also have to provide proof of use. So you don’t have to provide proof of use when you start the trademark application. But before you get it registered, a proof of use has to be, you have to provide proof of use. So in other words, USPTO will not grant your registration unless the trademark is actually in use in commerce.
0:10:28.8 JJ Lee: And that applies to everyone. So people, when people prospects come to me and say, “I wanna just reserve it,” there is no reserving. It’s not like a domain name registration where you could just hold onto it and park it. You actually have to have it in use in commerce before it is actually registrable. And the USPTO will wait for that. There is a time limit on how long you can wait, it’s three years after they ask for it. But you do have to provide proof of use. Some industries, I noted this in one of my videos, some industries will take a very long time. [chuckle] Royal Caribbean’s Icon of the Seas, ship building is not, [chuckle] it’s not a three year endeavor.
0:11:04.6 Kurt Baker: Takes a little while.
0:11:05.2 JJ Lee: It takes longer than, exactly. So they kind of ran out of their extension, but they refiled it again because they had no choice. It wasn’t in use in commerce. So by that time, when it was finally in use in commerce, they were able to provide the statement of use. [chuckle] And so that’s, you just be aware that you have to have something in use in commerce, if it’s not in use in commerce, or you don’t think it’s gonna be ready within three years, wait on it. It’s not a good time to file a trademark application until you have something ready.
0:11:33.6 Kurt Baker: Excellent. We’re gonna take a quick break. You’re listening to Master Your Finances. All right. You’re back to master your finances. I’m here with JJ Lee talking about a trademark. So you said it’s a, you wanted to wait if you didn’t think you’d be able to use the trademark right away. ‘Cause it has to be in use, which is something we kind of found out too, is ’cause we had like programming, we were thinking about putting together that we wanna make sure we protected. And I just remember it’s kind of a little bit of a dance. We’re still developing the program and we wanna protect it, but we haven’t actually started doing it yet ’cause it’s not done. So we would kind of, I forget exactly what we did, but they would off, they would always sell us, you gotta show us proof that you’re actually using.
0:12:13.4 Kurt Baker: So as soon as we actually implement it, we would give ’em all the brochures, the flyers, the dates, the whatever we were doing to prove, like when we actually implemented something. And then that would get added to the filings. I just, this is quite a little process. I don’t know, to do it correctly, I think. People can do this on their own. This is one of those things where I’m like, you don’t want to be your own lawyer, so to speak in this, because there are a lot of nuances on this one. And if you don’t word these applications right, because they’re gonna give you what you’re asking for. And if you don’t actually know what you need, do you wanna talk about that a little bit? Because I know that that was a big part of our process was actually defining which of those categories we needed to be in and why we had to be in each one. And do you wanna wanna maybe use an example or I can tell you what we did if you want, but…
0:13:02.2 JJ Lee: Yeah. Well let me start with example, well, let me explain the premise of it and then you could give your example. But the USPTO will not allow you to make material alterations to the word itself. So you have to be, or the word or drawing itself. So you have to be pretty sure. And we’ve seen applications prospects of drawings on napkins, and they submitting that, not realizing it has to match exactly like the drawing on the napkin. And of course, they’re, they didn’t complete the registration because it wasn’t the final result. They were just hoping that concept would be preserved. But the USPTO is very, very literal and very strict. So in your trademark application, if your words have a period or a space and it’s missing that in your specimens, that is an issue. The USPTO will not accept the specimen or the drawing if it doesn’t match together. And so that’s how literal they are. And in the past they used to be a little bit more, let’s say, compassionate with some of the applicants where they say, “Okay, it looks like you’re trying to combine couple of trademark applications together.” And this is, I’ve seen iterations of that, different fonts in a, an almost stacked version of it, “I want this, this, this,” but the USPTO nowadays is gonna say, “Well, your specimens doesn’t match the literal line by line items of your different variation.” And they’re gonna hold you to that.
0:14:23.2 JJ Lee: And that’s what, that’s a specimen they’re gonna be looking for. And when I talk to the prospects, I’m like, “Are you ever gonna have a product or service or goods where you’re gonna list all these three different fonts together?” And they’re gonna, they say, “Inevitably no.” And I said, “You can’t, we can’t do anything for you. We have to start all over because USPTO is gonna be very literal about how you file your application.” So you point, you touched on something that’s very important is that once you file that application, there’s very few things that you can alter to adjust anything. And so, I bet you, so you say you have an example of that?
0:14:54.2 Kurt Baker: Well, no, yeah, that one I was thinking about something different, the categories, but I do have an example of what you just said is when… I’ll use my example of AIR, when we registered AIR, it’s A-I-R. Okay. And it stands for Attitudes In Reverse, which is mental health’s like AIR, just because you don’t see it, doesn’t mean it doesn’t exist. So our name is Attitudes In Reverse. Our DBA is Attitudes In Reverse, but we all, we often consolidate it down to AIR. And one of the things we ran into is whenever we would consol, we would, somebody to write an article about us, they would write A period, dot period, R period. And we would have to constantly tell ’em, “No, no.”
0:15:29.7 Kurt Baker: And this is before we were filed, we were like, “We want to use AIR, no periods because we want to be able to protect that at some point.” Right. So this was just us thinking ahead a little bit. We were, we had a little, and so we, no, we did, that’s not how we want to be known. And I would say probably eight outta 10 times people would put the periods, ’cause technically that’s correct. It’s abbreviation for our thing. But we we’re like, “No, no, no, this is another DBA of our organization. Because that’s what most people tell us they, that’s what they call us.” And we eventually got it, of course. But it was a hard time. We had to go find all these samples and all these articles that people, like a large paper would write something about us, even though we would tell them the editor would come in and put the darn periods in there. The editorial staff would add ’em back in and we’d back drive us crazy. ‘Cause we’re like, “No, no, no. That’s not the term that we’re using.” [laughter]
0:16:18.9 JJ Lee: And that’s not your brand. That’s not…
0:16:20.2 Kurt Baker: That’s not the brand. Exactly.
0:16:21.3 JJ Lee: Representing your brand. That’s exactly right. But to go to the category part, you’re absolutely right. We’ve seen too many applications where people wanted to produce a clothing line, but there’s this one classification where it’s a printing service that offers printing on clothing, mugs and pens, etcetera. And people mistakenly think, okay, well I’m printing stuff on my clothes that that’s the category that I wanna file it on there, it’s a service class. Now that’s a service that’s appropriate for businesses like Vistaprint where they’re actually printing other people’s products, other people’s brands on different products. It’s not appropriate if you want to offer your own clothing line. So inevitably the USPTO was gonna say, where’s the service? We need proof that you’re offering this service. And when prospects come to us regarding that, I’ve only had one time out of probably 50 or 60 when I question them, they don’t, they’re like, “Yeah, we are doing printing services.” But everybody else, we had to tell ’em, ” Sorry, we can’t change the category. You have to start all over.”
0:17:21.8 Kurt Baker: Right, right. And I know in our case, and I, I’m not gonna get the categories right, but we would like, AIR would be like, “I don’t know the categories by heart.” But they, we, I think we ended up with either three or four different categories based on mental health education. I think we do, I dunno, some kind of thing like concerts and I don’t know, there were three or four. And I think AIR we got three out of the four. One we ended up dropping. Because it was too close to something else that was out there. And so we couldn’t get it. But that was fine with us because it was enough for us to need, to do what we needed to do, honestly. So.
0:17:57.8 JJ Lee: Well good job. [laughter]
0:17:58.4 Kurt Baker: You kind, well, you kind of go for everything, you think, or within your realm, right. And if you get 75, 80% of it, you can usually work around it. You’re not gonna infringe on the other person and that was the case in our case. So, oh, a website, that’s what it was, websites I think was one of them we got, ’cause our actual url is air.ngo. So we, that was part of what we could lock down because that was actually something we’ve been using for years. So, but anyway, yeah. So I mean that’s, I guess that’s the thing that the categories are really, really important. And it’s not, as you point out early in the program, it’s not like you just say, “I want this name or this… ” Because every, there’s different slices of the world out there and you can register in one area and somebody else could register the exact same name and be a totally different product or service. And you’re not gonna overlap ’cause you don’t do the same things. That’s kind of their point of view.
0:18:48.6 JJ Lee: The classic example of that is Delta Faucets, Delta Airlines…
0:18:52.4 Kurt Baker: There you go.
0:18:52.8 JJ Lee: And Delta Dental, that’s a classic example. ‘Cause Delta is in all three of them. Apple records, Apple computers, Apple employment.
0:19:00.2 Kurt Baker: Okay. [laughter] All right. So there you go.
0:19:03.4 JJ Lee: You have all three of those. Exactly. You can tell I’ve been doing this for a while, [laughter]
0:19:06.4 Kurt Baker: I guess you have. Absolutely. So if I’m a… I guess let’s get to the point where like somebody has a business, so what businesses should actually seriously think about? ‘Cause they have, isn’t there… And we were talking about this with before the show, the GM here was talking about how they, somebody was coming to them, but they had, and I forget what he called it, but basically common, I’ll call it common use. They’ve been using their information for years and years and years.
0:19:31.6 JJ Lee: Yeah. Yeah.
0:19:32.2 Kurt Baker: And then somebody else went in and tried and trademarked something, but in their case it’s not really the same anyway. So it doesn’t matter. But if I’ve been using a name or a term or whatever for years and years and years and years, but I never protected it for, as far as a trademark goes, do you wanna tell us what maybe inherent protections I might have and why you may or may not need to go through the registration process? If you’ve been kind of doing something for a long period of time using certain terms or certain names or whatever the case may be? You want to kind of walk us through that?
0:20:00.6 JJ Lee: Absolutely. Yeah, absolutely. So that’s referred to as common law trademark rights. And it’s like a barber or a restaurant, a cafe that’s been in business for a long time, maybe 20, 25 years or any amount of time. Well, let me back up a little bit. The trademark is yours once you start using it in Commerce. The question is, [chuckle] who had, who has greater rights? Is it you or the other person? Depends on the usage. And so if you’ve been using it for a long time, let’s, for example, this barber or this cafe, let’s say they’ve been in business for 20 years. There is, even if somebody registers that same trademark with a US Patent and Trademark Office and it’s been done after the first usage of your common law rights, they can’t tell you to stop using it.
0:20:41.2 JJ Lee: What, but what happens is there’s an imaginary kind of fence around your area of influence. So if you’ve been working in one state or with this one county and they have this trademark registered for the rest of the country, which is what a US patent trademark office, federal USPTO trademark registration offers, you can’t expand beyond that. That’s kind of where the… That’s where the conflicts and the friction happens is that if that barber decides, well I’m doing pretty well, let me go to this other state and open up. If there’s a trademark application that was filed and registered in between that time that you started yours and you opened up a new location, that’s where the friction will happen. But for the most part, even if somebody registers a trademark with the US Patent and Trademark Office, they cannot tell you to stop using it because you have prior use and you have priority in the US first usage dominates. That’s what wins the day, is whether or not you use the trademark first. And in common law rights where.
0:21:41.8 Kurt Baker: Right. So at minimum, take photo, take date stamped photos of what you’re doing, [chuckle] somehow document when you start using something, I guess is what I’m saying. For, because you have to go back and actually, and that’s part of what we had to do. We started these things we’ve been using for years. Okay. What, that was the first question they asked. Well, when was the first time you actually used it? It will say, “Well, we think it was… ” And I remember we used like the way back machine for some of our stuff. We’re like, yeah, I remember we published a flyer somewhere and we were searching and we were getting snapshots to go, okay, we can date it at least to March of whatever, 2013. There’s a picture of it online. That kind of stuff. I remember doing that. But I guess if somebody’s using something, even if it’s like your barbershop, at least document that you’ve been doing it. Because if you never, if you can never show that you ever used it in any way, shape or form, then you may have an issue proving when you started. If you have to have something, it’s always a good idea, I guess to keep some kind of record, even if it’s an informal record of what you’re using.
0:22:43.4 JJ Lee: Right. And to clarify that, I appreciate you brought up, it’s a great segue to this next thing, which is, just ’cause you filed a LLC, or corporation, or DBA, that’s not sufficient for trademark law in terms of first usage in commerce. It means nothing at all. The best example I could give you is a hotel chain that had a hotel file the application. They could not provide proof of use even though they built the whole building, wired it, plumbing, all of that until they could open the doors for the first client to come in. That’s the first use in commerce. Not the building, not the plumbing, not everything else. And people sometimes say, “Well, I go to trade shows and I do this.” Well, that’s not offering it to the public, you have to actually offer your services and goods. It has to be consumable by the public. And that’s when it’s actually, that’s the first date of use in commerce.
0:23:32.8 Kurt Baker: Awesome. We’re gonna take another quick break. You’re listening to Master Your Finances. All right, Kurt Baker. I’m here with JJ Lee. We’re talking about Trademark law, which is awesome because it’s kind of that, part of that value of your company and you kind of protect your brand and your name and things like that which we’ve used it a lot in our nonprofit. We’ve been very happy that we’ve done it ’cause we haven’t been able to protect ourselves ’cause we’re kind of cutting edge. Especially going out and doing things that are new and innovative and things like that. Eventually somebody’s gonna copy you and they may try to take those pieces that actually identify you. In that case there’s a problem. For you because now you, they could dilute your product or service and actually really cause you some serious financial harm.
0:24:15.3 Kurt Baker: So what… I guess one thing, let’s talk about a little bit. So what… So some people work like just in one state, so you got the federal. And then you’ve got international. So do you want to talk a little bit about the different levels if I’m a company that’s just working in one state, and if I’m a company that wants to make sure I can go across the country, or let’s say I decide I’m gonna go international, what kind of thing… How should I think about that as far as trademark and protecting the brand and things like that?
0:24:42.3 JJ Lee: Right. For trademark registration, especially if you’re, if you want to, you’re protecting it nationwide. So it benefits you, especially if you are planning on selling your services either outside of your geographic area or online. And that’s really an opportunity to protect your brand across the whole nation. If you’re very limited by physical presence, and you’re only at one location, it may not make sense to register a trademark unless, let’s say you’re a very popular barbershop, the example that we just gave, what if you’re selling clothing with your barber logo? That’s a great idea too. Especially if you’re expanding onto other services or goods, that’s still an opportunity for you to register a trademark. Because even though you are offering barbers the barber service in one location, doesn’t mean you can’t sell other paraphernalia or other products outside of your local localized area.
0:25:35.6 JJ Lee: And then you can also expand that across, to other countries as well. We, US is part of the Madeira protocol which reciprocates protection across many, many of the countries, almost all the countries out there, there’s some very limited countries that we can’t reciprocate with. But there’s opportunities that once your trademark’s registered or even before that you can actually extend your protection to other countries. The benefit of that, especially when you do it through the US WIPO system, is that a lot of these countries don’t require proof of use in those other countries, although some do. But there’s an opportunity to extend and expand your protection to either Europe, the UK, Japan, etcetera, if you want to extend your protection. Now, it’s not required and it does tend to get pretty expensive. So those countries that you’re actually planning on doing business in that it makes sense to extend it there.
0:26:29.2 Kurt Baker: Yeah. That’s great. Yeah. So you want to protect it. So what other situations you’ve seen where somebody maybe had a challenge. So I’ve got a trademark. So how do you handle when you start to see somebody infringing? Or how do you monitor to make sure somebody’s not even infringing? Those are kind of two separate but similar questions. So once I’m trademarked, next thing I wanna do is make sure nobody uses it. Because if they start using it, I wanna make sure that I come after them sooner rather than later. And give them a cease and desist, so to speak. So kind of walk us through that process where like, “Okay, one, how do I monitor to make sure that that’s not going on ’cause I’m doing my job, I’m not necessarily seeing the world all day long and paying attention to my trademark. And then if I do see something, when should I respond or how should I respond?” And things like that. What are your thoughts about that?
0:27:15.7 JJ Lee: So monitoring is a… It depends how much monitoring you want to do. You could be overly inclusive or be very selective. There are some monitoring, if you’re monitoring just the US Patent and Trademark Office, that’s probably the most efficient way, but doesn’t mean it’s comprehensive. The people filing a trademark application with the US Patent and Trademark Office, use, they do have a couple of barriers to having their trademark registered, which is, first of all, you have your trademark registered first. That’s the other benefit of that too. If your trademark’s already registered, somebody else tries to file an application very similar to yours, the USPTO will warn them and prevent that application from reaching registration unless they’re able to distinguish or differentiate them from the others. Now, it’s not 100% foolproof situation. So you do want a monitoring service, either a service from either a law firm. We are starting to offer that service probably at the end of May, beginning of June. Or you could just, a free way to do it, it’s just do Google alerts to just do…
0:28:15.6 Kurt Baker: That’s exactly what I do. [laughter]
0:28:17.2 JJ Lee: Yeah. Do you do that? Have you done that?
0:28:18.6 Kurt Baker: I get… Oh, I do it, I’ve done it daily. Google alerts, they come up, but it can be overwhelming to be honest with you.
0:28:23.2 JJ Lee: Yeah. It, it’s overwhelming though. It’s…
0:28:24.2 Kurt Baker: It could be overwhelming. [laughter]
0:28:24.3 JJ Lee: It’s very overwhelming. But that’s a cheap way to do it because you don’t have to pay anybody to do it. Google just alludes all these different instances of it. But you can also monitor the US Patent Trademark Office to put something up, to put your words in there and just monitor it every month. Because you do have opportunity to oppose the registration. And it does take about six to eight months before the USPTO examining attorney reviews it. So let’s say you forgot to do it one month, but at least in month two or whatever, you can actually look it up and see whether or not somebody else has filed something similar. You have an opportunity to file a letter of protest. That’s something that you can do early on before the USPTO examining attorney looks at it. What that does is alerts the commissioner, the director of the US Patent Trademark Office, they’ll send it to the examining attorney saying, “This anonymous letter has come from somebody else and they’re concerned about this trademark application because of these reasons.”
0:29:18.5 JJ Lee: And in your letter of protest, you would dictate all the reasons why it could cause likelihood of confusion. Now, the examining attorney could choose to ignore all of that and just go based on their own opinion. And, but they could also use that as well. So that’s one stage. The second stage is once it gets to publication for opposition, you have an opportunity to oppose your trademark registration. But going back to your trademark application, that’s the, also the other part that’s very helpful, which is, it’s vetted. It’s vetted not only by the USPTO, seeing whether or not your application is in conflict with somebody else’s, but then also a third party can choose to oppose it. And if they choose to oppose it, that’s a lot cheaper than going to litigation afterwards. And they, and upfront whether or not this is, you should stay away from this or this is relatively clear for usage.
0:30:04.2 Kurt Baker: Yeah. Fascinating. So I have a different question. Like if you trademark something, in our case, we trademarked Start The Conversation. Okay. And we actually had this happen to us where somebody else came in and argued that was too common of a term, even though we have a registered trademark for that, for mental health. And we were the first ones to ever use it for sure. Somebody else came in and incorporated that into a longer phrase and they actually won that argument. So my question would be, and this is what I said, I said, “Well, but that means they have to use the whole term, right?” If they say Start The Conversation A, B, C, D, let’s say, right. And they go, “Yep, that’s approved.” What if they go on and they just use our little slice instead of using the full name? I think that’s a violation, right? If they just use what we’ve already registered, they have to use the whole trademarked phrase. Correct. That, that’s my interpretation. That’s what would make sense to me.
0:31:00.7 JJ Lee: Right. So, I, I’m a little shy of getting into…
0:31:02.5 Kurt Baker: Don’t gimme legal advice. [laughter] Let’s term it this way, if you have a short phrase and somebody tax on a long phrase… [laughter]
0:31:09.4 JJ Lee: Yes. Yeah.
0:31:10.6 Kurt Baker: Don’t they have to use the whole thing if they’re, are you supposed to use a whole thing that’s trademarked, not half the car?
0:31:15.9 JJ Lee: Well, let’s go with that scenario. [laughter] So the question is…
0:31:21.2 Kurt Baker: I didn’t wanna get, I didn’t mean to entrap you. Sorry about that.
0:31:23.2 JJ Lee: No, no, no, you’re, don’t worry. [laughter] So the question is, have they abandoned the other trademark? And so in that instance, we would go and look to see whether or not there’s an abandonment by the trademark owner on whether or not they’re not using the whole phrase ’cause if they can… If they stop using it for three years or longer, that’s prima facie abandonment. In other words, they have to show that they’d be using the whole phrase because that’s what’s registered. If they don’t, then you can come in and try to cancel their mark based on abandonment.
0:31:55.6 Kurt Baker: And you bring up another point, ’cause and I’ll… I think I may have this, I may have the timing wrong, I believe it’s every five years. Don’t you have to go back and recertify otherwise, you’re, can I… Explain that because once you trademark, that’s not the end of it.
0:32:10.6 JJ Lee: Yeah. And so…
0:32:11.1 Kurt Baker: Walk through that, if you wouldn’t mind.
0:32:12.2 JJ Lee: Yes. So you do have to maintain your trademark registration. And let me start with what’s normal. Almost all countries, it’s 10 years. And the US is registration renewal every 10 years as well. However, they added a five year mark, because they’ve noticed there’s a lot of deadwood out there. People, the businesses don’t last for 10 years. And so there’s a lot of trademarks that have been registered for way too long. Maybe they went outta business in year one. You don’t wanna hold on and kind of lock up that trademark for nine years because they’re no longer using it. So they have a section eight filing, which is an affidavit stating, “I’m still using this mark in commerce. Here’s my proof.” And that’s between the fifth and sixth year anniversary of your trademark registration. So, yeah, so it’s hard to explain that succinctly with our clients. We just say, “You have a renewal after the five year, after the ten year, and after the ten year. It’s always, everything… “
0:33:08.0 Kurt Baker: I remember it was really simple. It wasn’t like, it was not a heavy lift, but it, I looked at it, I go, “Oh God, the government wants me to go do something.” I don’t remember it taking me very long once I started actually going through the process. That’s all I remember. But, [laughter]
0:33:22.4 JJ Lee: Yeah. That part…
0:33:23.2 Kurt Baker: It wasn’t too scary.
0:33:23.4 JJ Lee: As long as you’re using a, yeah, it’s not too scary, right. You’re, you’ve already had your trademark registered. You’ve already had it reviewed by USPTO examining attorney. It’s just now maintaining the usage of it, as long as you’re continually using it in commerce, you should be fine.
0:33:37.8 Kurt Baker: Okay. Awesome. Okay. So what new and interesting things are you seeing going on out there right now? Because we have a lot of AI stuff going on and a lot of, anything, ’cause I know they talk about, well can… If a computer is building this and you make it and you do, and, can you talk a little bit to the, this kind of next generation of “creativity”. Blended with some human aspect, I guess is what it’s supposed to happen. So what’s going on with that as far as trademarks go?
0:34:04.8 JJ Lee: So trademarks are not really affected by that. But I will give you a weird, weird, funny thing. So Amazon requires trademark registrations in order to access their top tier marketing platform. And in order to market to others through their top tier, you have to actually have a trademark register. So what we’re seeing, it’s the craziest thing. So you see a lot of foreign companies actually just typing random letters on the keyboards and trying to get those registered just for that privilege. They don’t care what it says…
0:34:35.8 Kurt Baker: Even though it has nothing to do with their business?
0:34:37.2 JJ Lee: It has nothing to do with their business. [laughter] They’re just trying to get that top tier. So that’s one of the funniest things I’ve seen. I’m like, the most common terms that are, the qurity, Q-U-R, the keyboard terms, they’re just typing random…
0:34:49.4 Kurt Baker: Oh, Cordy?
0:34:50.2 JJ Lee: Random. Yeah. They’re just typing random things in there just to get a trademark. And they know no American will [chuckle] care about whether these random letters are, they make sense or not, or pronounce even able, you’re able to pronounce them. But the whole point for them is just to get a trademark registered so they can access Amazon’s top tier platform. Now we’re also seeing this from Alibaba as, and Walmart as well. So you’re gonna see an increased number of trademark registrations because Amazon’s saying, “We’re not gonna deal with this. You go through this platform and have it registered. And then from there, as long as it’s registered, then we will consider you legit.”
0:35:27.3 Kurt Baker: Awesome. We’re gonna take another quick break. You’re listening to Master Your Finances. Welcome back. You’re listening to Master Your Finances. I’m here with JJ Lee and we’re talking about trademarks. Nationally is the most common one to protect it nationally, which is awesome. It gives you a lot of, I know it gives us a lot of peace of mind, so to speak, to know that once we have at least a little bit of protection, we can kind of slow that tide against us. What do you do like about all of the nefarious players out there, which seem to be growing and growing and growing and the people that are creating things that are not legit? So how do you you protect against those types of people?
0:36:05.6 JJ Lee: It is, it’s getting more and more in nefarious and it’s getting harder to just discriminate between whether something’s legit or not. The USPTO will typically send email notifications and nothing else. And that’s, that becomes problematic, especially when you file an application. It’s public information, so they have access to your email, your phone number, and your address. So just be aware of that. One way, the best way to avoid this is probably have an attorney or representative put their information on there, that way yours is not listed on there. So just note that if you have an email address, you will get email solicitations from them. Sometimes they spoof their numbers, their email address to say they’re from the USPTO. There are a lot of letters that come out. The USPTO, if you look it up on their website for trademark scams, there’s a whole list, I would say probably almost 100 different companies sending out letters specifically saying, “You have to file this, or your renewals coming up and you gotta pay us now for these sort of things.” So just be wary there are ways to look for your trademarks to make sure it’s legitimate, but even scammers are now calling our clients, [chuckle] because they have their phone numbers listed on there. They’re saying they have to pay extra money. It’s just, it’s just really, it makes it much more difficult to do business legitimately because everyone else is suspicious of you.
0:37:32.5 JJ Lee: Number one and number two, even if you are doing things legitimately, they are being picked off or pawned off by scammers who are taking advantage of people and their fears about whether or not they’re trademarks up for renewal or has been abandoned. So just, I… We post videos on this. We do have a weekly newsletter that we post. You can reach, you can go to TM, that’s TM for…
0:37:57.7 Kurt Baker: Trademark?
0:37:58.2 JJ Lee: Trademark, tmtelegram.com. And we offer weekly newsletters, trademark tips and tricks and news including scams like this. It’s just, the more informed you are and the more vigilant you are, the better… Our clients typically contact us saying it’s this legit. We’ll let them know whether or not it is.
0:38:17.2 Kurt Baker: Yeah. And I agree with that. I mean, scams in general are a big problem. I’m in the wealth management side of it, so it’s the, any… Everywhere there’s money involved, people are gonna kind of come after you and there’s value in this where they can get some money from you. And as you point out, you can go back to the source. So I’m a big believer in, if you’re not not 100% sure about an email, you just, you go outside of the email system and just go search the source yourself directly. However you’ve saved it or found it, call your attorney, don’t go back through the same system that solicited you, is what I always tell people is pretend it wasn’t there and say, “Okay, well this is interesting. It’s a trademark issue. Let me call JJ up and see what the heck the deal is.” And he’s like, “I dunno what you’re talking about. I we didn’t send you an email about that.” [laughter] So.
0:39:01.8 JJ Lee: We do so, they do text us saying, “This is you.” And we’re like, “No, that’s not, you can put it on.” But if they do call you or email you, or, especially calls, get their name, get their number, and then get their email address.
0:39:13.7 Kurt Baker: Oh, that’s awesome.
0:39:14.2 JJ Lee: If it’s legit, then they have no issues. USPTO will have no issues for you calling them back, if it’s not legit, hang up. [chuckle]
0:39:23.2 Kurt Baker: Yeah, that’s a good point. That’s a good point. Get their information, I’ll call you right back, I’m busy, I can’t talk right now. Any excuse you can come up with. That’s interesting. So do you ever have any things where like maybe there’s a dispute between what I’ve registered and maybe what somebody else is registering. So what do you do when you get involved in these little nuanced things? I remember, this may be off the topic once I remember, I think it was, this might be getting back to what we talked about before, but I think it was like a Coke, a place down in Texas or something that had some little shop, but then one of the big brands came down and they were like, they could keep it. Ultimately they kept it because they had been there like forever, for decades and decades and decades. And so are there any tips about what I should do to make sure it’s clear who I am as opposed to who somebody else is? So there is no confusion about brands and things like that. Any ideas about that?
0:40:16.2 JJ Lee: Just promote it more. I guess make it, make your public associate that phrase with you. That’s really the best you could do. You have to be proactive about keeping your brand protected in that regard. There was this one prospect that came to us, they used to own the word Hoodie as a registered trademark, [chuckle]
0:40:34.6 Kurt Baker: Oh, Hoodie. Wow. That’s awesome.
0:40:35.8 JJ Lee: Yeah, Hoodie. Yeah. In clothing too. And they allow, allowed it to be canceled because they forgot to renew it.
0:40:42.8 Kurt Baker: Oh my goodness.
0:40:43.1 JJ Lee: And they say, “Can I get it back?” I’m like, “It’s too late. There’s nothing I or anyone could do to get that word back for you.” But just be vigilant about your trademark. It’s, it is a frustrating endeavor, but the more, it is part of the price of success, I guess, that’s the best way I could put it. But there, you should put some time and budget in terms of enforcing your trademark because it’s gonna be, it’s a constant, it is constant work, but know that in advance before you go ahead and proceed with it. It’s not an invincible defense, but it is a great shield and sword in terms of helping you move forward. So there are… We’ve had situations where there are scammers that would copy domain names of their trademarks. And so, without those mistyping or dot net, or dot io, we can transfer that over. We’ve done that for our clients where if you have a registered trademark and they’re just trying to copy your domain address, we could… We can go through this mediation service to show them that they’re not using it in good faith and that they’re taking your brand and diluting it. And we can, if successful, we’ve transferred those over to our clients. So there’s, there are a lot of protections that you have. Just be aware that you have to be constantly vigilant and fight for them.
0:42:07.2 Kurt Baker: Yeah. You gotta touch on something a little bit, maybe we’ll talk about a little bit more, is that how do you prevent your brand from becoming a common term?
0:42:14.6 JJ Lee: Generic, yeah.
0:42:15.8 Kurt Baker: Generic term, like the Hoodie, right. ‘Cause hoodie was trademarked, I think, what, Kleenex as an example is tissue. I mean, there’s certain things that you, Xerox, Copier, I mean these things that started to becoming like generic because that’s what everybody referred to them as. So as a brand, how do I make sure that the world doesn’t start using it and it becomes a generic term. And then the argument’s like, “Well, that’s generic and I can use it however I want now, regardless of your trademark.”
0:42:44.0 JJ Lee: So it’s enforcement. It’s all about enforcement. And that’s what I’ve… I don’t know if this is a true story. I don’t know if it’s urban legend, but there, about Coca-Cola going to fast food drive-throughs and asking for a drink. And if they replied, do you want a Coke, you know how in some parts of the county they would refer to everything as Coke or pop, yeah, Coke, right. [laughter] And so they would enforce that if they, if the employees would repeat it and they weren’t selling Coke, they were selling Pepsi. And they say, “Do you want Coke with that?” Then they would then send them ceases and desist. So and it’s a matter of enforcing it, making sure that people are using in proper context, if they’re using it in public, you want a letter to go out to them, the publicist to go out to those either newspaper, magazines or any other publications saying, “You’re using this in a generic fashion. This is not, this is a registered trademark. We’re enforcing our trademark rights. And it, and we want you to use it properly. This is the generic term we want you to use the generic term and not refer to as Kleenex, for example.” It’s facial tissue. That’s what it is. [laughter]
0:43:50.8 Kurt Baker: Tissue. Yeah, exactly. [laughter]
0:43:51.8 JJ Lee: Yeah, exactly.
0:43:53.3 Kurt Baker: See, you had to think about it, didn’t you? [laughter]
0:43:55.4 JJ Lee: Yeah, I had to think about that too. The funny thing I associate people like, “Should I get a patent or trademark?” I’m like, “Well, trademarks you, if you make an association with your invention with that trademark, it gives you much more volume and much more help.” The best example I give is the Swiffer. You know what the Swiffer is? It cleans up dust.
0:44:14.6 Kurt Baker: Yes, I do.
0:44:15.5 JJ Lee: Etcetera. Yeah. And there are so many copycats that made something very similar. I just don’t know what number two is. [laughter] The number two brand of Swiffer, I have no idea. So that’s almost at that, the level of being generic. ‘Cause I don’t know what else to call it. [chuckle] It’s a dust picking up device.
0:44:31.3 Kurt Baker: Yeah. I mean, I don’t know what the name is, ’cause they, yeah, their Ads were so good and it described it so well what it did.
0:44:37.3 JJ Lee: And if I explain to you, yeah, I have a Swiffer, you know exactly what I’m talking about. So they’re on, they’re gonna have to start enforcing it or identify a generic term to call that. Otherwise people are just gonna refer to it.
0:44:48.9 Kurt Baker: Oh, interesting. Have to identify a generic term. That’s an interesting, I didn’t really think about that, so, as opposed to Coke, you have to call it a soda. You have to call it a pop. You have to call it a…
0:44:56.3 JJ Lee: Exactly.
0:45:00.8 Kurt Baker: Wow. So you touched on one, you wanna briefly describe the difference between a trademark and a patent because you touch on a little bit, ’cause they are different.
0:45:07.2 JJ Lee: They are different.
0:45:08.2 Kurt Baker: So explain the difference between the two.
0:45:10.5 JJ Lee: Yeah, happy to. Trademarks, it’s a brand protection, it’s a protection of your brand name, Coca-Cola, the symbol, the, even the bottle of the Coke bottle, it’s a trade dress. So if you see that silhouette from afar, you know it’s Coca-Cola. So trademark will always associate, it’s an identifier of goods and services. So if you look at a specific logo, name, word, even motion or smell, you know where it comes from. Whereas patent is a design for inventions. So your, the iPhone itself, anything kind of mechanical or anything that’s, a device or design that’s more in the patent realm and we don’t deal much with that. But that’s the difference. But you, but those go hand in hand with each other because you could create a device and you could create a certain process, just like the Swiffer is probably, there’s a patent to that. But doesn’t mean that people will identify it by the patent number. They identify it by the trademark.
0:46:07.4 Kurt Baker: Right. And like your iPhone example, I mean there’s the iPhone, the name, and then there’s the iPhone the actual mechanical device, so there’s… I’m sure there’s lots and lots of patents in there to protect the actual device itself. But we all know what the iPhone is so. [chuckle] So.
0:46:22.2 JJ Lee: Exactly. Exactly.
0:46:23.6 Kurt Baker: That’s awesome. So any final tips or tricks or things that we should be aware of out there in the trademark world? Advice to people out there that maybe should be thinking about trademarking things that maybe aren’t doing it and they might be a little more open than they thought?
0:46:37.8 JJ Lee: Well, I guess just evaluate your business, evaluate what terms and phrases that you use constantly that you don’t want somebody else to use or that you want protected. Are there certain phrases that you use very frequently or that people know you as? Would it be problematic if somebody in a different state used the same phrase as well or same term. And this doesn’t apply to just your name of the company, it applies to how we’re using a service or goods or how you associate in a certain service or goods. So I’d say kind of do an internal audit to see whether or not there are some things that you would not want somebody else to take or also use as well.
0:47:17.6 Kurt Baker: Excellent. Thank you. JJ has been very helpful. You’re listening to Master Your Finances.
