[0:01] Welcome to inherently distinctive Podcast.
[0:05] Hello everyone, welcome back to inherently distinctive with Attorney Mark Goodman.
[0:10] Mark's a Nevada-based intellectual property attorney who helps entrepreneurs, startups,
[0:15] and business owners protect the brands and ideas that drive their companies forward.
[0:20] I'm Sean O'Connor and today Mark and I are talking about trademark filing mistakes
[0:25] that can quietly create expensive legal and business problems
[0:29] long after the application is submitted.
[0:32] So this is a thing that comes back to bite people.
[0:36] It sounds like, how are you?
[0:38] Oh, doing pretty good. Good to be back on.
[0:41] Yeah, yeah. I mean, there's always more to talk about on this topic, which, you know,
[0:46] I've worked in branding and all naming all this stuff a lot in a parallel life.
[0:53] And I'm wondering what are some of the most common sort of trademark filing mistakes
[1:00] that you're seeing potential clients make?
[1:03] You know, like right out of the gate.
[1:05] Yeah, so a few things come to mind.
[1:07] I just recently had a client signed up a new client where prior this business had been around for quite a long time.
[1:15] And at one point, they they filed for a certain trademark through some,
[1:20] I don't know, attorney or outfit or something, somebody from Pakistan that could do it really cheap, right?
[1:28] And then they filed this thing and it kind of got tied up.
[1:33] And then I wouldn't looked it up what's going on here.
[1:35] So a couple of things happened.
[1:37] First thing, which is most egregious, and this hopefully isn't going to happen too often.
[1:43] It had been, that case was under administrative review because it was listed under the name of some other lawyer
[1:52] that had apparently been like impersonated or something like that.
[1:55] So that's a problem, right?
[1:56] But that's not super common that you'll see a lot.
[1:59] You're seeing thing that sometimes.
[2:02] But some of the general problems with the filing, right?
[2:06] One issue was that this company had been business a long time.
[2:12] But the filing was done on an intent to use basis, which is just completely wrong, right?
[2:17] So you're not taking advantage of your earlier use.
[2:22] And you know, I mean, it was just like, what are you not even paying attention to what you're doing in your filing?
[2:27] You seem like, right?
[2:29] Another problem that I saw is that you, and this isn't necessarily a problem,
[2:33] but it's something that probably wasn't discussed or thought through,
[2:37] is that you had a logo together with the name, right?
[2:42] Where usually I'd recommend let's have the logo as its own separate mark,
[2:49] and then let's have a name as its own separate mark.
[2:53] In some cases, it's okay to have both together,
[2:56] but it's something you'd want to strategically discuss, I think, and I don't think that happened, right?
[3:03] And also, another thing that I don't think was discussed is that the mark was in color,
[3:12] which can be the right decision, but probably also wasn't discussed, right?
[3:19] When you file a stylized mark, you have to decide whether you're claiming color is a feature of the mark, or not, right?
[3:29] And if you don't, then you need to submit like a black and white image,
[3:34] rather than submitting a color image.
[3:36] So how do we handle this?
[3:38] Well, you can, first of all, you can get both if you want, right?
[3:42] We can file it with the color, file it with black and white.
[3:45] That would give you the strongest overall protection.
[3:48] Although I will say that for my kind of entrepreneurs and early stage companies,
[3:56] that's a little bit overkill in terms of for most of them.
[4:02] And so what I usually do is my default is to you do the black and white,
[4:07] because then you're covering more ground, I think, right?
[4:10] Because it would cover any type of color scheme, right?
[4:15] But there's an exception, I think, if we really think that the color scheme is very, very important to the branding, right?
[4:23] Like fundamental, like we are definitely using these colors.
[4:26] And we think that the customers are going to recognize these colors.
[4:30] The color mark might be more important than the black and white mark for your business.
[4:35] And I often think of this, imagine intellectual property in many ways
[4:39] as like an imaginary version of real estate.
[4:42] So imagine two pieces of real estate with kind of funny shapes.
[4:47] But one of them is superimposed on the other, right?
[4:51] And so when you think about the color mark and the black and white mark,
[4:57] well for most intents and purposes, they're going to cover the same thing.
[5:02] But there will be instances where you'll have a stronger case against an infringer
[5:06] if you have the black and white mark.
[5:08] But you'll have a little bit weaker if you applied with claiming color, right?
[5:13] And that example would be, let's say they've totally changed the color scheme,
[5:16] but man, that logo designs pretty close, right?
[5:19] Because there's a lot of judgment calls here.
[5:21] And the flip side can also be true.
[5:23] Let's say the infringer has changed the logo somewhat, arguably different enough,
[5:31] but borderline.
[5:33] But their color scheme is dead on what you're using.
[5:37] In that case, you are in a stronger position with your color mark, right?
[5:43] So a lot of this, I can't fully say it was in the state,
[5:46] but it's just something we're not even considering, right?
[5:49] We've got to make strategic mindful decisions when we're going through this filing.
[5:54] And the other one we just talked about in the last podcast,
[5:57] which is you've got to make sure that the branding that you apply for matches up
[6:01] with what your actual branding is.
[6:04] We're talking about that last podcast, so we can connect to that.
[6:07] Well, I think people hear about filings in offices.
[6:12] It sounds like a perfunctory administrative submitting of paperwork,
[6:18] kind of a process.
[6:20] And what I'm hearing you describe, there's a little bit more strategy involved here,
[6:26] because depending on the business you're going into,
[6:29] and the ways you're going to use the mark and the color and the trade dress,
[6:32] all of these different applications of the brand marker trademark,
[6:38] like you can't know it all in advance,
[6:42] but to have some semblance of an understanding,
[6:44] I think, wouldn't that inform the direction or the recommendation you're going to make
[6:49] in terms of what should be filed and secured?
[6:52] Yeah, trademark and really any intellectual property,
[6:55] in almost all cases, it's about helping people make more money, right?
[7:01] And so you have to integrate the intellectual property strategy
[7:05] with your business strategy, right?
[7:08] And yes, even though trademark seems very form-based, right?
[7:12] Because we do have an online filing system.
[7:15] You can file it by setting up a log in with the United States Patent of Trademark Office
[7:20] and putting in the information and documents in the right spots,
[7:24] and you'll get an application going.
[7:27] But there is a little more...
[7:29] I would say this, there's...
[7:32] It's definitely when people are trying it on their own,
[7:35] it's definitely not as bad as going into litigation on your own,
[7:39] or something like that, but it's definitely not the same thing
[7:43] as just even compared to, let's say, filing your own corporation
[7:47] or copyright would be easier.
[7:49] There are some real decisions here that you need to make
[7:53] that have legal consequences,
[7:55] and that can get you tied up a noth later if you make the wrong decisions, too.
[7:59] Well, I mean, one thing I've heard about is,
[8:04] you got to choose between or among goods and services in an application, right?
[8:12] And if you get that wrong or if you are too narrow or too broad,
[8:17] what are the revifications there?
[8:20] So that's another good one to bring out,
[8:23] because that can be one of the more challenging parts
[8:26] of the trademark application is really getting this description right.
[8:29] And it's interesting, there's two ways to do it,
[8:32] which is so you have a fundamental decision at the beginning.
[8:35] You can file using...
[8:37] They call it the plus form at the trademark office,
[8:41] which is a slightly cheaper filing fee.
[8:44] It's not really, it's like a hundred bucks difference or fifty bucks difference, whatever.
[8:47] But it's...
[8:50] Then when you use that form, you have to select
[8:54] the pre-approved goods and services descriptions that the trademark office has,
[8:59] in there what they call a trademark ID manual,
[9:03] which is available online.
[9:05] You can search it up and everything, it's pretty slick.
[9:08] Or you can file a regular application,
[9:11] paying like hundred bucks more,
[9:14] and then you can custom draft your goods and services description.
[9:18] So here's the pros and cons, right?
[9:21] Using the trademark ID manual, the advantage to that is that if you select one of those things,
[9:26] you are not going to get some rejection based on,
[9:31] oh, this is too indefinite, doesn't describe things, right?
[9:35] Because it's pre-approved, right?
[9:37] Yeah, exactly.
[9:38] But the negative thing is,
[9:41] do any of those pre-approved selections fit correctly with what you're selling in the market?
[9:47] And the answer is, sometimes yes, and sometimes no.
[9:50] So it's something you have to think about.
[9:52] Incidentally, it's funny because this exact thing is why,
[9:57] when I actually quote a fee for a trademark application service,
[10:02] I just, I always quote it together,
[10:05] I say it's going to be X including the trademark office filing fees, right?
[10:10] And the reason why I do that is I just don't have to chase someone for,
[10:13] oh, well here's a $50 refund because we could use the plus form.
[10:17] Here's only $50 more administratively that's too much of a hassle.
[10:21] So I just lump it typically together for that reason.
[10:25] You know, you had mentioned earlier showing the name in commerce,
[10:32] and I'm not sure people know this, right?
[10:35] But you know, you're starting a business and suddenly like,
[10:37] oh, I'm in a file for a trademark.
[10:39] But you know, what happens?
[10:40] What tends to happen if someone files for a trademark before they're properly using the name in commerce?
[10:47] Is that an issue?
[10:48] Oh, another good point with the filing system, right?
[10:52] So there are two types, two main types of trademark applications, right?
[10:56] One is a, what we call an intent to use application.
[11:00] So if you, let's say you're not using the market commerce yet,
[11:03] but you intend to do so in the somewhat near future,
[11:06] we can just file for the trademark,
[11:11] and then the office will evaluate it against any potential conflicting marks
[11:15] as well as against any other potential legal issues like being descriptive
[11:20] or something like that initially.
[11:22] And then if it clears, then they'll issue us,
[11:25] oh, it's called a notice of allowance, right?
[11:28] And that sets that basically says, hey, you cleared the initial hurdle,
[11:32] but now you need to show me that you're using this market commerce, right?
[11:36] And you have a six month period of do so.
[11:39] Incidentally, you can pay for some extensions six months,
[11:42] six months, six months, you actually have like two and a half years
[11:45] if you're going to launch this thing.
[11:47] You have some time, as long as you keep up with your extensions,
[11:50] in order to do that.
[11:51] So that's interesting.
[11:52] So I'm, I'm, I come to you.
[11:54] I'm like, hey, man, I'm, I'm launching this business,
[11:57] Sean's window washing as we talked about before.
[12:00] I'm really stoked about this thing.
[12:02] I've got a, I got a trademark, I want a trademark and I got a great logo.
[12:06] I'm not in business yet.
[12:08] Still raising capital.
[12:11] We can submit that.
[12:13] And that in a sense, I get an early warning.
[12:16] It's like, hey, you know what?
[12:17] There's another Sean's window washing across the county here.
[12:21] And so I'm like, oh, good to know,
[12:24] rather no sooner than later, right?
[12:26] I mean, is it?
[12:27] Yes.
[12:28] And it's a good system there for people that are starting out
[12:30] because we can at least kind of stake our priority early, right?
[12:36] Yeah.
[12:37] Well, you get to both vet the name,
[12:39] but then put a stake in the ground.
[12:40] It's like, I'm going to use this.
[12:41] Yeah.
[12:42] And it's, and it's, you know, but it's also okay to do it the other way,
[12:46] which is you're already selling the product and you just apply to the trademark.
[12:49] And then that just lapses both of those steps.
[12:52] So you're applying for the mark the same time you're submitting proof of use and commerce initially, right?
[12:57] So you have a single filing rather than basically two filings.
[13:02] And, you know, it's good to even pan back a little bit because I think a lot of folks
[13:09] get this use and commerce thing a little bit confused because
[13:14] use and commerce is required in trademark.
[13:16] It's not required for other forms of intellectual property, right?
[13:19] So for example, if you come up with an incredible invention,
[13:23] you can come to me, but we can file patent application.
[13:26] And if that invention is novel, right,
[13:29] the examiner can't find it anywhere else disclosed earlier than your filing date,
[13:34] then they'll give you a patent and you will simply own that invention.
[13:39] And you could sell a patent, you could sue people if they and friends,
[13:43] you could license it out, whatever you want, you own it, right?
[13:46] Trademark doesn't work that way, right?
[13:48] It's not just about coming up with some novel name, right?
[13:52] So I have a buddy of mine who's also a little bit of a client of a firm, right?
[13:58] Who came to me years ago as a funny, he says, good man, dude,
[14:01] I've got a great name for a type of beer and I want a trademark.
[14:05] And I asked him something like, well, so are you open up in a brewery?
[14:08] Are you going to have a beer distribution company?
[14:10] Are you going to, no, no, no, I just want to trademark the name.
[14:13] And then I could sell it to the beer companies.
[14:15] And that's probably a lot of people think you could do something like that.
[14:18] But the trademark system just doesn't work that way because you've actually got to show
[14:22] you're selling beer or whatever before you can finalize the trademark.
[14:26] Even though you could file ahead and get a notice on the house.
[14:30] But it's not a registered trademark until you show you're selling.
[14:34] Interesting.
[14:35] Yeah, absolutely.
[14:36] People, I think that's a pretty common misconception.
[14:40] And it's totally understandable, too, because in patent, you can do that.
[14:44] And copyright, right?
[14:45] Like if you come up with an amazing piece of artwork, right?
[14:48] Even if you're not actually selling it, right?
[14:50] People can't copy your artwork.
[14:52] That's copyright infringement, right?
[14:53] You write a book, even if nobody wants to buying it yet.
[14:56] If somebody rips off your manuscript, you can go after them, for sure.
[15:01] Have you seen situations where someone believed their brand was fully protected,
[15:05] only discover like, oh, major limitations or gaps where they were exposed later on?
[15:12] It goes back to some of the things we talked about.
[15:14] We've had people come and they have like an old trademark.
[15:18] And the goods and services description is totally kind of not accurate in terms of what they're doing, right?
[15:26] So then you could be exposed.
[15:30] A lot of this stuff would get fleshed out if you had a lawsuit with someone, right?
[15:34] And one of the ones that just sticks out on my mind is, you know, we had,
[15:40] I mentioned this in an earlier episode, but we had someone with a trademark
[15:46] and for some reason it was applied for, not in the name of the company selling the products,
[15:50] but in the name of the, like, son of the owner or something like that,
[15:58] which made no sense to me, right?
[16:02] And then we ended up in a dispute with another company and they hammered us on this
[16:08] and the depositions in that process.
[16:11] And ultimately, you know, it ended up not going well, right?
[16:16] Because of the fact that it was just filed in the name of the wrong party.
[16:21] So that's something to very be very careful about when you're filing.
[16:27] I'm also, you know, there's, then I run into this in conversations all the time.
[16:31] There is a plethora of information online and there's services and businesses
[16:36] that will sell you their services to register your trademarks.
[16:41] And, you know, or, you know, people are doing it online on their own.
[16:45] As she said, you know, but I'm wondering what issues tend to come up in the,
[16:52] like for someone out there thinking about doing a DIY kind of a route.
[16:57] What would you recommend they really watch out for?
[17:00] See if there's any other ones we've had, but yeah, goods and services, description,
[17:05] and how that works. And also, again, the ownership, right,
[17:12] has to be properly described.
[17:15] That can be a bit, big pitfall.
[17:17] And, you know, another thing you just run into, sometimes like say if you have a logo,
[17:24] right, you've got to have a correct description of it or they'll kick it back.
[17:29] And sometimes it's just as simple as deadlines, right?
[17:34] You get an office action of some kind of, I've seen this have a bunch of times
[17:40] where someone has filed something and they file it and then they get some office action
[17:45] rejecting it but where there's a super easy fix.
[17:49] But they're just like, freak out, oh my god, and then it ends up going abandoned or something.
[17:53] Because they're like, oh my god, rejected, it didn't work or something.
[17:57] We were handling this with an easy.
[17:59] Yeah, I was just, you just got to, you didn't dot the, you didn't dot the eye across the tea, you know, whatever it is.
[18:04] Yeah, wow.
[18:06] Well, listen, we're up against time and, but again, love this topic.
[18:12] Thanks so much for sharing your expertise, your stories, your point of view, really appreciate it.
[18:17] And I look forward to connecting again in the future.
[18:20] Yeah, let's get back in front of the magic podcast machine as soon as possible.
[18:26] Absolutely, absolutely.
[18:29] That's it for today's episode of inherently distinctive with Attorney Mark Goodman.
[18:33] If you want to learn more about protecting your ideas, inventions and brands, visit Mark's website, GoodmanLawNevada.com.
[18:41] Thanks for listening.
[18:43] Don't forget, leave us a review, subscribe to the show, share a link with an entrepreneur in your world
[18:49] who might need some trademark assistance.
[18:51] That's always super helpful.
[18:53] I'm Sean O'Connor, have a great day.
[0:05] Hello everyone, welcome back to inherently distinctive with Attorney Mark Goodman.
[0:10] Mark's a Nevada-based intellectual property attorney who helps entrepreneurs, startups,
[0:15] and business owners protect the brands and ideas that drive their companies forward.
[0:20] I'm Sean O'Connor and today Mark and I are talking about trademark filing mistakes
[0:25] that can quietly create expensive legal and business problems
[0:29] long after the application is submitted.
[0:32] So this is a thing that comes back to bite people.
[0:36] It sounds like, how are you?
[0:38] Oh, doing pretty good. Good to be back on.
[0:41] Yeah, yeah. I mean, there's always more to talk about on this topic, which, you know,
[0:46] I've worked in branding and all naming all this stuff a lot in a parallel life.
[0:53] And I'm wondering what are some of the most common sort of trademark filing mistakes
[1:00] that you're seeing potential clients make?
[1:03] You know, like right out of the gate.
[1:05] Yeah, so a few things come to mind.
[1:07] I just recently had a client signed up a new client where prior this business had been around for quite a long time.
[1:15] And at one point, they they filed for a certain trademark through some,
[1:20] I don't know, attorney or outfit or something, somebody from Pakistan that could do it really cheap, right?
[1:28] And then they filed this thing and it kind of got tied up.
[1:33] And then I wouldn't looked it up what's going on here.
[1:35] So a couple of things happened.
[1:37] First thing, which is most egregious, and this hopefully isn't going to happen too often.
[1:43] It had been, that case was under administrative review because it was listed under the name of some other lawyer
[1:52] that had apparently been like impersonated or something like that.
[1:55] So that's a problem, right?
[1:56] But that's not super common that you'll see a lot.
[1:59] You're seeing thing that sometimes.
[2:02] But some of the general problems with the filing, right?
[2:06] One issue was that this company had been business a long time.
[2:12] But the filing was done on an intent to use basis, which is just completely wrong, right?
[2:17] So you're not taking advantage of your earlier use.
[2:22] And you know, I mean, it was just like, what are you not even paying attention to what you're doing in your filing?
[2:27] You seem like, right?
[2:29] Another problem that I saw is that you, and this isn't necessarily a problem,
[2:33] but it's something that probably wasn't discussed or thought through,
[2:37] is that you had a logo together with the name, right?
[2:42] Where usually I'd recommend let's have the logo as its own separate mark,
[2:49] and then let's have a name as its own separate mark.
[2:53] In some cases, it's okay to have both together,
[2:56] but it's something you'd want to strategically discuss, I think, and I don't think that happened, right?
[3:03] And also, another thing that I don't think was discussed is that the mark was in color,
[3:12] which can be the right decision, but probably also wasn't discussed, right?
[3:19] When you file a stylized mark, you have to decide whether you're claiming color is a feature of the mark, or not, right?
[3:29] And if you don't, then you need to submit like a black and white image,
[3:34] rather than submitting a color image.
[3:36] So how do we handle this?
[3:38] Well, you can, first of all, you can get both if you want, right?
[3:42] We can file it with the color, file it with black and white.
[3:45] That would give you the strongest overall protection.
[3:48] Although I will say that for my kind of entrepreneurs and early stage companies,
[3:56] that's a little bit overkill in terms of for most of them.
[4:02] And so what I usually do is my default is to you do the black and white,
[4:07] because then you're covering more ground, I think, right?
[4:10] Because it would cover any type of color scheme, right?
[4:15] But there's an exception, I think, if we really think that the color scheme is very, very important to the branding, right?
[4:23] Like fundamental, like we are definitely using these colors.
[4:26] And we think that the customers are going to recognize these colors.
[4:30] The color mark might be more important than the black and white mark for your business.
[4:35] And I often think of this, imagine intellectual property in many ways
[4:39] as like an imaginary version of real estate.
[4:42] So imagine two pieces of real estate with kind of funny shapes.
[4:47] But one of them is superimposed on the other, right?
[4:51] And so when you think about the color mark and the black and white mark,
[4:57] well for most intents and purposes, they're going to cover the same thing.
[5:02] But there will be instances where you'll have a stronger case against an infringer
[5:06] if you have the black and white mark.
[5:08] But you'll have a little bit weaker if you applied with claiming color, right?
[5:13] And that example would be, let's say they've totally changed the color scheme,
[5:16] but man, that logo designs pretty close, right?
[5:19] Because there's a lot of judgment calls here.
[5:21] And the flip side can also be true.
[5:23] Let's say the infringer has changed the logo somewhat, arguably different enough,
[5:31] but borderline.
[5:33] But their color scheme is dead on what you're using.
[5:37] In that case, you are in a stronger position with your color mark, right?
[5:43] So a lot of this, I can't fully say it was in the state,
[5:46] but it's just something we're not even considering, right?
[5:49] We've got to make strategic mindful decisions when we're going through this filing.
[5:54] And the other one we just talked about in the last podcast,
[5:57] which is you've got to make sure that the branding that you apply for matches up
[6:01] with what your actual branding is.
[6:04] We're talking about that last podcast, so we can connect to that.
[6:07] Well, I think people hear about filings in offices.
[6:12] It sounds like a perfunctory administrative submitting of paperwork,
[6:18] kind of a process.
[6:20] And what I'm hearing you describe, there's a little bit more strategy involved here,
[6:26] because depending on the business you're going into,
[6:29] and the ways you're going to use the mark and the color and the trade dress,
[6:32] all of these different applications of the brand marker trademark,
[6:38] like you can't know it all in advance,
[6:42] but to have some semblance of an understanding,
[6:44] I think, wouldn't that inform the direction or the recommendation you're going to make
[6:49] in terms of what should be filed and secured?
[6:52] Yeah, trademark and really any intellectual property,
[6:55] in almost all cases, it's about helping people make more money, right?
[7:01] And so you have to integrate the intellectual property strategy
[7:05] with your business strategy, right?
[7:08] And yes, even though trademark seems very form-based, right?
[7:12] Because we do have an online filing system.
[7:15] You can file it by setting up a log in with the United States Patent of Trademark Office
[7:20] and putting in the information and documents in the right spots,
[7:24] and you'll get an application going.
[7:27] But there is a little more...
[7:29] I would say this, there's...
[7:32] It's definitely when people are trying it on their own,
[7:35] it's definitely not as bad as going into litigation on your own,
[7:39] or something like that, but it's definitely not the same thing
[7:43] as just even compared to, let's say, filing your own corporation
[7:47] or copyright would be easier.
[7:49] There are some real decisions here that you need to make
[7:53] that have legal consequences,
[7:55] and that can get you tied up a noth later if you make the wrong decisions, too.
[7:59] Well, I mean, one thing I've heard about is,
[8:04] you got to choose between or among goods and services in an application, right?
[8:12] And if you get that wrong or if you are too narrow or too broad,
[8:17] what are the revifications there?
[8:20] So that's another good one to bring out,
[8:23] because that can be one of the more challenging parts
[8:26] of the trademark application is really getting this description right.
[8:29] And it's interesting, there's two ways to do it,
[8:32] which is so you have a fundamental decision at the beginning.
[8:35] You can file using...
[8:37] They call it the plus form at the trademark office,
[8:41] which is a slightly cheaper filing fee.
[8:44] It's not really, it's like a hundred bucks difference or fifty bucks difference, whatever.
[8:47] But it's...
[8:50] Then when you use that form, you have to select
[8:54] the pre-approved goods and services descriptions that the trademark office has,
[8:59] in there what they call a trademark ID manual,
[9:03] which is available online.
[9:05] You can search it up and everything, it's pretty slick.
[9:08] Or you can file a regular application,
[9:11] paying like hundred bucks more,
[9:14] and then you can custom draft your goods and services description.
[9:18] So here's the pros and cons, right?
[9:21] Using the trademark ID manual, the advantage to that is that if you select one of those things,
[9:26] you are not going to get some rejection based on,
[9:31] oh, this is too indefinite, doesn't describe things, right?
[9:35] Because it's pre-approved, right?
[9:37] Yeah, exactly.
[9:38] But the negative thing is,
[9:41] do any of those pre-approved selections fit correctly with what you're selling in the market?
[9:47] And the answer is, sometimes yes, and sometimes no.
[9:50] So it's something you have to think about.
[9:52] Incidentally, it's funny because this exact thing is why,
[9:57] when I actually quote a fee for a trademark application service,
[10:02] I just, I always quote it together,
[10:05] I say it's going to be X including the trademark office filing fees, right?
[10:10] And the reason why I do that is I just don't have to chase someone for,
[10:13] oh, well here's a $50 refund because we could use the plus form.
[10:17] Here's only $50 more administratively that's too much of a hassle.
[10:21] So I just lump it typically together for that reason.
[10:25] You know, you had mentioned earlier showing the name in commerce,
[10:32] and I'm not sure people know this, right?
[10:35] But you know, you're starting a business and suddenly like,
[10:37] oh, I'm in a file for a trademark.
[10:39] But you know, what happens?
[10:40] What tends to happen if someone files for a trademark before they're properly using the name in commerce?
[10:47] Is that an issue?
[10:48] Oh, another good point with the filing system, right?
[10:52] So there are two types, two main types of trademark applications, right?
[10:56] One is a, what we call an intent to use application.
[11:00] So if you, let's say you're not using the market commerce yet,
[11:03] but you intend to do so in the somewhat near future,
[11:06] we can just file for the trademark,
[11:11] and then the office will evaluate it against any potential conflicting marks
[11:15] as well as against any other potential legal issues like being descriptive
[11:20] or something like that initially.
[11:22] And then if it clears, then they'll issue us,
[11:25] oh, it's called a notice of allowance, right?
[11:28] And that sets that basically says, hey, you cleared the initial hurdle,
[11:32] but now you need to show me that you're using this market commerce, right?
[11:36] And you have a six month period of do so.
[11:39] Incidentally, you can pay for some extensions six months,
[11:42] six months, six months, you actually have like two and a half years
[11:45] if you're going to launch this thing.
[11:47] You have some time, as long as you keep up with your extensions,
[11:50] in order to do that.
[11:51] So that's interesting.
[11:52] So I'm, I'm, I come to you.
[11:54] I'm like, hey, man, I'm, I'm launching this business,
[11:57] Sean's window washing as we talked about before.
[12:00] I'm really stoked about this thing.
[12:02] I've got a, I got a trademark, I want a trademark and I got a great logo.
[12:06] I'm not in business yet.
[12:08] Still raising capital.
[12:11] We can submit that.
[12:13] And that in a sense, I get an early warning.
[12:16] It's like, hey, you know what?
[12:17] There's another Sean's window washing across the county here.
[12:21] And so I'm like, oh, good to know,
[12:24] rather no sooner than later, right?
[12:26] I mean, is it?
[12:27] Yes.
[12:28] And it's a good system there for people that are starting out
[12:30] because we can at least kind of stake our priority early, right?
[12:36] Yeah.
[12:37] Well, you get to both vet the name,
[12:39] but then put a stake in the ground.
[12:40] It's like, I'm going to use this.
[12:41] Yeah.
[12:42] And it's, and it's, you know, but it's also okay to do it the other way,
[12:46] which is you're already selling the product and you just apply to the trademark.
[12:49] And then that just lapses both of those steps.
[12:52] So you're applying for the mark the same time you're submitting proof of use and commerce initially, right?
[12:57] So you have a single filing rather than basically two filings.
[13:02] And, you know, it's good to even pan back a little bit because I think a lot of folks
[13:09] get this use and commerce thing a little bit confused because
[13:14] use and commerce is required in trademark.
[13:16] It's not required for other forms of intellectual property, right?
[13:19] So for example, if you come up with an incredible invention,
[13:23] you can come to me, but we can file patent application.
[13:26] And if that invention is novel, right,
[13:29] the examiner can't find it anywhere else disclosed earlier than your filing date,
[13:34] then they'll give you a patent and you will simply own that invention.
[13:39] And you could sell a patent, you could sue people if they and friends,
[13:43] you could license it out, whatever you want, you own it, right?
[13:46] Trademark doesn't work that way, right?
[13:48] It's not just about coming up with some novel name, right?
[13:52] So I have a buddy of mine who's also a little bit of a client of a firm, right?
[13:58] Who came to me years ago as a funny, he says, good man, dude,
[14:01] I've got a great name for a type of beer and I want a trademark.
[14:05] And I asked him something like, well, so are you open up in a brewery?
[14:08] Are you going to have a beer distribution company?
[14:10] Are you going to, no, no, no, I just want to trademark the name.
[14:13] And then I could sell it to the beer companies.
[14:15] And that's probably a lot of people think you could do something like that.
[14:18] But the trademark system just doesn't work that way because you've actually got to show
[14:22] you're selling beer or whatever before you can finalize the trademark.
[14:26] Even though you could file ahead and get a notice on the house.
[14:30] But it's not a registered trademark until you show you're selling.
[14:34] Interesting.
[14:35] Yeah, absolutely.
[14:36] People, I think that's a pretty common misconception.
[14:40] And it's totally understandable, too, because in patent, you can do that.
[14:44] And copyright, right?
[14:45] Like if you come up with an amazing piece of artwork, right?
[14:48] Even if you're not actually selling it, right?
[14:50] People can't copy your artwork.
[14:52] That's copyright infringement, right?
[14:53] You write a book, even if nobody wants to buying it yet.
[14:56] If somebody rips off your manuscript, you can go after them, for sure.
[15:01] Have you seen situations where someone believed their brand was fully protected,
[15:05] only discover like, oh, major limitations or gaps where they were exposed later on?
[15:12] It goes back to some of the things we talked about.
[15:14] We've had people come and they have like an old trademark.
[15:18] And the goods and services description is totally kind of not accurate in terms of what they're doing, right?
[15:26] So then you could be exposed.
[15:30] A lot of this stuff would get fleshed out if you had a lawsuit with someone, right?
[15:34] And one of the ones that just sticks out on my mind is, you know, we had,
[15:40] I mentioned this in an earlier episode, but we had someone with a trademark
[15:46] and for some reason it was applied for, not in the name of the company selling the products,
[15:50] but in the name of the, like, son of the owner or something like that,
[15:58] which made no sense to me, right?
[16:02] And then we ended up in a dispute with another company and they hammered us on this
[16:08] and the depositions in that process.
[16:11] And ultimately, you know, it ended up not going well, right?
[16:16] Because of the fact that it was just filed in the name of the wrong party.
[16:21] So that's something to very be very careful about when you're filing.
[16:27] I'm also, you know, there's, then I run into this in conversations all the time.
[16:31] There is a plethora of information online and there's services and businesses
[16:36] that will sell you their services to register your trademarks.
[16:41] And, you know, or, you know, people are doing it online on their own.
[16:45] As she said, you know, but I'm wondering what issues tend to come up in the,
[16:52] like for someone out there thinking about doing a DIY kind of a route.
[16:57] What would you recommend they really watch out for?
[17:00] See if there's any other ones we've had, but yeah, goods and services, description,
[17:05] and how that works. And also, again, the ownership, right,
[17:12] has to be properly described.
[17:15] That can be a bit, big pitfall.
[17:17] And, you know, another thing you just run into, sometimes like say if you have a logo,
[17:24] right, you've got to have a correct description of it or they'll kick it back.
[17:29] And sometimes it's just as simple as deadlines, right?
[17:34] You get an office action of some kind of, I've seen this have a bunch of times
[17:40] where someone has filed something and they file it and then they get some office action
[17:45] rejecting it but where there's a super easy fix.
[17:49] But they're just like, freak out, oh my god, and then it ends up going abandoned or something.
[17:53] Because they're like, oh my god, rejected, it didn't work or something.
[17:57] We were handling this with an easy.
[17:59] Yeah, I was just, you just got to, you didn't dot the, you didn't dot the eye across the tea, you know, whatever it is.
[18:04] Yeah, wow.
[18:06] Well, listen, we're up against time and, but again, love this topic.
[18:12] Thanks so much for sharing your expertise, your stories, your point of view, really appreciate it.
[18:17] And I look forward to connecting again in the future.
[18:20] Yeah, let's get back in front of the magic podcast machine as soon as possible.
[18:26] Absolutely, absolutely.
[18:29] That's it for today's episode of inherently distinctive with Attorney Mark Goodman.
[18:33] If you want to learn more about protecting your ideas, inventions and brands, visit Mark's website, GoodmanLawNevada.com.
[18:41] Thanks for listening.
[18:43] Don't forget, leave us a review, subscribe to the show, share a link with an entrepreneur in your world
[18:49] who might need some trademark assistance.
[18:51] That's always super helpful.
[18:53] I'm Sean O'Connor, have a great day.
