Episode 113

Morris Turek: How to protect your brand & cannabis legal mismatch!

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.  His 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.

Morris discusses with John Barker :

1) How it specializes in Trademark law?

2) The process to get your brand protected?

3) Repeatedly correcting John on the differences between protecting your Brand and protecting IP.

4) Morris describes how differing laws at the local, state, and federal level affect your protection (i.e. we talk about Weed branding)

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The Business Samurai is created and produced by John Barker at Barker Management Consulting

Transcript
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Hey everyone, welcome to the Business Samurai Podcast.

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Got another fantastic episode for you today.

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With me is Morris Turich.

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He is my trademark attorney.

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And actually, if you go to your trademark Attorney.com, he can be yours as well.

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Morris helps entrepreneurs, businesses and organizations avoid the devastating and

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disastrous effects of being sued for trademark infringement.

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He does this by clearing and protecting the names, logos and slogans they use to

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advertise and sell their products and services.

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His practice is devoted exclusively to

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trademark matters, including trademark search and clearance, federal trademark

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registration with United States Patent and Trademark Office, trademark registration,

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maintenance and renewal, trademark opposition and cancellation matters, and

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general brand protection and enforcement issues.

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Morris has been practicing trademark law

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since 2005 and has had his own trademark law practice since 2009.

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As mentioned before, you can learn a whole

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bunch more about Morris by going your trademark Attorney.com, and I kid you not

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before we jumped on Morris doesn't know I did this.

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I actually just Googled trademark attorney and he's like four or five on the list of

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the main page just by using the generic term and you've got your ads.

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But then Morris is right there on the first page.

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I must be doing something right. Thank you.

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You are absolutely doing something right.

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I was just curious.

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I was curious with the domain.

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Thanks for taking the time. Oh, it's my pleasure.

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Thanks for having me.

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So what did I miss in the bio? Is there

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anything any notable things that I've missed?

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I don't think so. I think that pretty much covers it.

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I'm a trademarker here in St.

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Louis, but I serve businesses and entrepreneurs located all over the world.

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So I've seen a lot of Law and Order SVU,

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but I haven't seen Law and Order trademark attorney.

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No, that would not be a very interesting episode.

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I guess that's what kind of curious.

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What was the drive?

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What was the niche to get into that?

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Because I know a lot of criminal defense

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attorneys I know civil your family attorneys and things of that nature.

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But what was the interest in trademark?

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Well, I fell into it.

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I was working at a law firm in Illinois as

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a law clerk during my second year of law school.

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The summer after my second year of law

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school, I was working as a law clerk at a small law firm in Illinois doing class

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action litigation, which was terrible, but it was good legal experience.

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And I actually started dating a girl named Karen.

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It all worked out well, not with Karen, but it all worked out for my career.

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Through Karen, I met another trademark.

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I met a trademark attorney named Annette, who is Karen's aunt.

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And while I was working at the law firm, Illinois, Karen's aunt contacted me and

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asked if I would do some research for her on a project she was working on, and she

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would pay me and just do a little research on the side.

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I did. And then she asked me to do another

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project during the summer, which I did as well.

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And then after the summer and starting my third year of law school, she asked if I

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wanted to become a law clerk for her and learn trademark law.

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And I said, Well, I hate what I'm doing at this law firm now, so sounds good to me.

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And so that's how I fell into trademark law.

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So I started working for her a few days a week after classes, and

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that's how I learned it, and that's how I fell into it.

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Got you. So in your law school days,

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is there, like general courses that no matter what type of legal profession

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you're going into, everybody takes and then you kind of pick a niche? Or was this

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something that was totally, like, on the job type of on the job training?

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Well, during the first year of law school,

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you're required to take certain classes, none of which are trademark law, very

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general classes, like property, criminal, constitutional, things like that.

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After your first year of law school, you have more leeway on what you want to take.

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I did take trademark law.

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I also took Copyright law as well.

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But I took trademark law after I started working with Annette already.

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And so I sort of had a one up on everybody in that class because I was getting actual

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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 forget what they call it now, but it's a little award you get at the end of the

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semester for having the highest grade in the class.

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But I felt like it was a fraud because I

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had so much more experience than anybody else in the class.

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Okay. But you weren't, like, teaching the teacher at that point?

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I was not teaching the teacher.

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No, but it did give me a really nice foundation for the class.

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It was great. Oh, yeah.

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No, I imagine every year I keep a track of, like, state

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laws and, hey, we've got new motor laws, we got stuff like that.

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How often this trademark and Copyright law actually gets updated.

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Is it frequently reviewed like other areas?

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It does.

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I would say law in a lot of different areas is fairly slow to change.

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Recently, though, there has been a lot of

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Supreme Court US Supreme Court decisions in the trademark and Copyright fields.

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For example, just a couple of years ago,

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there was a case having to do with an Asian musical band called The Slants.

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And it was basically about whether the

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Trademark Office could constitutionally prevent the registration

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of trademarks that are seen as disparaging of a group of people.

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This Asian band wanted to register the name The Slants and Slants is sort of a

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derogatory name for Asians, and they were initially refused.

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They went all the way up to the Supreme

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Court on this, and they got the law to change the stream court

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knocked down the prohibition against the registration 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

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recent, ruled that a name plus the.com is not necessarily generic.

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So now it may be possible to register

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things like 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 well.

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And I'm simplifying that.

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But there's been some changes.

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In fact, just yesterday, there was a

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Copyright case out of the Supreme Court about Copyright registration and about

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what happens if there's a mistake on the Copyright registration.

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And is the Copyright registration still enforceable?

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Things are happening at the highest yeah, right now, there's a

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lot of trademark litigation because it's a bunch of businesses fighting over stuff.

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There's a lot of trade milk litigation.

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Most of that never gets to a decision, and most of it certainly never gets appealed,

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where you get like a reported decision on an interesting point of law.

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

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So with trademark registration, the procedures have changed a lot.

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The ways to challenge trademark

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applications and registrations have changed.

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There's new procedures called expungement and re examination that were just put into

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effect this year that have opened up some more avenues for attorneys to challenge

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trimmer registrations that may be fraudulent or improperly issued.

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So, yeah, 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 couple

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of 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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You have to use a US attorney, which of

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course, now opens up a nice chunk of business for US attorneys.

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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 just going to benefit me, I mean, I'm not going to say no, but it's been a

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nice especially like out of Canada and Australia.

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In the UK. Sure.

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Because with Amazon and all these other

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online platforms, 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

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want to protect their trademarks and their brands in the United States.

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And here I am, ready to help. Got you.

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How often speaking of going in the Supreme

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Court, how often do these infringement cases actually go to I don't know if they

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go to jury trials or things of that nature.

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How that process works is that frequently that happens.

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Is there's some risk reward metric that goes, hey, we're going to really push the

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button on these guys because they're selling our logo on something else.

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I imagine it's probably the bigger the company.

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But how often does that happen? Yeah.

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I mean, like every other area of law, most

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litigation never goes to decision, never goes to trial.

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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

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the world, but who knows what a jury is going to do or a judge is going to do?

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And plus, sometimes usually these

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trademark disputes and Copyright disputes, these are really just business disputes.

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And do you want a judge or a jury of twelve people who don't even understand

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your business necessarily making the decision?

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No. You'd rather have the two business people

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kind of come into some kind of agreement, some kind of compromise.

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

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like an infinitescible number go to appeal, and that's where all the action is

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really on the appeals, a very small amount.

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I don't know how much this is going to be completely off the wall.

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And I'm by no far an expert.

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But have you been tracking what's going on with the NFTs, the nonfungible tokens?

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I'll lead it with that before I go into a

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secondary where my real question is that I'm not going to lie.

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I'm not really up to date on NFT, though.

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My associate Kevin is a little more into

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it and he's sort of teaching me a little bit more about it, which is good.

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But yeah, it's huge. Actually.

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A case has been recently filed by,

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I don't know, you say Hermes or Hermes, H-E-R-M-E-S.

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It's like the fashion brand.

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

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and created a whole bunch of NFTs without having to do with one of their bags.

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Birken.

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I'm not sure.

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Maybe somebody out there knows what I'm talking about.

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They sell T shirts for like $500.

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Yeah.

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I would never know anything about this.

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But anyway, it's getting big, right?

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Because now it's like you're not even now,

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these brands, especially these well known brands, now they have to protect their

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trademarks against virtual goods, Metaverse things.

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Again, I'm not versed in the Metaverse, but these are all things I'm going to have

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to learn about as they become more and more prevalent.

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And I guess that goes into where I was thinking, where you see this

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could head because people are able to sell a share.

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Quite frankly, it could be a share of their brand.

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Some of the stuff that I'm hearing about is you've seen everybody buying these NFPs

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of the monkeys or whatever, but you're going, hey, I've copied this.

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I trademarked this, but at the same time,

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I'm going to flip it into an NFP and sell somebody the rights to that.

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I don't know how the level of complication

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from a legal perspective that may well probably is starting to turn into that

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now, but could really explode over the next several years.

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Yeah, this is going to be huge, as well as things like cryptocurrency.

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This is a big one now,

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and lots of other different areas that are starting to really grow.

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

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NFT, these virtual goods, and they're all going to kind of play together.

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I did recently just see a news article.

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I think it was on 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 somebody was killed.

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The killing of somebody was streamed online.

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It was a young woman.

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And

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the father of the victim is trying to get the media to stop playing this footage.

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

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He didn't shoot the video. Somebody streamed it.

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Whoever streamed it is the owner, whoever he sold it to, but it's not the father.

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So he was talking about how he was

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speaking with some legal counsel and instead he wants to try to make an NST out

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of this video in order to try to prevent its broadcast and dissemination.

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Now, I didn't really understand it because if he's not the copy of owner, how can you

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make just an NFT out of 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

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this to me, but it was interesting how they are trying to use NFT

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to try to circumvent somebody's Copyright in this footage.

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And that's something I have been thinking about going, even with what I've been

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doing with you, with the business Samurai logo and the name together going,

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what would really stop somebody that got creative and said, hey, that's kind of

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cool looking or whatever, I want to screw with somebody, and they go through the

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minting process, I believe is the term and turn it into that fungible token.

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What is to stop somebody from doing that?

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And then you get a dispute outside of me

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going, hey, Morris, man, Where's that stuff on the US website that I can go?

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No, I did this like three years ago.

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I'm wondering where that intersection is going to be.

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Yeah, I think it's brand new.

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I don't think anybody really knows.

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Until we start getting cases filed and

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decisions from judges and juries and especially those that are appealed,

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we're not really going to have a lot of answers.

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Certainly.

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I think it's unlikely that this stuff is going to happen to sort of the, quote,

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unquote the run of the mill trademark, because what's the value?

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But I think luxury brands, very well known brands, famous brands.

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Yeah.

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

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Like I said, Ermest is ready running into problems.

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Interesting. Yeah.

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No, it's going to be.

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And also from the you just see the way the political process works.

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I mean, you got a lot of aging lawmakers that may be going, what is this?

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Having watched enough congressional testimony in my life to go, all right,

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dude, you're talking about an iPhone as you're flashing around your Android.

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I don't have a lot of hope for blockchain technology.

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Yeah. But I tell you, it is very interesting.

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

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He's like seven or eight years younger than me.

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He's kind of getting more into it.

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

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Cool. All right, let's shift gears a little bit.

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So someone's got an idea or they did, like

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just in point blank, I sit there and had an idea.

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I had read a book.

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It's like everybody should have something that they can trademark.

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And it was from a consulting standpoint

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that was something that they could lay back on.

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I can't remember the reasoning.

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I had read that years ago.

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But.

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When should a company reach out with

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something that they've developed and go, hey, I really need to get look into

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getting some protection behind my brand just to kind of give some background.

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Obviously, trademarks are brands, right?

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Trademarks are names or logos or slogans that are used in connection with the

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advertising and sale of products or services.

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And really, unless you're using a completely generic name, like you run a

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pet store and you called yourself pet store.

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If you did that, then you don't really have a trademark.

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But most people don't do that.

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Most people come up with some cool little

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name for their business or whatever the organization or whatever it might be.

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So everyone's got a trademark.

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

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it, protect it federally, and registering that trademark with the United States

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Patent and Trademark Office, the USPTO gives the owner of the trademark the

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exclusive nationwide right to use that Mark in connection with the products and

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services that are listed in the trademark registration.

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So

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somebody who might only, let's say, for example, let's say somebody has a

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restaurant and they call it ABC Restaurants.

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Terrible name. Hopefully nobody did that.

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But let's say there is an ABC restaurant and they're just operating in St.

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Louis, Missouri.

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

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Louis Metro area, essentially.

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Right.

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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 Pound and Trademark Office, then

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

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Louis. What does that do?

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It blocks other people from using a

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similar name for similar services anywhere in the United States.

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And if they do, then the owner of the

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trademark has the legal 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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Well, there are business considerations and there are legal considerations.

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Let me talk about the legal considerations first.

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The legal consideration is you want to

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file as early as possible with the trademark office because the day you file

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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, which would then

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exclude you from using your name for your products and services.

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So from a legal perspective, it's really

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good to file as early as possible even before you start using the name, because

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you can file a trademark application on an intent to use basis to reserve the name.

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It doesn't have to be in use yet.

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Which is what I did. Which is what you did.

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Right.

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And which is what I'd say 80% of my clients do.

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The intent to use system is

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great for businesses now from a business consideration.

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Well, now we're really talking about is my business even going to be successful?

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

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

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

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What do you need it for?

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You have your little rights in St.

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Louis, Missouri, and you're fine.

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Right.

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

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

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think getting a trademark registration early makes sense.

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Now from a business consideration, maybe your product is going to be a dud.

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Right. 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 going to go anywhere because you're going to fold your business.

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So what do you need to trademark registration for?

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Nothing.

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So it's kind of like you're kind of

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balancing the legal and the business considerations.

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Got you.

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Yeah, that totally makes sense for people not familiar with it

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in a condensed form. What is the process like to go register?

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Well, the first thing we generally

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recommend doing is performing a search on whatever trade market is that you want to

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register some kind of name or slogan or tagline or something like that.

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We would generally want to do a comprehensive federal trademark search on

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

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registration of the Mark and that searches.

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

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And then based on those results,

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if the trademark looks clear, then we can file a trademark application with the

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USPTO, and that reserves it as of the date of the filing.

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Now, it's going to take the entire

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registration process is probably going to take over a year and sometimes quite a bit

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longer than a year, depending 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 registration.

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

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And if anybody started using a similar

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trademark for similar products or services during the tendency of the application,

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then that person would be an infringer and you could stop that infringement.

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Yes. And I remember when we were talking back,

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I want to say the initial kickback for me was about 18 months, I believe.

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What are some of the I'm guesstimating because it's been long enough now.

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But what are some of the extenuating circumstances?

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Why does that process take so long to hear back from them?

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Yeah. Well, in your case, there was a little bit

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of a wrinkle, but generally speaking, 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. Okay.

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

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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 30 day

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period where anybody can challenge the application or oppose it, assuming nobody

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opposes it, then it goes to the next phase.

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If the trademark application was filed on

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an in use basis, meaning that the trademark was already being used at the

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time you filed your application, then the registration issues.

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But if it wasn't being used at the time

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you filed the application, then what's called the notice of allowance issues, and

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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 extension for

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another six months, and you can actually get up to five extension six months each.

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So you can actually hold the trademark application open if you wanted to for like

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four or five years from the date that you file.

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If it's an intent to use application now, what are some of the extenuating

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circumstances that makes that process even longer.

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Let's say you get a rejection.

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Like, let's say the Tripping office reviews your application, says, hey, we

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think there's a confusing similar trademark that's already registered.

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Well, 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, then that takes time, and then

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it takes a trademark office time to review that response.

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So 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, something like that, yes.

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It's been so long now, I remember something weird.

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Somebody filed an extension, so they were

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considered somebody else was considering opposing but chose not to.

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So they kind of 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 delayed it by another 9120 days.

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Those are the kinds of things that make the process longer.

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But again, people kind of get hung up on like, oh, my God, this is taking so long.

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Blah, blah, blah, blah, blah.

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It doesn't matter how long it takes.

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From a legal perspective, it could take ten years.

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

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In fact, I had a client recently whose

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application has been put on hold for a number of reasons.

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I won't go into it, but for a number of

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reasons, it's been on hold 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 when this happens.

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There's not a lot we can do.

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We sort of have to play the waiting game, but it all worked out at the end.

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Excellent.

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So we go through the process, you get approved, it's in use.

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What is necessary then to keep it through that renewal period?

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What are they looking for?

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How often do you got to go through that

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process to check in and say, yes, still active.

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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 that process like? Yeah.

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So currently the first renewal, or they call it really a

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maintenance period between the fifth and the 6th year of registration.

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So once you get your trademark issued, you

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really don't have to do anything for six years.

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So you have to maintain the registration

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between the fifth and 6th year of registration.

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

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And that basically tells the Trademark

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office that, yes, 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 or maintain your registration.

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The next period is really a renewal

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period, and that renewal period is between the 9th and the 10th year of registration.

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That renewal period again requires that you show use of the Mark, you file what's

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called, again, a declaration of use and a request to renew the registration.

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And assuming it's accepted, then your

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registration doesn't need to be renewed again for another ten years.

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So it's not really onerous or it's even not even all that expensive.

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When you divide it by the number of years

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that the registration is active before you have to do anything, it's not even very

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expensive, but you have to kind of remember to do it.

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Thankfully, the Trademark Office does send

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out reminders over email to tell you, hey, it's time.

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If you have an attorney, then it's in their system.

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So we send out reminders. Right.

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But, yeah, it's certainly not as onerous

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

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or file annual reports on your Corporation, things like that.

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So, yeah, it's actually really pretty simple.

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One of the things I heard, something I can't remember what I was listening to

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about somebody filing a very weird trademark thing.

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And I know the process that we went

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through when you were looking up, this is Samurai, and we had to combine the name

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and the logo versus having them as two separate entities.

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I do remember that.

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But I came across I don't know if you can see it on your screen.

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I was trying to find the recent one of

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what I heard on 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 common the phrase was.

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But during that research, I came across this website.

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It was like, T Mobile has copyrighted the magenta color.

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Why or how do they get away?

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How do those bigger companies get away with copyrighting colors?

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

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phones and use magenta because they copyrighted not the name, but the color?

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Like the Hex color.

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What's the nuances when you start getting into splitting hairs with stuff like that?

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Yeah, well, just to be clear, we're not talking about Copyright.

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This is trademark. So they didn't Copyright.

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And this is me being stupid and asking the questions.

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Thank you. I just want to clarify.

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So you're right, 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 you can

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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.

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Right now, it's very hard to do.

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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 with this particular product or service.

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Now, that's very difficult to do. Right.

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I mean, if you're just a small business, that would be impossible for you to prove.

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Right.

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

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

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And they say, TMobile.

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Well, that's very good evidence that this has now become a trademark.

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People associate this color with a very

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specific 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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they were all this 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 installation.

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That pink color is a trademark of the Owens Corning Corporation because people

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associate that pink color with that installation and only that installation.

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And so over time, that became a trademark.

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One of the ones I found interesting on the screen was the term superhero.

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Yeah. Dc or Marvel.

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I think it's both.

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Yeah.

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It happened to be on this.

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

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interesting that Marvel and DC had trademarked the term superheroes,

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particularly in this particular movie age that we're in.

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Yeah, that's absolutely true.

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And there are many other types of

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trademarks which I didn't touch on because they're more rare.

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But like, for example, Sound can be a trademark.

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A good example is the NBC Chimes.

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Ding, Ding, Ding.

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Certainly a trademark.

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I didn't even have to say NBC Chime.

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I could have gone Ding, Ding, Ding.

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And you wouldn't know exactly what I was talking about.

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Or like the Red Robin.

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Like Red Robin. Yum.

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Also a Sound trademark.

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The law and order.

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The dumb was on the one.

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Yeah, absolutely.

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Those are trademarks.

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Also, sent can be a trademark.

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Now, this is very rare, exceedingly rare.

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But very recently, I'd say within the last

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two or three years, the company that manufactures Plato, I think it's Hasbro.

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But don't quote me on that.

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They were able to achieve a trademark registration for the scent of Plato.

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And when you think about it, like you and I, we're not kids, John.

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Right.

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And we probably 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. I don't know.

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But I haven't smelled Plato in decades.

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But I still know what Plato smells like.

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

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smelled like Plato, I'd be able to tell you that was Playdoh.

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And so they were able to get a trademark

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ready because people associate that scent with that product.

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So it's a trademark.

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

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If you've got something that was you could it's very distinct.

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You've got to be very too.

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But again, the problem with perfumes and colognes.

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Right.

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

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Right.

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Sometimes floury sometimes spicy, whatever it might be.

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Right.

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So it's harder to prove that a consumer actually associates a very

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specific sense 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 Plato, a

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clay, well, clay doesn't usually have any scent.

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And if you do, it's like, you don't think

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of the scent as being a part of the product.

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Like, it just happens to have a scent

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because that's the way it was manufactured and it just smells that way.

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But that's not with Playdoh.

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It's like people know what that scent is like.

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You could open up the canister and be like, oh, yeah, it's the Playdoh scent.

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It's a little bit different than for,

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like, clones and perfumes, because those are supposed to smell, whereas clay is

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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 of times, I'm

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still confused a little bit between Copyright, trademark.

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Do you want me to give the difference real quick?

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Yeah, please. Okay, so trademarks are names, logos,

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slogans, smells, colors that are used to advertise and sell products and services.

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Right.

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

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For example, if you had

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two dark bottles of Cola on the store shelf and none of them had a label, you

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wouldn't know if you were buying Coca Cola or Pepsi or Dr Pepper or whatever.

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

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Right. And services as well.

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Right.

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

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or you don't know what restaurant you're eating at.

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Right.

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It's got to say McDonald's or Burger King or Taco Bell.

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Right.

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So you see all the fancy places I eat, right.

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So that's a trademark.

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It identifies the source of the product

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and service, and it helps consumers distinguish between products and services.

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Now what's a Copyright?

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Copyright protects original works of authorship.

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So, for example, books, movies, music, drawings, paintings,

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sound recordings, things that are original, things that are more creative,

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though Copyright, it doesn't necessarily have to be creative.

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But when you think about Copyright, you

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kind of think of like original creative works.

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Okay.

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I've seen on your website, but I guess explain the difference then of when you

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would use the TM versus the C in the circle.

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And I think that's why once you get it fully adjudicated, I'm

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going to use the term adjudicated, but you can slap me on that one, too.

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But to start using the C versus the TM,

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can you explain a little bit of how that to identify it?

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Yeah.

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Well, you're crossing two different types of social property, right.

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The circle C is for Copyright.

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So when you write a book, you might say in

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inside cover, you're going to write like if you're the author of the book, if

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you're the Copyright owner of the book, you're going to write circle C.

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And then if I wrote it in 2022, I'm going

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to write 2022, and then I'm going to 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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When you watch a movie at the end of the

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credits, the credits, it always says Copyright whoever, Sony Pictures.

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Right.

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That tells you who owns the Copyright in the movie.

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Now, the TM is a symbol that

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you may choose to use in connection with your trademark.

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So, for example, if I open up a restaurant

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called ABC Restaurant, I could put a little TM next to ABC Restaurant,

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regardless of whether it's registered federally as a trademark or not.

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I can use the TM.

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If you have a federally registered trademark.

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So let's say I federally register ABC

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Restaurant with the USPTO, then I can use the circle R symbol, the R in the circle.

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So Copyright is a C in a circle.

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Trademarks R in a circle. Got you.

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I'll save my story then because the issue

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I had years ago was a Copyright issue on Photos.

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That does not apply necessarily to this.

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Now that I know the differences.

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Glad I could clear it up. Yeah.

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No, thank you.

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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 doesn't help when you hear you listen to the news and

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they use these terms patent, trademark, Copyright, they just use them

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interchangeably, like if they're the same thing and it's very confusing.

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But, yeah, they're very different.

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They protect different things.

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

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Once you've got it, you've got approved everything's in the system.

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Right. And let's say you have built up let's say

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you have built up your brand to be at a significant point where you're going out

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there to make sure there's no infringement.

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How do you maintain that knowledge of

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somebody is doing something they're not supposed to with it?

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Well, when you're a big brand, that's the Nike of the world, right.

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The Google of the world, the Amazon of the world.

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They have teams of attorneys that hire these trademark monitoring and

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trademark watch services that basically scour not only the trademark offices,

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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

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money and tons of attorneys, okay, you can do that all day when you're smaller.

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When you're a smaller outfit,

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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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Well, you're a small Fry 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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I know I tell you, a lot of my clients

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don't, and I represent very small and startup businesses.

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So it's like it's one thing to have the

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knowledge of the infringement, but then what do you do with that?

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And some attorneys might disagree with me,

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especially ones that represent larger businesses.

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But I don't think it's a great idea to just go seeking out infringements.

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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 is if you run into one, like, for example, a customer

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comes to you and says, hey, did you know that somebody is using this Mark?

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And it's very similar to yours?

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And I thought it might have been you.

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That shows that there was maybe some confusion.

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Right. And that's when you might want to look

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into that and maybe take some action because it was brought to your attention.

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But to just go seek these things out, just to be sending cease and desist letters and

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getting into litigation doesn't seem to me to make a lot of sense.

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Is there fair use with some of these ones,

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particularly with the bigger ones where if you're doing news stories or things of

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that nature where you can actually use them without facing consequences?

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Yeah, absolutely.

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There's fair use, both in Copyright and trademark.

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But yes, absolutely.

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If you're reporting on something about, say, Nike shoes, you have every right to

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use the term Nike to describe those shoes, to refer to those shoes.

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So we call it nominative fair use.

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And there are other fair uses, parody,

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satire, things of that nature that you can use trademarks to make a point.

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Those don't tend to be the infringement

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that businesses, especially even like larger brands, care about as much.

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Like, yeah, they may not be happy with a

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satire or a parody, but they're not going to attempt to really stop you.

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Really.

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

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world, like counterfeit products coming into the USA with the Nike on it.

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That's what they want to stop.

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Even though these big companies have

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limitless resources, I think they do tend to pick and choose their battles,

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especially in the Internet age where it's just whack a mole.

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You try to stop one thing and then nothing pops up.

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So

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I think the Internet has made them have to pick and choose their battles a little bit

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more than maybe they used to because they spend every day, all day just

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trying to crack down and it's never going to work.

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I've seen a mix of this.

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And again, there's going to be bleed over between some trademark with the brand as

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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.

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And then I'm watching another one upload

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an entire movie trailer to their channel, and it's got a million views.

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But the guy that's got 10% of that is constantly getting the demonetization.

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So are they picking winners and losers in that battle?

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I've tried to reach out.

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I actually want to talk to some of them

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from business standpoint on how that functions.

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But it feels like some of those companies on that enforcement front are picking

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winners and losers in that category because they don't like them or not.

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You might be right. And that happens.

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That's more on the Copyright side than the trademark side.

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Correct?

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Again, I do some Copyright work, but the

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vast majority of my practice is trademarked.

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The bigger problem in the trademark arena

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right now are people who register trademarks with the trademark office.

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And maybe these trademark registrations are questionable at best.

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Okay. 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.

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So then they're clearing their competition.

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Right.

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And what's bad about it is that the victim.

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Well called the victim whose stuff was taken down these

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platforms, it's impossible to get it back up

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without the person who sent the takedown notice, without their

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consent, without their permission to put it back up.

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It's almost like guilty until proven innocent.

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I kind of get it.

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Like these companies don't want to be arbiters of IP disputes.

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And really, should they be? No.

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That's why we have courts.

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And if I was running like Amazon or Etsy and some of these other ebay things like

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that, I wouldn't just take down

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a listing because somebody showed me a trademark registration.

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I would at least give the other side an

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opportunity to respond before taking it down.

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But these platforms are so crazy.

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They're so crazy because I represent some bigger Amazon sellers.

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And I've had times when, like,

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somebody with literally a fraudulent registration has taken their stuff down

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and they have had so much trouble getting their stuff back up.

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Luckily, some of my clients are such big

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Amazon sellers that they have some they got some poll.

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

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Sure. And they can get these things resolved.

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But your average person, oh, my God, it's like the Wild West.

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And I just say one thing.

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These places like Amazon and

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for some reason believe that just because you have a trademark registration means

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that you have some legitimate trademark rights.

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I mean, that isn't the case.

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Trademark registrations are obtained 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 actually

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achieved it after somebody had been using it.

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Let's say I've been using a trademark for

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20 years and I never registered it with a federal trademark office.

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And then somebody else gets a trademark

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registration for the same name for similar products or services.

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I was first, and now you're taking me down.

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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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Got you.

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Is there something if somebody is starting

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out and they're kind of going, what's out there?

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I want to be creative. 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 they

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want to go down the legal route and not kind of get themselves in trouble?

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Yes.

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They can go on the Tray Mark office website.

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They have an ID, a very basic search system called Test, and they can type in a

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word or a phrase and kind of see what comes up, see if they see any conflicts.

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Now, again, you kind of have to understand what you're looking at.

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I mean, this is the problem, right?

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You might get a list of 100 marks. Right.

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And you can go through each of the

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trademark applications or registrations and see kind of what it says.

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

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these registrations and applications isn't going to make a whole lot of sense to you.

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It would be like putting a book of Chinese

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in front of me and saying, hey, interpret this.

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I can't read Chinese, so I'm not going to be able to do that.

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So the better option is to have an attorney do a search

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on whatever it is that they want to use, and then that attorney can do the search

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

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using and or trying to register that trademark with the USPTO.

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Awesome. Now if somebody reaches out,

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is there like a preferred list of things that you prefer that they

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have together to give you right off the gate? Is there stuff that annoys you that

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somebody comes in and says, hey, I've done these things, and you're like, why did you

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do all of this stuff? You made my job harder. How do you prefer to new clients

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to approach you with the process to make it as simple as possible?

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Yeah.

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Well, I think the Internet has been very good and very bad.

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Where's the wisdom?

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Yeah.

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So everybody doctors must feel this way, too, right.

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When the patients come in and say, man, I

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

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I must have it because I have all these

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symptoms, and then doctors like, you have a cold.

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But is it great that people can research and learn on the Internet?

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Absolutely. 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 chock full of information

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about trademarks and the trademark registration process.

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But when people come to you and they've

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done all this research, and they believe that they understand what's going on.

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Nine times out of ten, they really don't understand.

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Obviously, they don't understand the

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nuances, because unless you're an attorney and do this all

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the time, you don't really understand the nuances.

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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 need to know anything about trademarks.

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When they contact me, I can educate them.

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It doesn't take me very long to do that.

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No comment.

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But the problem is that people come to you and they think they know,

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and then you say something like, well, it's great that you did this research, and

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it's great that you use tests and you didn't.

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Apparently, we 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 search to make

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sure that there are no conflicts or issues.

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

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I did my search, I did my research. It's all good.

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And you try to explain to them, yes, you

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did your search, but that's a cursory research.

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That's a rudimentary search.

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Try to explain it to them, but sometimes

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

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Okay, well, you're not going to convince some people.

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Fine.

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The people who come to me are the people the people I like the most, the people

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that are easiest to work with are the people who are open minded, people who

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have maybe done a little bit of research and kind of got interested.

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But they have questions.

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Of course you're going to have questions.

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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 want to be a little shady.

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They want to try to do something maybe a

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little shady, which is fine, maybe we can do something shady.

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We got to look into it.

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

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especially if the product or service may be a little risque.

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That's possible.

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The people who come to me that I think we had the most success with are the

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people who have done maybe a little bit of research, have an open mind, and are

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willing to be open and honest with me about what they're wanting to accomplish.

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Awesome.

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You actually triggered a couple of things as you were talking.

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One of the ways I get around the web and the conversation is I actually will say,

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hey, listen, I read the medical Journal from Johns Hopkins.

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That usually goes a little better than Webmv.

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Yeah.

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I don't know if there's a high research for the trademark or webmv version of

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trademark, but jokes aside, you trigger something on things that may be risky.

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I got a buddy of mine.

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State of Virginia is starting to loosen

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its rules around cannabis in the use of that.

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I can use that as an example because each state is different.

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And of course, federal is still completely illegal.

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

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federal law don't match up that you got to be on the lookout for when you do your

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research or do you just got to stay hands off completely?

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Yeah. This is actually a huge issue right now

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with the CBD and cannabis industry with trademarks.

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

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any product or any service that is illegal under federal law.

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Okay. Okay.

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

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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

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trademark, unless your trademark is used to sell cannabis or cannabis related

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products and you did that in California, where it's legal, okay.

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You could register your trademark in the state of California and you would have

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whatever rights 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.

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Zero. Because 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

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illegal because the federal government isn't enforcing federal law.

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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.

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Right. It'd all be shut down.

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It's technically illegal.

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And anything that's illegal under federal law cannot be legal under state law.

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Right. The supremacy clause of the Constitution.

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Right.

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So a lot of people this is a very common one that I run into once a month.

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People want to register vitamins and supplements that have CBD in it.

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Technically, anything ingestible, food, drink, supplement, pet products is

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technically illegal 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, the federal Drug and Cosmetics Act.

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Right. Now, is that going to eventually change?

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Yes, it's eventually going to change, but technically it's illegal.

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Now, would you know it's illegal?

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Of course not.

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You go to the biggest stores in the world,

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Walmart, and you can buy supplements with CBD in it.

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Right. 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 illegal.

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So you cannot register a trademark for a

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supplement or food product or a beverage product that contains CBD.

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Now, you can register the same trademark

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if it was used in connection with a topical product that contains CBD.

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So it's a lotion that contains CBD.

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Perfectly legal.

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You can register.

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I'm going to go tell a buddy of mine he has the only gourmet popcorn with CBD in

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it in the United States, to our knowledge, really talking to him about it yesterday.

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And I'm going to say, all right,

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you may be on the jump of something here, but you can't do anything with it yet.

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Yeah. You can't register the trim 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 if the product is

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legal in the state, another way of getting around it to try to get some initial

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protections while the federal laws going to be because eventually, obviously,

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marijuana is going to be legal in the federal law.

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Cbd. This is all going to be legal eventually.

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Right. So one way to kind of do this is to file a

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trademark application for the name that you use for your illegal product.

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Right.

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And you register it for something else that is legal that you're providing.

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One thing that's very easy to do is start

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a YouTube channel under this name and just put out videos about your CBD Popcorn.

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Right.

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And then we're going to register the

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trademark for providing online videos in the field of Popcorn.

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And then you've now got a trademark

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registration for this name for videos in the field of Popcorn.

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And then when the law changes,

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then you can file a trademark application for that name for Popcorn for CBD Popcorn.

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And it's probably going to go through just fine.

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It also prevents others from registering a

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similar name while we're waiting for the law to change.

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Awesome. Okay.

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I got some phone calls to make.

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Somebody send your way.

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You just do something soon, like start a blog about Popcorn.

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I mean, literally anything that would be

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easy to do, that's legal, that has some relationship to your product.

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That's crazy. Yeah.

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Start a podcast.

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Like literally anything.

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Like literally anything.

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Sell some clothing with that name on it.

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Whatever.

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Got you. Oh, man.

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Well, hey, this has been fascinating.

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This has been awesome.

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And getting me to get corrected in my head between the

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differences of some of these things that even now, years later, I'm still confused

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on clearly what's the best way for people to reach out?

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Connect. You got social media to follow on.

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Yeah. You can just look me up.

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You just type in Morris Turk on Facebook, Twitter, YouTube, TikTok, LinkedIn.

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I'm there.

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I 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 kind of fun.

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

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And then obviously you can connect with me by calling me.

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My number is 314-749-4059 and my email address is Morris@yourtrademarkete.com.

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Awesome. And like I said, as it stands now, you are

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number four or five on the Google first page.

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All you even have to do is just Google trademark attorney as the keyword.

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And you popped up on the first page.

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That's good to hear.

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

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I wonder if I'm ranking like that in other

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parts of the country, or is it just like in the St.

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Louis area? Not sure.

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Well, Google's changed some stuff around they front loaded it with ads at the top.

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More so than it used to be.

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I've noticed it and I've seen other tech guys talk about it as well.

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But you're definitely in the organic

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searches on page one on the most important keyword probably for your entire business.

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Hey, can't complain about that. That's awesome.

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Yeah, I appreciate the time. No, it's my pleasure.

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Thanks for having me. This has been fun.

About the Podcast

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

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