Episode 138

How to file a Trademark and Protect Your Brand with Morris Turek

Morris Turek is a trademark attorney who helps entrepreneurs, businesses, and organizations avoid the devastating and disastrous effects of being sued for trademark infringement.  He does this by clearing and protecting the names, logos, and slogans they use to advertise and sell their products and services. 

Morris Turek's practice is devoted exclusively to trademark matters, including trademark search and clearance, federal trademark registration with the United States Patent and Trademark Office, trademark registration maintenance and renewal, trademark opposition and cancellation matters, and general brand protection and enforcement issues.  Morris has been practicing trademark law since 2005 and has had his own trademark law practice since 2009.  You can learn more about Morris and his trademark services by visiting his website at YourTrademarkAttorney.com.

Transcript
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My next guest on the business samurai podcast is Morris Turek.

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Morris is a trademark attorney, helping individuals provide legal protection to

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their brands in this very engaging and fun conversation that I had with Morris.

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We actually break down the exact steps necessary in the legal process of

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protecting your brand and some of the dos and don't, we dive into some of the

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surprising things that you can actually be protected and some things that cannot.

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So if you have something that you are interested in getting some legal

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protection, sit back and listen.

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As Morris, very entertainingly discusses the process of brand and trademark.

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Do you enjoy talking business?

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If so, then you are in the right spot.

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The business samurai podcast brings you the stories told by the people

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themselves you'll be immersed in a wide variety of industries from

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Learning how to be a better leader or the personalities behind solving

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the broadband crisis at the business samurai we believe it takes a wide

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Our aim is to not only entertain, but educate for you to recognize how

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Ford in your own unique business.

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Sit back, enjoy, and welcome to the business samurai podcast.

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I am your host, John Barker

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I've seen a lot of law and order SVU, but I haven't seen law

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in order trademark attorney.

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No.

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So what, that would not be a very interesting episode, that's what

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kind of curious, what was the, uh, the drive?

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What was the niche to get into that?

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Cause I, I know a lot of criminal defense attorneys, I know civil, your

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family attorneys and things of that nature, but what was the interest

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in the trademark?

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I fell into it.

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I was working at a law firm in.

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As a law clerk during my second year of law school.

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So in

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your law school days, is there, is there like general courses that no

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matter what type of legal profession you're going into, everybody takes, and

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then you pick pick a niche or was this something that was totally like on the job

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type of on the job training during the first year of law school, you're

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required to take certain classes.

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None of which are trademark law, very general classes like.

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Criminal constitutional things like that.

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But after your first year of law school, you can, you have more

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leeway on what you want to take?

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I did take trademark law.

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I also took copper a law as well, but I took trademark law after I had

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started working with Annette already.

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Okay.

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And so I was, I had a one up on everybody in that class, cuz I was getting

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actually practical experience and I kind of understood what was going on.

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In fact, I ended up getting the highest grade in the trademark class.

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I got a little, I forget what they call it now, but it's a little awards

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you get at the end of the semester for having the highest grade in the class.

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But I.

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Felt like it was a fraud because I had, I was, had so much more experience

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than anybody else in the class.

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Okay.

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But you weren't like teaching the teacher at that

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point?

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I was not teaching the teacher.

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no but it was, but it was, it, it did gimme a really

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nice foundation for the class.

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It was great.

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Oh yeah.

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No,

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I imagine so.

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So how often we, every year I keeping track of like state laws and

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Hey, we've got new Mo motor laws.

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We've got stuff like that.

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How often.

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This trademark and copyright law actually get updated.

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Is that, is it frequently reviewed like other

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areas?

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It does.

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I wouldn't say, I would say law in, in a lot of different areas is fairly

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slow to change recently though, there has been a lot of Supreme

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court, us Supreme court decisions in the trademark and copyright fields.

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For example, just a couple years ago, there was a case having to

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do with the, um, an Asian music, a musical band called the slant.

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And, uh, it was basically about whether the trademark office could.

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Constitutionally prevent the registration of trademarks that are seen as

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disparaging of a group of people.

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This Asian band wanted to register the name, the slant, and the slant

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is a derogatory name for Asians and they were initially refused.

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They went all the way up to the Supreme court on this, and

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they got the law to change.

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The Supreme court knocked down the prohibition against the

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registration of disparaging marks.

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And there's been a number of other trademark cases as well.

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The booking.com case, which was very recent rule that a name plus

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the.com is not necessarily generic.

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So like now it may be possible to register things.

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law.com or computer.com if it's, whereas before you couldn't.

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And so that's been a change in the laws as.

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And I'm simplifying that, but yeah, there's been, but there's

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yeah, there's been some changes.

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In fact, just, yes, just yesterday there was a copyright case out at

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the Supreme court about trade, about copyright registration and about what

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happens if there's a mistake on the copyright registration and the copyright

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registration still enforceable.

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Yeah.

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It, so things are happening at the highest news.

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Yeah.

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Now there's a lot of, there's a lot of trademark litigation because it's a bunch

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of businesses fighting over stuff and there's a lot of trademark litigation.

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Most of that never gets.

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To a decision.

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And most of it certainly never gets appealed where you get like a reported

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decision on an interesting point of law.

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But yeah, there's plenty of litigation and laws do change

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more with trademark registration.

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The procedures have changed a lot, sort of the ways to

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challenge trademark applications and registrations have changed.

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They've there's new procedures called expungement and reexamination

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that were just put into effect this year that have opened.

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Some more avenues for attorneys to challenge, uh, trademark

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registrations that may, that may be fraudulent or UN improperly issued.

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Yeah.

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There's lots of different things.

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In fact, one of the more recent ones too about foreign entities.

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If you're not located in the United States, the trademark office just a

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couple years ago, made a rule that says you have to use a us attorney.

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You can't do it yourself anymore.

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Oh, wow.

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You have to use a us attorney, which of course now opens up a

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nice chunk of business for us attorneys so I'm not complaining

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like somebody that happens to be on the homepage of Google

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if it's gonna benefit.

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If it's just gonna benefit me.

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I'm not gonna, I'm not gonna say no.

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It's been a nice, especially outta Canada and Australia and the UK.

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Sure.

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Because you know, with Amazon and all these other online platforms,

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it's easy for these people to sell in the United States.

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I mean, it's a huge market and now they wanna protect their trademarks

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and their brands and the United States.

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And here I am ready to help.

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Gotcha.

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How often, speaking of going in the Supreme court, how often do these in

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infringement cases actually go to, I don't know if they go to like jury

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trials or things of that nature, how that process work is that frequently

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that happens is there's some risk reward metric that goes, Hey, we're gonna

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really push the button on these guys because they're selling our logo on.

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On something else.

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I imagine this is probably the bigger the company, but how often does

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that happen?

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Yeah.

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Every other area of law, most litigation never goes to decision.

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Never goes to trial, never because number one, it's very expensive.

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Number two litigation is very uncertain.

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You might think you have the best case in the world, but who knows what a jury's

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going to do or a judge is going to do.

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And plus you don't know sometimes, usually these trademark disputes

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and copyright disputes, these are really just business disputes and.

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Do you want a judge or a jury of 12 people who don't even understand your

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business necessarily making the decision?

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No, you'd rather have the two business people come into some kind

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of agreement, some kind of compromise.

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So yeah, very, a tiny percentage ever go to a decision and then even gotcha.

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And then even a smaller, like an infants number go to appeal.

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And that's where all the actions really on the appeals.

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Very small amount.

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I don't know how much this

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is gonna be completely off the wall and I'm by no fart expert.

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But have you been tracking what's going on with the NFTs, the non fungible tokens.

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I'll lead it with that before I go into a secondary, where my question, my real

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question is at.

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I'm not gonna lie.

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I'm not really up to date on NFTs though.

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My associate Kevin is a little more into it and he's, he's teaching

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me a little bit more about it, which is good, but yeah, it's huge.

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Actually a case has been recently filed by, I don't know you say at

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Hermes's or air MAs, H E R MES.

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It's like the fashion brand.

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They recently the expensive brand.

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Yeah, big luxury brand.

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They just filed a suit recently against somebody who has who's been using

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and created a whole bunch of NFT.

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With having to do with one of their bags, Birkin, I'm not sure.

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Maybe somebody out there knows what I'm talking about, but, um,

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they sell t-shirts 500 bucks.

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So

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yeah, I don't, I would never know anything about this, but anyway, but

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yeah, but it's getting big, right?

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Because now if you're not even now these brands, especially these

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well known brands, now they have to protect their trademarks against good.

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Me metaverse things again, I'm not versed, I'm not versed in the

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metaverse, but I, these are all things I'm gonna have to learn about as

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they become more and more prevalent.

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And, and I guess that

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goes into where I was thinking where this, where you see this could head,

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because people are able to sell a share in a, in quite frankly,

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could be a share of their brand.

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One of some of the stuff that I'm hearing about is we've seen

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everybody buying these NFTs of.

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Monkeys or whatever you're going, Hey, I've copywriter.

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This I've trademarked this, but at the same time, I'm gonna flip it into an NFT.

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So you can sell somebody the rights to that.

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I don't know how the level of complication from a legal perspective

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that may probably is starting to turn into that now, but could really

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explode over the next, next several

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years.

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Yeah.

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I, if this is gonna be huge, as well as like things like crypto

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current, this is a big one now, and lot, lots of other different areas

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that are starting to really grow.

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There's a lot of intersection from what I can tell between trademark

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copyright NFT and these virtual goods, and they're all gonna play together.

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I did recently just see a news article.

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I think it was on, I was watching TV.

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I think I saw it on Fox news.

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It was just a story yesterday about a.

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The somebody was killed.

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The killing of somebody was streamed online, but it was a young woman.

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And the father of the victim is trying to get the media

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to stop playing this footage.

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Now, the father is not the owner of the footage of the video.

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He didn't shoot the video.

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Somebody streamed it, whoever streamed it is on is the owner, whoever he

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sold it to, but it's not the father.

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and there's.

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And then, so he was talking about how he was speaking with some legal counsel and

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he, instead he wants to try to make an NFT out of this video in order to try to

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prevent it broadcast and dissemination.

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Now, I didn't really understand it because he's not the copyright owner.

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How can you make just an NFT out something you don't even own?

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I didn't quite understand that.

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And maybe somebody out there can explain this to me, but it was interesting

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how they're trying to use NFT.

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To try to circumvent somebody's copyright in this footage.

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That, and that's something I had been thinking about going even

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with what I've been doing with you, with the business samurai logo

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and, and the name together going.

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What really is what would really stop somebody that got creative and said, Hey,

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it's, that's cool looking or whatever.

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I wanna screw with somebody.

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And they go through the minting process, I believe is the term and turn it

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into that, that fungible token, what is to stop somebody from doing that.

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And then you get a dispute outside of me going, Hey, Morris, man,

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you got that F where's that stuff on the us website that I can go.

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I did.

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Three years ago.

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I'm wondering where that intersection's gonna

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be.

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Yeah.

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It's I think it's brand new.

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I don't think anybody really knows.

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And until we start getting cases filed and decisions from judges and juries and

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especially those that are appealed, we're not really going to have a lot of answers.

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Certainly this isn't gonna, I think it's unlikely that this stuff is

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gonna happen to the quote unquote, the run of the mill trademark.

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Sure.

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Because what's the value, but I think, I think luxury brands, a very

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well known brands, famous brands.

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Yeah.

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I think they're gonna run into a whole bunch of it.

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Like I said, ERMS is ready, running into problem.

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Interesting.

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Yeah, no, it's gonna be inter and also from the, you just see the

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way the political process works.

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You got a lot of aging lawmakers that may be going.

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What is this having watched enough congressional testimony in my life

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to go, all right, dude, you're talking about an iPhone as you're

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flashing around your Android.

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yeah, don't have, I don't

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have a lot of hope

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for blockchain technology.

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Yeah.

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But I tell you, it is very interesting.

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And like I said, my, uh, my associate was younger than me.

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He's seven or eight years younger than me.

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He's more into it.

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So he's like I said, he's educating me on it, which is.

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Cool.

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All right.

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Let's shift gears a little bit.

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So I just got an idea or they did just in point blank, I sit there and had an idea.

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I had read a book that's like you, everybody should have some sort

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of something that they can trade.

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And it was the, from a consulting standpoint, that was something

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that they could lay back on.

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I can't remember the reasoning I had read that years ago.

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When, when should a company reach out with something that they've developed

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and go, Hey, I really need to get, look into getting some protection behind

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this, uh, my brand, you know what you know, just to give some background,

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obviously trademarks are brand right.

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Trademarks are names or logos or slogans that are used in

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connection with the advertising and sale of products or services.

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And really.

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Unless you're using a completely generic name.

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Like you run a pet store and you called yourself pet store.

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And if you did that, then you don't really have a trademark, but right.

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Most people don't do that.

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Most people come up with some cool little name for their business or whatever

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their organization, whatever it might be.

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So everyone's got a trademark.

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The question is does, when does it come time to want to register it federally,

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protect it federally and registering that trademark with the United States

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patent and trademark office, the S PTO.

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Gives the owner of the trademark, the exclusive nationwide, right?

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To use that mark in connection with the products and services that are listed

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in the trademark registration be who might only, let's say, for example, let's

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say somebody has a restaurant and they call it ABC restaurant, terrible name.

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Hopefully nobody did that.

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Let's say if there was an ABC restaurant and they're just operating in, say in St.

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Louis.

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Without a trademark registration, their rights will extend to the St.

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Louis Metro area.

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Essentially.

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However, if you get the trademark registration, if you register the ABC

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restaurant federally with the United States pan and trademark office,

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then your rights now have expanded throughout the nation, not just St.

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Louis.

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What does that do?

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It blocks other.

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People from using a similar name for similar services

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anywhere in the United States.

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And if they do then the owner of the trademark has the legal

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ability to stop that infringement.

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So that's the power of the registration.

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So when do you want to get the registration?

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There are business considerations and there are legal considerations.

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Let me talk about the legal considerations.

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First legal con, the legal consideration is you wanna file.

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As early as possible with the trademark office, because the day

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you file is the day that you reserve the exclusive right to use the name.

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So if you wait, it's possible that somebody else might file the trademark

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application for a similar name, for similar products or services,

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which would then exclude you.

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From using your name for your products and services.

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So from a legal perspective, it's really good to file as early as possible.

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Even before you start using the name.

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Cause you can file a trademark application on an intent to

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use basis to reserve the name.

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It doesn't have to be in use yet, which is what I did, which is what

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you did and which is what I'd say.

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80% of my clients do.

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And the intent to use system is great.

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It's great for businesses now.

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Excuse me.

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Now, from a business consideration now we're really talking.

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Is my business even gonna be successful.

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Am I even, am I even intending to operate outside of my local area?

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If I'm a gardener and I only provide gardening services in my local area,

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I don't think it's probably worth getting a trademark registration.

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What do you need for, oh, you have your little, you have your little rights in St.

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Louis, Missouri, and you're fine.

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But if, if you sell products and that you could sell those products on Amazon

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and anywhere else, and they could be shipped anywhere in the country, then I

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think getting a trademark registration.

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Early makes sense.

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Now, maybe now from a business consideration, maybe your

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product is gonna be a dud, right?

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So now you start selling these products.

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You're not making any money and now you spend money on a trademark application

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that isn't gonna go anywhere because you're gonna fold your business.

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So what do you need?

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The trademark registration for nothing.

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So that's, so it's your balancing, the legal and the business considerations.

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Gotcha.

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Yeah, no, that totally makes sense.

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What, for people not familiar with it in a condensed form, what is the

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process like to go to, to go register?

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The first thing we generally recommend doing is performing a search on whatever

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trade market is that you want to register some kind of name or slogan

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or tagline or something like that.

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We, we would generally wanna do a federal comprehensive federal trademark search

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on the name to check for conflicts or issues that would prevent the

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successful registration of the mark.

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And that search is.

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We usually have that kind of, those kinds of results in about a week.

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And then based on those results, if the trademark looks clear, then we can file

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a trademark application with the us PTO.

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And that reserves it as of the date of the filing.

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Now it's gonna take the entire registration process is probably gonna

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take over a year and sometimes quite a bit longer than a year, depending

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on a lot of different circumstances.

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But again, all of your rights date, back to the filing date of the application.

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So let's say it took three years to get a trademark.

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All of your rights date, back to the very, the day you filed.

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And if anybody started using a similar trademark for similar products or services

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during the pendency of the application, then that person would be an infringer

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and you could stop that infringement.

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Yeah.

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Yes.

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And I remember when we were talking back, I, I wanna say the initial

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kickback for me was about 18 months.

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I believe.

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What are some of the I'm guesstimating, cuz it's been long enough now, but what

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are some of the extenuating circumstances?

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Why does that process take so long to hear back from

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them?

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Yeah, there was in your case, there was a little bit of a wrinkle, but

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generally speaking, it takes a right now it's taking the trademark of

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office about seven or eight months to even look at your application.

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Okay.

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Okay.

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Now, once they look at it, let's say everything's good.

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They didn't, they do their own search.

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They didn't find any conflicts.

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Then it goes through, what's called a publication period, which is a

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30 day period where anybody can challenge the application or oppose

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it, assuming nobody opposes it.

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Then it goes to the next phase.

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If the trademark application was filed on an in use basis, meaning

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that the trademarks already being used at the time you filed your

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application, then the registration issue.

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But if it wasn't being used at the time you filed the application, then what's

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called the notice of allowance issues.

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And then you have to show use of the mark to get the registration.

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And you have six months from the notice of allowance date to show use.

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And if you can't show use in those six months, you can get an

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extension for another six months and you can actually get up to

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five extensions, six months each.

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So you can actually hold the trademark application open.

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If you wanted to for four or five years from the date that you file, if it's an

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intent to use application now, what are some of the extenuating circumstances

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that makes that process even longer?

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Let's say you get a rejection, let's say the trade bank, office reviews, your

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application says, Hey, we think there's a confusing and similar trademark.

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That's already registered.

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Then if the owner of the application wants to try to argue around that

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rejection, argue against it, then we can prepare and file a response.

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Of course.

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That takes time.

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And then it takes the trademark office time to review that response.

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And so that, that makes the process longer.

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Another thing that would make the process longer is if somebody challenges the

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application, opposes it, or if somebody in your case, John, what happened with you is

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that someone actually filed an extension of time to oppose your application.

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If I remember correctly and something like that.

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Yeah.

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Something like that.

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It's been so long now.

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I just, I remember something weird.

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somebody

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filed an extension.

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So they were considering somebody else was considering opposing, but chose not to.

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So they stopped your application.

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I think it was for like 90 days.

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And then they decided not to file an opposition.

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And then your application went through the process.

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So that, that delayed it by another 90, 120 days.

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So those are the kinds of things that make thing, make the process longer.

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But again, people can get hung up on, oh my God, this is taking

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so long, blah, blah, blah, blah.

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It doesn't matter how long it takes from a legal perspective, it could take 10 years.

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All of your rights are gonna date back to the filing of the application.

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In fact, I had a client recently whose application has been put

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on hold for a number of reasons.

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I won't go into it, but for a number of reasons, they it's been on hold

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for five years, over five years now.

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Wow.

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And it's just the way the process works.

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There's not when this happens.

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There's not a lot.

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We can do.

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We have to just play the waning game, but.

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It all worked out the end.

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Excellent.

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Okay.

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We go through the process.

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You get approved, it's in use what is necessary then to keep it through that

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renewal period, what are they looking for?

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How often do you gotta go through that process to check in and say, yep.

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Still active I'm Pepsi.

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I'm the Pepsi of whatever I'm doing is still going on.

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Sure.

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What's what's that process like?

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Yeah.

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So currently the first renewal or main they call it really

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a maintenance period is.

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Between the fifth and the sixth year of registration.

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So once you get your trademark issued, you really don't have

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to do anything for six years.

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So you have to maintain the registration between the fifth

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and sixth year of registration.

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And that's that requires filing, what's called a declaration of use.

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And that basically tells the trademark office that yes,

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I'm still using the trademark.

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Here's some proof of that.

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And then they will renew your, you know, or maintain your registration.

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The next period is really a renewal period and that renewal period is

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between the ninth and the 10th year of.

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That renewal period again, requires that you show use of the mark you file.

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What's called again, a declaration of use and, and a request to renew the

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registration and assuming it's accepted, then your registration doesn't need to

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be renewed again for another 10 years.

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So it's not really onerous or it's even not even all that expensive when you're

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divided by the number of years that the registration's active before you have to

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do anything, it's not even very expensive, but you have to remember to do it.

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Thankfully, the trademark office does send out reminders over

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email to tell you, Hey, it's time.

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If you have an attorney.

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Then it's in their system.

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So we know we send out reminders, but yeah, it's, it's certainly not as onerous

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as some other types of law where you have to renew things every year or file

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annual reports on your corporation.

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Things like that.

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Yeah.

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It's real.

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It's actually really pretty simple.

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San four.

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Yeah.

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Cool.

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One of

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the things.

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I heard something, I can't remember what I was listening to about somebody

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filing a very weird trademark thing.

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And I know the process that we had went through when you were looking up

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business MRI, and we had to combine the name and the logo versus having

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them as two separate entities.

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I do that, but I came across.

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I don't know if you could see it on your screen.

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Um, I trying, I was trying to find the recent one of what I heard on

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the radio and it was so obscure.

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I'm like I'm sitting there going, how can you trademark that?

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That's how.

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The phrase was, but coming and during that research, I came across this

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website that was like, T-Mobile has copyrighted the magenta color.

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And I'm how, how wire, how did they get away?

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How did those bigger companies get away with copywriting color?

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Is it very limited that I can't be a telecommunications company selling

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cell phones and use magenta because they copyright not the name, but the.

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Like the hex color.

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I don't, I what's the nuances when you start getting into splitting

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hairs with stuff like that.

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Yeah.

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Just to be clear, we're not talking about copyright.

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We're only talking.

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This is trademark, so they didn't copyright though.

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It's trademark.

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But see, and this is me being stupid on how I'm asking the questions.

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Yeah.

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I just wanna clarify, so you, right.

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You cannot copyright a color.

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That's not possible right now.

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What you can do though, is.

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You can protect a color as a trademark for specific products or services.

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T-Mobile's magenta color is an example of this people.

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Now it's very hard to do, right?

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You have to be able to prove to the satisfaction of the trademark office that

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consumers associate this particular color.

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With this particular product or service now that's very difficult to do, right.

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And if you're just a small business, you that'd be impossible

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for you to prove, right?

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Sure.

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But when you have millions and millions of customers and you do surveys and

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you say, Hey, if I show you this color, what service does this remind you of?

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And they say, T-Mobile well, that's very good evidence that

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this has now become a trademark.

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People associate this color with a very.

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Service or product from a very specific business.

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Another example of this is the Kodak yellow.

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I know I'm dating myself here, but if you remember, like the film boxes from Kodak,

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there were all this like golden rod that was also a trademark of the Kodak company.

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Another example is the pink color of Owens, Corning insulation,

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home insulation, that pink color, the pink Panther insulation.

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Yeah.

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That pink color is a trademark of the Owens corn.

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Corporation because people associate that pink color with that

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insulation and only that insulation.

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And so over, over time that became a trade.

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One of the ones I found interesting on the screen was

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the term superhero.

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Oh yeah.

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Yeah.

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But it was, it's a Marvel it's DC or Marvel.

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I think it's both.

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Oh, is it both?

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Yeah.

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Oh, is that what it's okay.

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That was what

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I, it was just, it happened to be on this again.

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I was not looking for this specifically, but I found that to be interesting that

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Marvel in DC had trademarked the term a superhero that's particularly in this

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particular movie age that we.

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Yeah.

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That's yeah, that, that's absolutely true.

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And there are many other types of trademarks in which I didn't touch on, but

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cuz they're, they're more rare, but like for example, sound can be a trademark.

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A good example is the, yeah.

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The NBC chimes, ding, ding, certainly a trademark.

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If I didn't have to say NBC chimes, I could have gone ding, ding, and you

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would've known exactly what I was talking about or like the red Robin red Robin.

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Yum.

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Also a sound trademark, the law and order

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the dumb was on the yep.

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Was one.

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Yep.

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Yeah, absolutely.

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Those, those are trademarks.

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Also.

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Scent can be a trademark.

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Now this is very rare, exceedingly rare, but very recently I'd say within the

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last two or three years, the company that manufactures play dough, I think

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it's Hasbro, but don't quote me on that.

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They were able to achieve a reg, a trademark registration

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for the scent of play dough.

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And when you think about it, You and I, we're not kids, John and we probably

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haven't smelled Plato in decades.

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I know I haven't, I don't have kids.

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Maybe you do.

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I don't know, but I haven't smelled, I haven't smelled Plato in decades,

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but I still know what Plato smells.

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Like.

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If you put it, if you put something in front of me, cover it up and I

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smelled it and it smelled like Playto, I'd be able to tell you that was

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Playto . And so they were able to get a trademark Reggie, because people

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associate that scent with that product.

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So it's a trademark.

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Is that I guess then perfume and cologne companies would do things of that nature.

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If you've got something that was very distinct, you could,

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it was very distinct.

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It's gotta be very distinct.

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But again, like with the problem with perfumes and clones is

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that people expect perfumes and colognes to smell a certain way.

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Sometimes flowery, sometimes spicy, whatever it might be.

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So it's harder to prove that you actually, that a consumer actually

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associates a very specific.

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With a very specific product.

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I think that's tougher to do.

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I'm not saying impossible, but when you have something, like when you

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have something like Plato, a clay, clay doesn't usually have any scent.

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It's like it's.

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And if you do, it's like, you don't think of the scent as being a part of the

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product that just happens to have a scent, cuz that's the way it was manufactured.

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And it just smells that way.

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Right.

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But that's not with play dough.

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It's like people know what that scent is.

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Like you can open up the canister and be like, oh yeah, it's the Playto scent.

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So that's, it's a little bit different than for.

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Clones and perfumes, cuz those are supposed to smell.

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Whereas Clay's like, that's not the purpose of the product.

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Got it.

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Something that I had an issue with this was a long time ago.

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And I'll be honest with you now that you've corrected me a couple times.

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I'm still confused.

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A little bit between copyright trademark.

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Do you

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want me to give the difference real quick?

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Yeah please.

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Okay.

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So trademarks are names, logos, slogan.

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Smells colors that are used to advertise and sell products and services.

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They're used to distinguish between certain types of products and services.

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So for example, if you had two, two dark bottles of Cola on the store

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shelf, And none of them had a label.

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You wouldn't know if you were buying Coca-Cola or Pepsi or Dr.

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Pepper, whatever.

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We need trademarks to identify products and to distinguish between them right.

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And services as well.

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You need to know when you go to a restaurant, it's gotta have a sign

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on it, or you don't know a restaurant you're eating at, it's gotta say

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McDonald's or burger king or taco bell.

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See all the fancy places I eat.

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So then, so that's a trademark.

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It identifies the source of the product.

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And.

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It helps consumers distinguish or between products and services.

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Now what a copyright protects original works of authorship.

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So for example, books, Movies, music, drawings, paintings, sound

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recordings, things that are original things that are more creative though.

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Copyright doesn't.

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It doesn't necessarily have to be creative.

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But when you think about copyright, you think of like original creative works.

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Okay.

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And I guess this is, and I've seen on your website, but.

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I guess explain the difference then of when you would use the

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TM versus the C and the circle.

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And I think that's why I, I see, I guess once you get it fully adjudicated, or

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I'm gonna use the term adjudicated, but you can slap me on that one too,

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to start using the C versus the TM.

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Can you explain a little bit of how you're you're

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to identify it?

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Yeah.

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You're crossing two different types of intellectual property, right?

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The circle C is for copyright.

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So when you write a.

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You might say on the, in the inside cover, you're gonna write if you're

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the, if you're the author of the book, if you're the copyright, if you're the

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copyright owner of the book, you're gonna write circle C and then if I wrote

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it in 2022, I'm gonna write 20, 22, and then I'm gonna write Morris Turk.

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That's copyright notice.

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It tells people who owns the copyright in the book.

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Okay.

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When you watch a movie at the end of the credit, it always says copyright,

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whoever Sony pictures that tells you, who owns the copyright in the movie.

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Now, the TM is a symbol.

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You may choose to use in connection with your trademark.

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For example, if I open up a restaurant called ABC restaurant, I could put

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a little TM next to ABC restaurant, regardless of whether it's registered

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federally as a trademark or not.

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I can use the TM if you have a federally registered trademark.

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So let's say I federally register ABC restaurant with the U S PTO.

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Then I can use the circle R symbol, the R and the circle.

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So copyrights a C in a circle.

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Trademark is R in a circle.

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Gotcha.

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I'll save my story then.

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Cuz the issue I had years ago was a copyright issue.

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Photos that does not apply necessarily to this now that I know the differences.

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glad I could clear it up.

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Yeah,

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no thank you.

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That that helps because sometimes I can be slow and dense on certain things.

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that's very confusing.

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In fact, it, it doesn't help when you hear you're on the listen to the news and.

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They use these terms, patent, trademark, copyright.

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They just use 'em interchangeably if they're the same thing and

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it's very confusing, but yeah, it's, they're very different.

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They protect different things.

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So yeah, it, it's important to know the differences with these things.

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Once you've

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got it, you've gotta approved everything's in the system and let's say you have

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built up, let's say you have built up your brand to be at a significant

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point where you're going out there to make sure there's no infringement.

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How do you do how.

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Maintain that knowledge of somebody is doing something they're not

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supposed to with it when you're a

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big, when you're a big brand.

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That's, you're the Nike of the world, right?

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Google of the world, the Amazons of the world.

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They have teams of attorneys that hire.

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These trademark monitoring and trademark watch services that basically scour

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not only the trademark's records, but also uses throughout the internet.

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They have these tools that basically will try to find infringements.

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And then as the trademark owner, you can address those infringements.

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Now if you're a big company with tons of money and tons of attorneys.

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Okay.

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You can do that all day when you're a smaller, when you're a smaller

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outfit, it's not expensive to monitor, to have a monitoring service.

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But the question is, what then do you do with that information?

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Let's say the monitoring service finds a few infringements of your mark.

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Okay.

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You're a small fry.

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Do you have the money to actually pursue this?

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Do you have the money to go to court?

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A lot of my, I know I tell you a lot of my clients don't and I represent

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very small and start businesses.

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So it's, it's one thing to have the knowledge of the infringement,

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but then what do you do with that?

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I generally, I don't believe, and some attorneys might disagree with me,

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especially ones that represent larger businesses, but I don't think it's a great

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idea to just go seeking out infringement.

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I don't think that makes a whole lot of sense.

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What I do think makes sense.

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If you run into one, like for example, a customer comes to you and says, Hey, did

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you know that somebody's using this mark?

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And it's very similar to yours and it's, and I thought it might have been you that

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shows that there was maybe some confusion.

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And that's when you might wanna look into that and maybe take some action because

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it was brought to your attention, but to just go seek these things out, just

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to be sending cease and desist letters and getting into litigation, doesn't

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seem to me to make a lot of sense.

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Is there fair use with some of these ones, particularly with the bigger

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ones where if you're doing news stories or things of that nature where you

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can actually use them without facing

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consequences.

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Yeah, absolutely.

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There's fair.

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Use both in copyright and trademark, but yeah, absolutely.

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If you're reporting on something about.

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Say Nike shoes, you have every right to use the term Nike to describe

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those shoes, to refer to those shoes.

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So what we call a nominative fair use, and there are other fair uses.

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I parody satire, things of that nature that you can use, use

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trademarks to make a point.

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Those are not really the, those don't tend to be the.

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Infringements that businesses, especially even like larger

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brands care about as much.

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Yeah.

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They may not be happy with a satire, a parody.

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They're not gonna attempt to really stop.

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You really?

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They're more concerned about these things, especially like, if you're like

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the Nikes of the world, like counterfeit products coming into the USA with the Nike

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SW on it, that's what they wanna stop.

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Even though these big companies, they have limitless resources.

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I think they do tend to pick and choose their battles, especially in the internet

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age where it's just whackable you try to stop one thing and another pops up.

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So I think it's made them more.

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I think the internet has made them have to choose, pick and choose

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their battles a little bit more than they maybe they used to.

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Yeah.

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Cause they did.

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They'd spend all their they'd spend every day, all day, just try to

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crack down and it's never gonna.

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I've seen a mix of this.

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And again, there's gonna be bleed over between some trademark with the brand,

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as well as copyright with what I see on YouTube, where what I see some creators

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complain about getting dinged on for fair use, and then I'm watching another one.

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Upload an entire movie trailer to their channel and it's got a

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million views, but the guy that's got 10% of that is constantly

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getting the, the demonetization.

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So are they picking chooser, picking winners and losers in that battle?

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I've tried to reach out.

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I actually wanna talk to some of them from a business standpoint on how that

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functions, but it just felt, it feels like the, some of those companies on

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that enforcement front are picking winners and losers in that category

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because they don't like 'em or not.

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I don't know.

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Yeah, you might be right again.

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And that happens.

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That's more on the copyright side than the trademark side, right?

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Yes.

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Correct.

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Yeah.

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Which I don't, again, I do some copyright work, but the vast

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majority of my practice is trademark.

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The bigger problem in the trademark arena right now are people who register

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trademarks with the trademark office.

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And maybe these trademark registrations are questionable at best.

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Okay.

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And downright fraudulent at worst.

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And then they use these registrations in an unfair manner to take down their

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competitors on Amazon and Etsy and other selling platforms, which then, you know,

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so then they know they're clearing their competition and what's bad about it.

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Is that the, the victim, well, I'll call the victim whose stuff was taken down.

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These platforms, like it's impossible to get it back up without the, without

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the person who sent the take down notice without their consent, without their

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permission to put it back up, it's almost like guilty until proven innocent.

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And I kinda get it like these companies don't wanna be AERs of

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IEP disputes and really, should they be no, that's why we have courts.

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So, and if I was running like Amazon or et sea, or, and some of these.

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PLA eBay, things like that.

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I, I wouldn't just take down listing because somebody showed

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me a trademark registration.

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I would at least give the other side a opportunity to

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respond before taking it down.

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But these platforms they're so crazy.

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They're so crazy.

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And then it's it's and then it's imp, cause I represent some bigger Amazon

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sellers and I've had times when somebody with a fraudulent, literally a fraudulent

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registration has taken their stuff down.

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They have had so much trouble getting their stuff back up.

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Luckily some of my clients are such big Amazon sellers that they have some,

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they got some pull , they got some pull and they know who to talk to at Amazon.

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Sure.

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And they can get these things resolved, but your average person.

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Oh, my God.

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It's like the wild west.

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It's like the wild west.

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And it was funny if I just say one thing, these places like Amazon and

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et even they, but they some, for some reason, believe that just because

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you have a trademark registration means that you have some legitimate

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trademark rights that isn't the case.

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Trademark registrations are.

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Obtain fraudulently all the time.

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There's false and misleading information and trademark registrations all the time.

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It's also possible that someone who got the trademark registration

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actually achieved it after somebody had been using it.

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Let's say I've been using a trademark for 20 years and I never

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registered it right with the federal trademark, with the trademark office.

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And then somebody else gets a trademark registration for the same name,

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for similar products or services.

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I was first and now you're taking me.

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But these platforms like Amazon, they don't care.

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They don't even consider it.

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They just take down your listing and then it's up to you to figure out what to do.

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Gotcha.

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Is there something, if somebody's starting out and they're going, what's

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out there, I want to be creative.

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I want to come up with something.

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Is there an easy way for them to start doing some pre-research if they know

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they want to go down the legal route and not catch get themselves in trouble?

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Yeah, they can go on the tra office's website.

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They have a search, a very basic search system called tests and they

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can type in a word or a phrase and kind of see what, what comes up.

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See if they see any conflicts.

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Now, again, you can have to understand what you're looking at,

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and this is the problem, right?

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You can, you might get a list of a hundred marks, right?

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And you could go through each of the trademark applications or

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registrations and see what it says.

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But unless you, unless you are familiar with trademark registration, a lot of

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the information in these registrations and applications, aren't gonna, isn't

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gonna make a whole lot of sense to you.

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It would be like putting, it would be like putting like a book of Chinese in front

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of me and saying, Hey, interpret this.

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I can't read Chinese.

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So I'm not gonna be able to do that.

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The better option is to have an attorney do a search, um, on

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whatever it is that they wanna use.

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And then that attorney can give you an can do the search and then give

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you an opinion as to whether there are any conflicts or issues with

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using and, or trying to register, uh, that trademark with the S PTO.

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Awesome.

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Now, if somebody reaches out, is there.

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Is there like a preferred list of things that you would prefer

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that they have together, that to give you right off the gate.

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Is there stuff that may, that annoys you, that somebody comes in and

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says, Hey, I've done these things.

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And you're like, why did you do all of this stuff you made my job harder.

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How do you prefer to new clients to approach you with the process to make it.

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As simple as possible.

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Yeah.

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I think the internet has been very good and very bad.

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So words of wisdom yeah.

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Yeah.

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So everybody doctors must feel this way too.

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When the patients come in and say, man, I was web emptying

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this and I know I have some rare, some rare disease out of Africa.

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I must have it.

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Cause I have all these symptoms and then doctors, like I have a

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cold, so it's so it's so it's and, but is it great that people can

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research and learn on the internet?

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Absolutely.

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It that's wonderful.

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The same is true for trademark.

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There's a lot of information out there.

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My website is Chuck full of information about trademarks and

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the trademark registration process.

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But when people come to you and they've done all this research and they believe

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that they understand what's going on the.

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Nine times outta 10, they really don't.

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They don't understand the, obviously they don't understand the nuances cuz you know,

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unless you do, unless you're an attorney and do this all the time, you don't

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really understand the nuances, but they also don't always understand the basics.

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I don't expect them to know the basics.

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They don't even have, they don't need to know anything about trademarks.

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When they con contact me, I can educate them.

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It doesn't take me very long to do.

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But the problem no comment.

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No, but the problem is that people come to you and they think they know,

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and then they, you say, and then you say something like, it's great

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that you did this research and it's great that you used tests and you

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didn't apparently find any conflicts.

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Great.

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I recommend now that we take the next step and do a more comprehensive

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search to make sure that there are no conflicts or issues.

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And then they say, oh no, it's fine.

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I did my search.

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I did my research.

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It's all.

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You try to explain to them.

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Yes, you did your search, but that's a comp that's a cursory search.

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That's a rudimentary search.

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You try to explain it to them.

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But sometimes they feel like they've done everything they needed to do.

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Okay.

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You're not gonna convince some people fine.

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The people who come to me are the people.

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I like the most, the people that are easiest to work with.

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Other people who are open minded, people who have maybe done like a little

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bit of research and kind of gotten interested, but they have questions.

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Of course, you're gonna have questions they're willing to listen.

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They're willing to be open and honest about what they want to do.

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Sometimes people come to me and they wanna be a little shady.

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They wanna try to do something, maybe a little shady, which is fine.

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Maybe we can do something shady.

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We've gotta look into it.

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But then they feel like maybe even a little embarrassed talking about it,

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especially if the product or service may be a little, uh, risque that's possible.

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But yeah, the, yeah.

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So if the people come to me that I.

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We have the most success with are the people who have done maybe a little bit of

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research, have an open mind and are re and are willing to be open and honest with me

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about what they're wanting to accomplish.

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Awesome.

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You actually triggered a couple things as you were talking.

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One of the ways I get around the WebMD conversation is I actually

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will say, Hey, listen, I read the medical journal from Johns Hopkins.

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that usually goes a little better than web.

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Yeah.

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I don't know if there's a, I don't know if there's high research for

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the trademark or WebMD version of a trademark, but jokes aside, you trigger

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something on things that maybe you risk.

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A, I got a buddy of mine.

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State of Virginia is starting to loosen its rules around cannabis.

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And the use of that.

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Are there any, and I can use that as an example, because each state

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is different and of course federal is still completely illegal.

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Are there things that prevent you in those type of industries where state and federal

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law don't match up, that you gotta be?

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On the lookout for when you do your research or do you just

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gotta stay hands off completely?

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Yeah.

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This is actually a huge issue right now with the CBD and

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cannabis industry with trademarks.

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So the rule from a federal standpoint is that you cannot register a

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trademark for any product or any service that is illegal under federal.

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Okay.

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Now that would not prevent you from registering the same trademark for

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the same federally illegal product or service at the state level.

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Every state has their own trademark registry.

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So if you wanted to register your trademark and let's say your trademark

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is used to sell cannabis or cannabis related products, and you did that

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in California, where it's legal.

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Okay.

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You could register your trademark in the state of California and

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you would have whatever rights a.

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A California state, trademark registration provides you.

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Okay.

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You will have no rights at the federal level zero because

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it's an illegal product.

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Now the question though is what is illegal.

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And a lot of people don't even know what's illegal because

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the federal government isn't.

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Enforcing federal law, right?

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If the federal government was enforcing federal law, there'd be no cannabis

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dispensaries anywhere and anywhere in the United States, it'd all be shut down.

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It's technically illegal and anything that's illegal on their federal law is

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cannot be legal under state law, right?

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It's a supremacy clause of the constitution.

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A lot of people, here's a really, this is a really, this is a very

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common one that I've run into.

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I run into once a month.

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People want to register.

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Vitamins and supplements that have C, B, D in it.

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Technically anything ingestible food drink, supplement pet

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products is technically illegal.

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Under federal law, if it contains CBD.

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Okay.

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Because it violates, what's called the FDCA act at the federal drug

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and cosmetics act right now.

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Is that gonna eventually change?

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Yes.

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It's eventually gonna change, but technically it's illegal now.

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It's illegal.

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Of course not.

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You go to every, you go to the biggest stores in the world, Walmart, and you

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can buy supplements with CBD in it.

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Yeah.

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You can buy drinks with CBD in it.

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No, one's enforcing this zero.

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There's zero enforcement, but it's technically.

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Interesting.

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So you cannot register a trademark for a supplement or a food product or a

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beverage product that contains C B D.

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Now you can register a trade, the same trademark if it was used in connection

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with a topical product that contains CBD.

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So it's a lotion that contains CBD perfectly legal.

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You can register.

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I'm gonna go tell buddy of mine.

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He has the only gourmet popcorn with CBD in it in the United

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States to our knowledge, really?

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I was talking to him about it yesterday and I'm gonna say, all

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right, you're the, you may be on the good jump of something here, but

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you can't do anything with it yet.

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you can't register

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the train right now.

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What's a way of getting around this.

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Well, registering at the state level is a way of getting around it.

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If the product's legal in the state, another way of getting

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around it to try to get some initial protections while the federal.

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Gonna be, cause eventually obviously marijuana's gonna

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be legal and federal law.

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Sure.

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CBD it.

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This is all gonna be legal eventually.

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So one way to do this is to file a trademark application for the name

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that you use for your illegal product and you register it for something else

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that is legal, that you're providing.

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One thing that's very easy to do as start a YouTube channel under this name and just

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put out videos about your CBD popcorn.

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Oh, and then we're going, and then we're going to register the trademark for

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providing online videos in the field of popcorn and then you've now got a

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trademark registration for this name, for videos in the field of popcorn.

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And then when the law changes, then you can file a trademark application for

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that name, for popcorn, for CBD popcorn.

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And it's probably gonna go through just fine.

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It also prevents others from registering a similar name while

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we're waiting for the law to change.

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Awesome.

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Okay.

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I got some phone calls to make later.

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yeah.

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Maybe somebody just send your way

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yeah.

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Yeah.

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You just do something.

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Start a blog about popcorn, literally.

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Any, anything that would be easy to do, that's legal that has some

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relationship to your product.

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That's crazy.

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Yeah.

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Start a podcast.

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Like literally anything, sell some clothing with that name on it.

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Whatever.

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Gotcha.

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Oh, man.

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Hey, this is, this has been fascinating.

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This has been awesome in getting me to get corrected in my head

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between the differences of some of these things that even now years

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later, I'm still confused on.

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Clearly what's the best way for, uh, people to reach out connect.

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You got so social media

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to follow on.

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Yeah, I do.

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You can just look me up if you've just type in Morris, Turk

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on Facebook, Twitter, YouTube.

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TikTok LinkedIn, I'm there.

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You TikTok dancing.

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have one video of me dancing.

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It's not pretty, but it's there.

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So yeah, I just recently started TikTok, which is fun.

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It's it's, I'm probably too old for it, but it's fine.

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And then, and then obviously you can connect with me by calling me

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my number's 3 1 4 7 4 9 4 0 5 9.

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And my email address is Morris.

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Your trademark attorney dot.

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Awesome.

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And like I said, as it stands, now you are number four or five on

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the Google first page by just, all you even have to do is just Google

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trademark attorney as the keyword.

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And you popped up

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on the first.

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It's good to hear.

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I don't check.

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I don't check my rankings all that often, but I that's good to hear.

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Yes.

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I wonder if I'm ranking like that in other parts of the country, or is

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it just like in the St Louis area?

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Not sure.

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They,

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they, they Google's changed some stuff around they've front, loaded it with ads

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at the top, more so than it used to be.

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I've noticed it.

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And I've seen other tech guys talk about it as.

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But you're definitely in the organic searches on page one

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on the most important keyword,

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probably for your entire business.

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Hey, , can't complain about that.

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Yeah.

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So that's awesome.

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Yeah, I appreciate the time.

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No, it's my pleasure.

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Thanks for having me.

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This has been fun.

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Yeah, it was a really good time.

About the Podcast

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The Business Samurai
Skills and Stories to be a Well-Rounded Leader in Business

About your host

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John Barker

20+ years of technology, cybersecurity, and project management experience. Improving business operations to create a culture of better cybersecurity and technology practices. John is the Founder of Barker Management Consulting and the creator of the Business Samurai Program.

MBA, PMP, CISSP