[0:01] Welcome to inherently distinctive.
[0:06] Hello, everyone, and welcome back to inherently distinctive with Attorney Mark Goodman.
[0:11] Mark is a Nevada-based intellectual property attorney who helps entrepreneurs, startups,
[0:16] 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 how trademark disputes can
[0:26] force businesses into expensive rebrands, legal conflicts, and major business disruptions
[0:31] before they ever see it coming.
[0:33] Mark, could you see you?
[0:35] Yeah, good to be back here after a little bit of family vacationing this summer.
[0:40] We're back on the mic and ready to rock and roll, so I'm excited.
[0:45] I'm going to ask you about, I guess, common situations, right?
[0:49] What do you see? What are some of the most common situations that businesses get into trademark trouble,
[0:55] whether over their name or their brand marks, that sort of thing?
[0:59] Yeah, so a couple of things have come to mind here.
[1:03] I've used this analogy before, but it's so much fun that we're going to use it again,
[1:08] which is that I often analogize your trade name.
[1:14] This could be true for logos, but I think less so.
[1:17] It's your trade name.
[1:19] You meet somebody, and maybe you go ask for her date.
[1:24] Then you go on a first date, right?
[1:26] Then you go on a second date, and then dating kind of steadily, and then you're a steady couple,
[1:34] and then you're engaged, and then at some point you get married.
[1:38] The next thing you know, you're married with four kids in a 401k and a house together with this person, right?
[1:44] Here's why I think it's similar for your trade names, is that the longer you're in business with a name,
[1:51] both in terms of time and how much has been invested in it and how recognizable of a brand you've built,
[1:58] the more married you are to that name, right?
[2:01] Here's why this becomes important in making decisions, right?
[2:06] Some clients come to me and they are starting a brand new business, right?
[2:12] I've come up with a name.
[2:14] We're going to do this business.
[2:16] We're going to use this name because I think it's perfect for this.
[2:19] And let's go, right?
[2:22] Okay, so that client is just going on a first date with the name, right?
[2:28] Because it's like if you go on a first date with somebody, versus crazy,
[2:32] maybe you don't go on a second date, right?
[2:35] And so the same thing here, like you may be all excited about a certain name,
[2:40] but if we do a search, and it's like, well, there's a couple Fortune 500 company that has something kind of similar,
[2:47] and in a similar enough space that they could use their effectively unlimited resources to destroy you,
[2:56] well, let's just go on a date with somebody else and see where that goes, right?
[3:01] Try something else, do another search, right?
[3:04] Now by contrast, I had an client come to me.
[3:07] This is now going on about three years ago, right?
[3:10] And for whatever reason, she just never got the trademark done,
[3:12] but she's been in business with a certain name for about more than 20 years.
[3:16] So for her, I'm not even quite frankly, and I don't know,
[3:20] other trademark lawyers that have the same opinion, but I'm not even worried about a search.
[3:24] We've been business 20 years.
[3:25] You're married with a 401K and a house together with this person.
[3:28] We are going to file, and we are going to get this mark if we can,
[3:32] and if we have to fight it or appeal it, it might be worth it, right?
[3:36] Because otherwise, when you have to rebrand after that much time,
[3:40] there's huge amount of costs.
[3:42] Both in terms of the actual cost of rebranding, all of your marketing and brand materials,
[3:47] but also even more important, the goodwill and the name, right?
[3:51] Your own customer is going to be confused about who you are and what's going on at that point.
[3:56] All that equity, all that to say nothing of like, you know,
[3:59] the search engine, the algorithms have latched onto all that too.
[4:03] It's a good analogy because I think it helps you understand where you are in the process, right?
[4:07] And where it's hard, sometimes businesses come in and they're in the more,
[4:10] like kind of steady dating, you know, we've already launched for a year,
[4:15] but now we've got this.
[4:17] That's where I think it's the worst, it's the most stressful for folks,
[4:22] because on the two polls, right, for my client that had been in business 20 years,
[4:27] at least, I mean, hopefully, and there wasn't a problem, we got the trademark,
[4:30] we liked it down for, so everything was good, but at least there wasn't a big source.
[4:34] It's like, hey, whatever it is, whatever's out there, we're just going to take it on, right?
[4:39] And try to get this name locked down for you.
[4:42] But then, you know, and then for people that are beginning, it's like,
[4:45] hey, let's not do anything where there's some risk.
[4:48] At all, unless, you know, we know we're solid, right?
[4:53] The people in the middle, lots of our hearts are like, well, we launched,
[4:56] but then there's this, and can we get it through?
[4:59] And then we're having some hard conversations, depending on where we are.
[5:02] And it can be multi-variable at that point.
[5:05] What about, you know, you talk about, I know,
[5:07] and you deal with, you know, people that are starting businesses from scratch.
[5:12] And, you know, a common thing, of course, is to create an LLC.
[5:16] You know, and you got to, you know, go through the registration process of forming an LLC.
[5:21] You know, you're going to buy the domain name and people assume that that's legal protection.
[5:28] And I'm guessing that that's probably not true in the ways that we're talking here.
[5:34] Okay, so it's a good point.
[5:36] Let's distinguish all of this, right?
[5:38] So the name of an LLC or corporation, right?
[5:42] First of all, I do recommend starting forming an LLC or a corporation for,
[5:48] when you start a business, right?
[5:50] And so just to talk about that briefly, right, is that you,
[5:54] if you, you're allowed to simply open up a business yourself, right?
[5:59] Sean O'Connor opens up a business selling lemonade, right?
[6:04] And you can totally do that, right?
[6:06] And you'd be a sole proprietor.
[6:07] You might have to pay for a business license to take, you know, something like that with the state.
[6:11] But then you could, you would operate your business,
[6:14] and you don't have to deal with paying for a corporation or anything like that.
[6:18] But here's the problem, right?
[6:20] You then are personally responsible for the liabilities of that business, okay?
[6:26] So if somebody chokes on the lemonade and sues,
[6:31] they're going to sue you and they'll be able to access your,
[6:34] if they win your personal pocketbook and assets, right?
[6:38] Or at least if you have a corporation or an LLC,
[6:41] it's like an extra lay, I look at it as an extra layer of insurance,
[6:45] because you're going to also want to have a good business liability insurance policy in place, of course.
[6:50] But then sometimes what if that doesn't work?
[6:53] Certain types of lawsuits might not be considered covered by insurance, right?
[6:59] Frankly insurance, although I highly recommend it sometimes,
[7:04] they don't want to play things, right?
[7:06] And you have to deal with that.
[7:08] So then in those cases,
[7:10] at the very least in a disaster scenario,
[7:13] there's a huge judgment, the judgment is against your LLC.
[7:17] In general, it will not be held against you personally, right?
[7:24] There are some exceptions, but at least you've got a much better position, right?
[7:28] So I do recommend that.
[7:29] But understand that the name of the, first of all,
[7:31] the name of the LLC, let's say,
[7:33] does not have to be the same name that you're marketing under, right?
[7:37] But it often is, it's okay for it to be that, right?
[7:40] But it just doesn't have to be, right?
[7:41] So the name Alphabet Inc, right?
[7:45] That company owns what we know as Google, right?
[7:50] So it's not the same name, but then I believe Starbucks
[7:54] is just Starbucks LLC, right?
[7:56] So it can be.
[7:58] But don't worry.
[8:00] And where it's different, I think, is the scope of things
[8:04] because if Starbucks has the name Starbucks LLC.
[8:13] And I could apply, I think, now maybe if it was this close,
[8:17] they might kick it back a little in the state.
[8:20] But if I say Starbucks, you know, one, two, three LLC,
[8:24] I could probably get that name, right?
[8:27] Through the Secretary of State's Office, right?
[8:29] But that's going to give me no right to use that name in commerce.
[8:33] I'm going to get sued by Starbucks if I use that in,
[8:36] at all, really, or anything, especially related to coffee and stuff like that.
[8:41] So there's that scope around just,
[8:44] whereas at the State Secretary of State's Office,
[8:47] if you just change a letter or a number on there,
[8:50] you can get that, you can get the name of the company.
[8:54] Whereas trademark, you have scope.
[8:57] In trademark, what we're worried about is whether consumers
[9:00] are likely to be confused about whether you are associated
[9:04] affiliated with or sponsored by the other company or vice versa.
[9:09] And that's a much bigger scope than just the LLC.
[9:16] And the same thing, you know, talking about domain names, right?
[9:20] So again, a domain name,
[9:23] there's a, there's sort of these registries like GoDaddy and so forth
[9:26] where you can go and you can pay just a few bucks of the register a name.
[9:30] Let's just give you any trademark rights at all, right?
[9:34] And there is a process.
[9:36] If you get a registered trademark,
[9:38] there's sort of a private law process,
[9:40] and then you could take it to court if you had to,
[9:43] where you can kick people off your domain name
[9:47] if you have a registered trademark.
[9:49] So that's something that's valuable for folks to know.
[9:52] In addition, and this is just a little off my area,
[9:56] but I think valuable for folks is that I do think
[10:01] that the domain name stuff is,
[10:05] from what I understand talking to my internet marketing people,
[10:09] it's not what it used to be in terms of importance, right?
[10:12] It used to be very important to have like, you know,
[10:16] Reno Patent Law dot com, for instance, right?
[10:21] And because almost every other month,
[10:24] I get an unsolicited email from somebody saying,
[10:27] hey, good man, you could,
[10:29] all you have to do is send me $863,
[10:32] and you can get, you know, Nevada trademark law dot com
[10:37] or something like that.
[10:39] And in the early days of the internet,
[10:42] that might actually be tempting, right?
[10:44] Because you have that domain,
[10:46] people might be able to remember, go to it,
[10:48] whereas now everything runs through search engines,
[10:51] and nowadays AI, right?
[10:53] So the AI or the search engine is going to find you
[10:57] if your content is relevant, for instance,
[11:00] if you have an awesome podcast, right?
[11:02] Hopefully people will find you, right?
[11:04] I don't know.
[11:05] Something like that, right?
[11:07] And so that's really what's important,
[11:09] the actual domain name less so.
[11:12] But I still have clients come to me that are stressed out about,
[11:15] well, so and so these people are squatting on this domain
[11:18] and they have the dot net one and this.
[11:21] It's less important that used to be still,
[11:24] and if it looks like it's important enough,
[11:26] get the trademark and kick them out.
[11:28] It's a nice to have.
[11:29] And again, it depends on the business you're in,
[11:31] and how important that is.
[11:32] But I hear you, there's a whole lot of other doors
[11:34] into your funnel than just that,
[11:37] knowing that straight up URL.
[11:39] Talk a little bit about, I mean, you did already,
[11:45] I mean, you touched on this,
[11:46] but I want to talk about like, states of state,
[11:48] because a lot of businesses are, you know,
[11:50] like they're not just going to maybe be doing business
[11:53] in Nevada.
[11:54] Can businesses still run into trademark conflicts
[11:57] if another company is in a different state?
[12:01] Is that, you know, are you cross referencing that?
[12:04] But this is actually brings up an interesting topic.
[12:06] Trademark law is a little bit unique, I think,
[12:09] compared to almost any other law area I can think of.
[12:13] In that, there's both state and federal trademark regimes.
[12:18] And they coexist together.
[12:21] First, by contrast, in patent law,
[12:23] we also practice patent law here, right?
[12:25] The federal government has exclusive jurisdiction
[12:29] for all patent-related matters.
[12:31] Everything goes to federal court,
[12:33] one patent system for the whole country, and that's it, right?
[12:36] Same thing, copyright.
[12:38] Okay, whereas contract law, right,
[12:42] is state-to-state, corporations, LLCs,
[12:45] all that is state-to-state law,
[12:47] the federal government doesn't have much to do with any of those things, right?
[12:50] That's all at the state level.
[12:51] Trademark is funny, and actually it has both.
[12:53] You could get a state trademark,
[12:55] and you could get a federal trademark, right?
[12:57] So let's talk about it.
[12:59] To get a federal trademark,
[13:01] you have to be operating in interstate commerce.
[13:05] Okay.
[13:06] What the heck is that?
[13:08] Well, that just means you at least have some sales
[13:10] and clients that are in different states, right?
[13:15] So if you were a purely local business,
[13:17] it may just make sense to have the state trademark.
[13:20] You theoretically might not be able to get a federal trademark,
[13:23] although I have to tell you that the standard for what constitutes
[13:27] interstate commerce is very, very low, right?
[13:31] So for instance, restaurants in New York City
[13:34] have gotten federal trademarks, right?
[13:38] People argue to cases and say,
[13:40] look, you're a restaurant in New York City.
[13:42] You don't have a restaurant in New York City, do you?
[13:45] But they say, well, but people come from all around the United States
[13:49] to go to New York because we have the best restaurants and so forth,
[13:52] and look, there's some truth to that, probably, right?
[13:56] And so they can get it, right?
[13:58] Case that I had, I represented somebody in the smog
[14:01] check business years ago, right?
[14:03] And we had this issue because somebody in California
[14:06] had a somewhat similar trademark and our argument was,
[14:11] look, you guys only do business in California
[14:13] and you're licensed in California only,
[14:15] and you can't do business in any other state
[14:17] because you're not lazy to do so.
[14:19] So you can't push my client around here in Nevada, right?
[14:24] Well, we settled the case, so we don't have a result
[14:28] on how that would have gone, right?
[14:30] But both sides had their arguments, right?
[14:32] And I think both myself and the other lawyer
[14:34] had reasonable arguments on this, so.
[14:36] I would think, I mean, you were talking earlier,
[14:39] about internet commerce,
[14:42] everybody's buying online,
[14:44] would that qualify as interstate commerce?
[14:47] If you're selling something online, sure,
[14:50] it's going to qualify.
[14:51] For most of my clients,
[14:52] we just go get a federal trademark registration
[14:54] and let's not mess around, right,
[14:56] with the state stuff,
[14:57] but it can be a little different if you're just kind of local,
[15:00] especially a more service-based business
[15:02] that would have to be in a state in a certain location,
[15:05] right, that doesn't span over the internet at all,
[15:08] then maybe we just get a state trademark.
[15:11] And you can do both, too, so.
[15:13] And all of that.
[15:14] What about, yeah, I mean,
[15:16] let's just lean into the whoops, you know,
[15:21] I've made a mistake, there's a conflict,
[15:23] and I receive a trademark complaint,
[15:25] or maybe it's a cease and desist letter
[15:28] tied to my business name or something.
[15:31] What's your recommendation in terms of
[15:33] how someone should respond to that?
[15:35] I mean, you got to get a good evaluation
[15:37] of how strong the claim is, right?
[15:39] And that's where you just have to go
[15:40] to an experienced trademark lawyer, right?
[15:43] There's really no other way to do that,
[15:45] but, you know, it just understands
[15:47] the basics of this, right?
[15:50] Whenever we're determining whether there's
[15:52] an infringement or whether two trademarks
[15:54] are in conflict with one another,
[15:56] the test always involves two factors,
[15:59] and these two factors are not like,
[16:01] like you have to have exactly all of both, right?
[16:05] The two factors are how similar or identical
[16:07] are the marks in question, right?
[16:09] And if they're identical,
[16:10] of course, that's stronger for infringement, right?
[16:12] And if they're similar,
[16:13] then you have some argumentation to make, right?
[16:15] And then how similar or identical
[16:17] are the goods and services being offered, right?
[16:20] Just for the most part,
[16:22] you can have coexisting trademarks
[16:25] if they are in totally different fields.
[16:27] And you have to kind of mix these things together, right?
[16:30] And that's why it can become just something
[16:33] where you can make creative arguments here.
[16:35] And you also have to consider the economics, right?
[16:38] And quite frankly,
[16:39] one of the first things I'd look at is,
[16:42] well, how big and powerful is the company
[16:45] that you might be up against, right?
[16:47] And, you know,
[16:49] because these larger companies,
[16:51] they can just simply put a ton of resources
[16:55] against the smaller company and put them out, right?
[16:58] Even if you might have a strong case,
[17:00] you might just not be able to afford the fight.
[17:02] And that's just the sad reality
[17:04] of the legal system we have.
[17:06] We got, like, just a minute left,
[17:08] and I'm just curious, you know,
[17:10] get entrepreneurs out there
[17:12] and I've got this idea for a business.
[17:14] I want to call it XYZ.
[17:16] What steps?
[17:18] What's the best way for them to, you know,
[17:22] minimize the risk of trademark problems later?
[17:25] I mean, one thing,
[17:26] and I've talked about this in the podcast,
[17:28] is getting a good search,
[17:29] and see if there's conflicts,
[17:30] potential conflicts,
[17:31] and evaluate how strong those conflicts are.
[17:33] And then the other thing I think is just equally important
[17:35] is understand how distinctive your name is, right?
[17:39] Because your name is easier to get through
[17:43] the system, the less it describes exactly what you're doing, right?
[17:47] We've talked about this before as well.
[17:50] And quite frankly,
[17:52] even though this is not a legal principle,
[17:54] in general, the more distinctive name is,
[17:57] the less likely there's going to be a conflict,
[17:59] because people tend to pick names that are suggestive
[18:03] or descriptive,
[18:04] or even sometimes generic,
[18:06] as to what the product or service is, right?
[18:11] And I've said before,
[18:13] I understand that maybe in some cases,
[18:16] it's worth it to have your name be more descriptive,
[18:19] or suggestive,
[18:20] or close to generic on what you're doing for business reasons,
[18:24] but just know that puts you in a very weak trademark position
[18:27] relative to having a more distinctive name.
[18:29] Makes sense.
[18:30] That's a good starting point.
[18:31] We're up against time mark,
[18:33] but as always, great to talk to you.
[18:35] Thanks for sharing your expertise,
[18:36] and I'm sure we'll connect on a future episode soon.
[18:40] I'm ready to go anytime.
[18:41] Hey, that's it for today's episode of inherently distinctive
[18:44] with Attorney Mark Goodman.
[18:45] If you want to learn more about protecting your ideas,
[18:48] inventions, and brands,
[18:49] visit Mark's website GoodmanLawNevada.com.
[18:53] I'm Sean O'Connor, as always,
[18:55] thanks for listening,
[18:56] and don't forget,
[18:57] leave us a thumbs up,
[18:58] maybe leave a review,
[19:00] subscribe so you don't miss a future episode,
[19:02] or maybe share a link
[19:04] with an entrepreneur in your world
[19:07] who could benefit from these conversations.
[19:10] Have a great day.
[0:06] Hello, everyone, and welcome back to inherently distinctive with Attorney Mark Goodman.
[0:11] Mark is a Nevada-based intellectual property attorney who helps entrepreneurs, startups,
[0:16] 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 how trademark disputes can
[0:26] force businesses into expensive rebrands, legal conflicts, and major business disruptions
[0:31] before they ever see it coming.
[0:33] Mark, could you see you?
[0:35] Yeah, good to be back here after a little bit of family vacationing this summer.
[0:40] We're back on the mic and ready to rock and roll, so I'm excited.
[0:45] I'm going to ask you about, I guess, common situations, right?
[0:49] What do you see? What are some of the most common situations that businesses get into trademark trouble,
[0:55] whether over their name or their brand marks, that sort of thing?
[0:59] Yeah, so a couple of things have come to mind here.
[1:03] I've used this analogy before, but it's so much fun that we're going to use it again,
[1:08] which is that I often analogize your trade name.
[1:14] This could be true for logos, but I think less so.
[1:17] It's your trade name.
[1:19] You meet somebody, and maybe you go ask for her date.
[1:24] Then you go on a first date, right?
[1:26] Then you go on a second date, and then dating kind of steadily, and then you're a steady couple,
[1:34] and then you're engaged, and then at some point you get married.
[1:38] The next thing you know, you're married with four kids in a 401k and a house together with this person, right?
[1:44] Here's why I think it's similar for your trade names, is that the longer you're in business with a name,
[1:51] both in terms of time and how much has been invested in it and how recognizable of a brand you've built,
[1:58] the more married you are to that name, right?
[2:01] Here's why this becomes important in making decisions, right?
[2:06] Some clients come to me and they are starting a brand new business, right?
[2:12] I've come up with a name.
[2:14] We're going to do this business.
[2:16] We're going to use this name because I think it's perfect for this.
[2:19] And let's go, right?
[2:22] Okay, so that client is just going on a first date with the name, right?
[2:28] Because it's like if you go on a first date with somebody, versus crazy,
[2:32] maybe you don't go on a second date, right?
[2:35] And so the same thing here, like you may be all excited about a certain name,
[2:40] but if we do a search, and it's like, well, there's a couple Fortune 500 company that has something kind of similar,
[2:47] and in a similar enough space that they could use their effectively unlimited resources to destroy you,
[2:56] well, let's just go on a date with somebody else and see where that goes, right?
[3:01] Try something else, do another search, right?
[3:04] Now by contrast, I had an client come to me.
[3:07] This is now going on about three years ago, right?
[3:10] And for whatever reason, she just never got the trademark done,
[3:12] but she's been in business with a certain name for about more than 20 years.
[3:16] So for her, I'm not even quite frankly, and I don't know,
[3:20] other trademark lawyers that have the same opinion, but I'm not even worried about a search.
[3:24] We've been business 20 years.
[3:25] You're married with a 401K and a house together with this person.
[3:28] We are going to file, and we are going to get this mark if we can,
[3:32] and if we have to fight it or appeal it, it might be worth it, right?
[3:36] Because otherwise, when you have to rebrand after that much time,
[3:40] there's huge amount of costs.
[3:42] Both in terms of the actual cost of rebranding, all of your marketing and brand materials,
[3:47] but also even more important, the goodwill and the name, right?
[3:51] Your own customer is going to be confused about who you are and what's going on at that point.
[3:56] All that equity, all that to say nothing of like, you know,
[3:59] the search engine, the algorithms have latched onto all that too.
[4:03] It's a good analogy because I think it helps you understand where you are in the process, right?
[4:07] And where it's hard, sometimes businesses come in and they're in the more,
[4:10] like kind of steady dating, you know, we've already launched for a year,
[4:15] but now we've got this.
[4:17] That's where I think it's the worst, it's the most stressful for folks,
[4:22] because on the two polls, right, for my client that had been in business 20 years,
[4:27] at least, I mean, hopefully, and there wasn't a problem, we got the trademark,
[4:30] we liked it down for, so everything was good, but at least there wasn't a big source.
[4:34] It's like, hey, whatever it is, whatever's out there, we're just going to take it on, right?
[4:39] And try to get this name locked down for you.
[4:42] But then, you know, and then for people that are beginning, it's like,
[4:45] hey, let's not do anything where there's some risk.
[4:48] At all, unless, you know, we know we're solid, right?
[4:53] The people in the middle, lots of our hearts are like, well, we launched,
[4:56] but then there's this, and can we get it through?
[4:59] And then we're having some hard conversations, depending on where we are.
[5:02] And it can be multi-variable at that point.
[5:05] What about, you know, you talk about, I know,
[5:07] and you deal with, you know, people that are starting businesses from scratch.
[5:12] And, you know, a common thing, of course, is to create an LLC.
[5:16] You know, and you got to, you know, go through the registration process of forming an LLC.
[5:21] You know, you're going to buy the domain name and people assume that that's legal protection.
[5:28] And I'm guessing that that's probably not true in the ways that we're talking here.
[5:34] Okay, so it's a good point.
[5:36] Let's distinguish all of this, right?
[5:38] So the name of an LLC or corporation, right?
[5:42] First of all, I do recommend starting forming an LLC or a corporation for,
[5:48] when you start a business, right?
[5:50] And so just to talk about that briefly, right, is that you,
[5:54] if you, you're allowed to simply open up a business yourself, right?
[5:59] Sean O'Connor opens up a business selling lemonade, right?
[6:04] And you can totally do that, right?
[6:06] And you'd be a sole proprietor.
[6:07] You might have to pay for a business license to take, you know, something like that with the state.
[6:11] But then you could, you would operate your business,
[6:14] and you don't have to deal with paying for a corporation or anything like that.
[6:18] But here's the problem, right?
[6:20] You then are personally responsible for the liabilities of that business, okay?
[6:26] So if somebody chokes on the lemonade and sues,
[6:31] they're going to sue you and they'll be able to access your,
[6:34] if they win your personal pocketbook and assets, right?
[6:38] Or at least if you have a corporation or an LLC,
[6:41] it's like an extra lay, I look at it as an extra layer of insurance,
[6:45] because you're going to also want to have a good business liability insurance policy in place, of course.
[6:50] But then sometimes what if that doesn't work?
[6:53] Certain types of lawsuits might not be considered covered by insurance, right?
[6:59] Frankly insurance, although I highly recommend it sometimes,
[7:04] they don't want to play things, right?
[7:06] And you have to deal with that.
[7:08] So then in those cases,
[7:10] at the very least in a disaster scenario,
[7:13] there's a huge judgment, the judgment is against your LLC.
[7:17] In general, it will not be held against you personally, right?
[7:24] There are some exceptions, but at least you've got a much better position, right?
[7:28] So I do recommend that.
[7:29] But understand that the name of the, first of all,
[7:31] the name of the LLC, let's say,
[7:33] does not have to be the same name that you're marketing under, right?
[7:37] But it often is, it's okay for it to be that, right?
[7:40] But it just doesn't have to be, right?
[7:41] So the name Alphabet Inc, right?
[7:45] That company owns what we know as Google, right?
[7:50] So it's not the same name, but then I believe Starbucks
[7:54] is just Starbucks LLC, right?
[7:56] So it can be.
[7:58] But don't worry.
[8:00] And where it's different, I think, is the scope of things
[8:04] because if Starbucks has the name Starbucks LLC.
[8:13] And I could apply, I think, now maybe if it was this close,
[8:17] they might kick it back a little in the state.
[8:20] But if I say Starbucks, you know, one, two, three LLC,
[8:24] I could probably get that name, right?
[8:27] Through the Secretary of State's Office, right?
[8:29] But that's going to give me no right to use that name in commerce.
[8:33] I'm going to get sued by Starbucks if I use that in,
[8:36] at all, really, or anything, especially related to coffee and stuff like that.
[8:41] So there's that scope around just,
[8:44] whereas at the State Secretary of State's Office,
[8:47] if you just change a letter or a number on there,
[8:50] you can get that, you can get the name of the company.
[8:54] Whereas trademark, you have scope.
[8:57] In trademark, what we're worried about is whether consumers
[9:00] are likely to be confused about whether you are associated
[9:04] affiliated with or sponsored by the other company or vice versa.
[9:09] And that's a much bigger scope than just the LLC.
[9:16] And the same thing, you know, talking about domain names, right?
[9:20] So again, a domain name,
[9:23] there's a, there's sort of these registries like GoDaddy and so forth
[9:26] where you can go and you can pay just a few bucks of the register a name.
[9:30] Let's just give you any trademark rights at all, right?
[9:34] And there is a process.
[9:36] If you get a registered trademark,
[9:38] there's sort of a private law process,
[9:40] and then you could take it to court if you had to,
[9:43] where you can kick people off your domain name
[9:47] if you have a registered trademark.
[9:49] So that's something that's valuable for folks to know.
[9:52] In addition, and this is just a little off my area,
[9:56] but I think valuable for folks is that I do think
[10:01] that the domain name stuff is,
[10:05] from what I understand talking to my internet marketing people,
[10:09] it's not what it used to be in terms of importance, right?
[10:12] It used to be very important to have like, you know,
[10:16] Reno Patent Law dot com, for instance, right?
[10:21] And because almost every other month,
[10:24] I get an unsolicited email from somebody saying,
[10:27] hey, good man, you could,
[10:29] all you have to do is send me $863,
[10:32] and you can get, you know, Nevada trademark law dot com
[10:37] or something like that.
[10:39] And in the early days of the internet,
[10:42] that might actually be tempting, right?
[10:44] Because you have that domain,
[10:46] people might be able to remember, go to it,
[10:48] whereas now everything runs through search engines,
[10:51] and nowadays AI, right?
[10:53] So the AI or the search engine is going to find you
[10:57] if your content is relevant, for instance,
[11:00] if you have an awesome podcast, right?
[11:02] Hopefully people will find you, right?
[11:04] I don't know.
[11:05] Something like that, right?
[11:07] And so that's really what's important,
[11:09] the actual domain name less so.
[11:12] But I still have clients come to me that are stressed out about,
[11:15] well, so and so these people are squatting on this domain
[11:18] and they have the dot net one and this.
[11:21] It's less important that used to be still,
[11:24] and if it looks like it's important enough,
[11:26] get the trademark and kick them out.
[11:28] It's a nice to have.
[11:29] And again, it depends on the business you're in,
[11:31] and how important that is.
[11:32] But I hear you, there's a whole lot of other doors
[11:34] into your funnel than just that,
[11:37] knowing that straight up URL.
[11:39] Talk a little bit about, I mean, you did already,
[11:45] I mean, you touched on this,
[11:46] but I want to talk about like, states of state,
[11:48] because a lot of businesses are, you know,
[11:50] like they're not just going to maybe be doing business
[11:53] in Nevada.
[11:54] Can businesses still run into trademark conflicts
[11:57] if another company is in a different state?
[12:01] Is that, you know, are you cross referencing that?
[12:04] But this is actually brings up an interesting topic.
[12:06] Trademark law is a little bit unique, I think,
[12:09] compared to almost any other law area I can think of.
[12:13] In that, there's both state and federal trademark regimes.
[12:18] And they coexist together.
[12:21] First, by contrast, in patent law,
[12:23] we also practice patent law here, right?
[12:25] The federal government has exclusive jurisdiction
[12:29] for all patent-related matters.
[12:31] Everything goes to federal court,
[12:33] one patent system for the whole country, and that's it, right?
[12:36] Same thing, copyright.
[12:38] Okay, whereas contract law, right,
[12:42] is state-to-state, corporations, LLCs,
[12:45] all that is state-to-state law,
[12:47] the federal government doesn't have much to do with any of those things, right?
[12:50] That's all at the state level.
[12:51] Trademark is funny, and actually it has both.
[12:53] You could get a state trademark,
[12:55] and you could get a federal trademark, right?
[12:57] So let's talk about it.
[12:59] To get a federal trademark,
[13:01] you have to be operating in interstate commerce.
[13:05] Okay.
[13:06] What the heck is that?
[13:08] Well, that just means you at least have some sales
[13:10] and clients that are in different states, right?
[13:15] So if you were a purely local business,
[13:17] it may just make sense to have the state trademark.
[13:20] You theoretically might not be able to get a federal trademark,
[13:23] although I have to tell you that the standard for what constitutes
[13:27] interstate commerce is very, very low, right?
[13:31] So for instance, restaurants in New York City
[13:34] have gotten federal trademarks, right?
[13:38] People argue to cases and say,
[13:40] look, you're a restaurant in New York City.
[13:42] You don't have a restaurant in New York City, do you?
[13:45] But they say, well, but people come from all around the United States
[13:49] to go to New York because we have the best restaurants and so forth,
[13:52] and look, there's some truth to that, probably, right?
[13:56] And so they can get it, right?
[13:58] Case that I had, I represented somebody in the smog
[14:01] check business years ago, right?
[14:03] And we had this issue because somebody in California
[14:06] had a somewhat similar trademark and our argument was,
[14:11] look, you guys only do business in California
[14:13] and you're licensed in California only,
[14:15] and you can't do business in any other state
[14:17] because you're not lazy to do so.
[14:19] So you can't push my client around here in Nevada, right?
[14:24] Well, we settled the case, so we don't have a result
[14:28] on how that would have gone, right?
[14:30] But both sides had their arguments, right?
[14:32] And I think both myself and the other lawyer
[14:34] had reasonable arguments on this, so.
[14:36] I would think, I mean, you were talking earlier,
[14:39] about internet commerce,
[14:42] everybody's buying online,
[14:44] would that qualify as interstate commerce?
[14:47] If you're selling something online, sure,
[14:50] it's going to qualify.
[14:51] For most of my clients,
[14:52] we just go get a federal trademark registration
[14:54] and let's not mess around, right,
[14:56] with the state stuff,
[14:57] but it can be a little different if you're just kind of local,
[15:00] especially a more service-based business
[15:02] that would have to be in a state in a certain location,
[15:05] right, that doesn't span over the internet at all,
[15:08] then maybe we just get a state trademark.
[15:11] And you can do both, too, so.
[15:13] And all of that.
[15:14] What about, yeah, I mean,
[15:16] let's just lean into the whoops, you know,
[15:21] I've made a mistake, there's a conflict,
[15:23] and I receive a trademark complaint,
[15:25] or maybe it's a cease and desist letter
[15:28] tied to my business name or something.
[15:31] What's your recommendation in terms of
[15:33] how someone should respond to that?
[15:35] I mean, you got to get a good evaluation
[15:37] of how strong the claim is, right?
[15:39] And that's where you just have to go
[15:40] to an experienced trademark lawyer, right?
[15:43] There's really no other way to do that,
[15:45] but, you know, it just understands
[15:47] the basics of this, right?
[15:50] Whenever we're determining whether there's
[15:52] an infringement or whether two trademarks
[15:54] are in conflict with one another,
[15:56] the test always involves two factors,
[15:59] and these two factors are not like,
[16:01] like you have to have exactly all of both, right?
[16:05] The two factors are how similar or identical
[16:07] are the marks in question, right?
[16:09] And if they're identical,
[16:10] of course, that's stronger for infringement, right?
[16:12] And if they're similar,
[16:13] then you have some argumentation to make, right?
[16:15] And then how similar or identical
[16:17] are the goods and services being offered, right?
[16:20] Just for the most part,
[16:22] you can have coexisting trademarks
[16:25] if they are in totally different fields.
[16:27] And you have to kind of mix these things together, right?
[16:30] And that's why it can become just something
[16:33] where you can make creative arguments here.
[16:35] And you also have to consider the economics, right?
[16:38] And quite frankly,
[16:39] one of the first things I'd look at is,
[16:42] well, how big and powerful is the company
[16:45] that you might be up against, right?
[16:47] And, you know,
[16:49] because these larger companies,
[16:51] they can just simply put a ton of resources
[16:55] against the smaller company and put them out, right?
[16:58] Even if you might have a strong case,
[17:00] you might just not be able to afford the fight.
[17:02] And that's just the sad reality
[17:04] of the legal system we have.
[17:06] We got, like, just a minute left,
[17:08] and I'm just curious, you know,
[17:10] get entrepreneurs out there
[17:12] and I've got this idea for a business.
[17:14] I want to call it XYZ.
[17:16] What steps?
[17:18] What's the best way for them to, you know,
[17:22] minimize the risk of trademark problems later?
[17:25] I mean, one thing,
[17:26] and I've talked about this in the podcast,
[17:28] is getting a good search,
[17:29] and see if there's conflicts,
[17:30] potential conflicts,
[17:31] and evaluate how strong those conflicts are.
[17:33] And then the other thing I think is just equally important
[17:35] is understand how distinctive your name is, right?
[17:39] Because your name is easier to get through
[17:43] the system, the less it describes exactly what you're doing, right?
[17:47] We've talked about this before as well.
[17:50] And quite frankly,
[17:52] even though this is not a legal principle,
[17:54] in general, the more distinctive name is,
[17:57] the less likely there's going to be a conflict,
[17:59] because people tend to pick names that are suggestive
[18:03] or descriptive,
[18:04] or even sometimes generic,
[18:06] as to what the product or service is, right?
[18:11] And I've said before,
[18:13] I understand that maybe in some cases,
[18:16] it's worth it to have your name be more descriptive,
[18:19] or suggestive,
[18:20] or close to generic on what you're doing for business reasons,
[18:24] but just know that puts you in a very weak trademark position
[18:27] relative to having a more distinctive name.
[18:29] Makes sense.
[18:30] That's a good starting point.
[18:31] We're up against time mark,
[18:33] but as always, great to talk to you.
[18:35] Thanks for sharing your expertise,
[18:36] and I'm sure we'll connect on a future episode soon.
[18:40] I'm ready to go anytime.
[18:41] Hey, that's it for today's episode of inherently distinctive
[18:44] with Attorney Mark Goodman.
[18:45] If you want to learn more about protecting your ideas,
[18:48] inventions, and brands,
[18:49] visit Mark's website GoodmanLawNevada.com.
[18:53] I'm Sean O'Connor, as always,
[18:55] thanks for listening,
[18:56] and don't forget,
[18:57] leave us a thumbs up,
[18:58] maybe leave a review,
[19:00] subscribe so you don't miss a future episode,
[19:02] or maybe share a link
[19:04] with an entrepreneur in your world
[19:07] who could benefit from these conversations.
[19:10] Have a great day.
