Podcast

Ethan

We're doing it. Let's go hey welcome to the social media law cast I am your host Ethan Wall social media lawyer here to talk about all things about social media and the law and with me is our producer. The man with the plan. It's Dave.

Dave

Um, hey Ethan how's it going? Dude oh as usual I'm appreciate you giving me pro bono legal advice under the guise of me producing a podcast for you. So thank you? Awesome! Awesome! You know so um, last.

Ethan

All good man happy to be here.

Ethan

Yeah, my pleasure. Let's do it.

Dave

Last time I was actually asking you a little bit about um the process of of filing for a trademark or a copyright I believe it was We take a scroll like you were saying. There's like a you have to find the right kind of Scroll. You take a big pen that's from like the right type of feather or what kind of bird. It's some kind of legal thing. And then like you roll it Up. You launch you explain to me exactly because I know I'm like 90% there. What is the process for filing for a copyright or a trademark.

Ethan

Yeah, that must be in 1 of our lost episodes that only happened in your imagination but that's may have how they have trademarked things in medieval times. But we're advanced now we've got a government. We have a system of rules and structure.

Dave

On the.

Ethan

So yeah, let's run down the process. But before I tell you? how are we going to trademark something. Let's just focus on trademarks for now then we'll just do a similar one for copyrights. What do you want to trademark anyway.

Dave

Well as you know Ethan I am um, an inventor and as we discussed last time and and I have it I have a new invention. Um, it's called it's called I guess because we would trademark that it's called a banana tech. It's 1 word.

Ethan

The bit the banana tag. Okay.

Dave

It's it's 1 word banana tech. Yeah um, should should I go on should I tell you more about the banana tech.

Ethan

Yeah, I'm just genuinely personally curious about what the banana tech is.

Dave

Well you ever you ever like really in the mood for a banana and it's totally ripe but like for some reason the top part is just acting like it's not and then you just can't peel it and you just kind of like are squeezing the top of the banana and it ruins the top of the Banana. So What I'm working on right now and I've started several fires in my house but basically basically it makes the banana the banana it pushes it up and then you shoot a laser at it and the laser opens the banana peel through you perfectly every time perfectly every time.

Ethan

Yeah now I regret asking for both the visual and also because it's not really a great trademark because it would probably be considered descriptive of the product or service. So how about we call it the Miracle Banana Tech or the banana Tech Miracle just to give our example a little bit more I don't know.

Dave

Ah I already have a nao machine called that. Um, how bad if I add 4 ends to banana tech like 4 extra to ends banana deck.

Ethan

Legality.

Ethan

Okay, yeah, it still doesn't really help you but let's go. Let's just call Banana Tech. Let's just work with be tech. Let's assume for the purposes of this podcast episode that the word banana tech is actually what I call trademarkable meaning it's distinctive enough. Have trademark protection and let's just say that you created a really cool logo for banana tech with the 4 ends and so you're submitting a trademark application for the Logo. So Even if the trademark office says hey Banana Tech describes technology that helps you open up a banana, you still have a um. Protectable ah logo that you can file along with it. So Let's go with it. You have banana tech you want to Trademark. Um, and you just kind of messaged me on our system that that there's a K at the end as opposed to ah a CH because that's like the cool millennial way to spellanatech. Okay.

Dave

It's cool. Yeah, exactly but na type 1 word.

Ethan

So how you go about getting trademark protection is as follows. Um, the first thing that you should always do before you even decide and fall in love with the name banana tech because it's ridiculous is to run what I call.

Dave

Too too late.

Ethan

A trademark clearance search. So what I did in the very beginning was I just started collecting information from you. Okay, what's a name. Do you have a logo. What is it used on. So I can start assessing from a legal perspective. Could you potentially get a trademark and assuming that the answer here is yes now we need to know that if you're going to get a trademark.

Dave

Are.

Ethan

Meaning the exclusive right? or whether the but or Monopoly to use the word banana tech in connection with this banana opening machine. We need to make sure that no one else already has a trademark for banana tech or who has.

Dave

6

Dave

Yeah, we do.

Ethan

Ah, filed a trademark application before you using the name banana tech in connection with let's call it I don't know the category of like food technology products. Um because someone could lasers right? so.

Dave

Who.

Dave

And lasers and lasers big part of it potassium. It's got it all.

Ethan

Lasers food products. Those are both in different categories or classes of goods or services. There's like 50 of them and so someone could have the name banana tech if they wanted to have an airplane for example and call it banana tech and you can have a laser called banana tech. And no one would think those 2 things are made by the same companies. So what we have to do in order to sort all this stuff out is to go to the us trademark office and run what's called a trademark clearance search using words like banana tech banana tech and maybe similar. Um, words to describe your logo to see if anyone else out there already has a registered trademark or has ah filed an application before you because they're going to be first in line and if they do have a trademark what I'm probably going to do with this part of the process is say look your application's probably going to get denied. You're probably going to be sued by these other banana tech people. So I know you fell in love with the name but you might want to change it now before you get into trouble later. What would you say if I told you that.

Dave

Fine I'll go with banana miracle but can I still use four ends.

Ethan

Yes, you may? Ah, so now we run a search for banana miracle with four ends and the banana miracle actually is a much better name because it's probably protectable and I found out that there's no one else out there that uses banana miracle for lasers. Particularly lasia to help to open up bananas so that's great I found miracle whip. They're a food product but I don't think that there's that much of a risk. So I think you're ready to go ahead and now move on to the third stage of the process first being collect the information second being the trademark clear and search now you're ready to file your trademark application and. What were you saying? how we would do that we would write it on a scroll with a feather.

Dave

Yeah, what? Yeah what? what kind of material scroll. Is it again and what kind of feather from what kind of bird you were telling me.

Ethan

Yeah, sure think of material scroll as a computer and the Miracle bird as the internet because that's really all you're going to need to do to file a trademark application.

Dave

That's that sounds way more nerdier than what I that envisioned.

Ethan

Debatable. But so that's let's talk about how we would do it now you could previously and I think actually you still might be able to mail in a trademark application but the same people who do that are also the people that communicate via fax machine. So we're going to just take that out for now what you do. You go to a website called usptodotorg that's an acronym for United States patent and trademark office and you go to that website. You're going to click on the button that says trademarks on the top then you're going to click on a button that says file a trademark and then you're going to fill out. The online application form this is a really important part of the process because if you make a mistake during this process such as let's say misspelling your address you can fix that. But if you misspell your trademark name if you describe your goods your services incorrectly. You can't fix it and you have to start the process all over again. So you you go through the online application system you fill out things like who's the owner of the trademark you upload a picture of your logo. Have to describe the logo with sufficient types of legalese you have to identify the right type of category or class of goods and services remember I said banana is different from lasers which is different from airplanes so you got to figure out what the right class of goods or services are and then you have to fill out a declaration.

Ethan

Um, that attests under penalties of perjury certain types of information including when's the first time that you used the banana tech at all when's the first time you you used the banana tech in commerce so you have to meet all these different legal requirements. But then you could fill out the application and submit it and even pay for it. Right online so that's a third part of the process is completing the online trademark application.

Dave

Well well well that just hearing all of that has stressed me out incredibly I'm now worried about perjury and all that stuff which is why? Um, for all my inventions you know I you could try to do it yourself. But. That only works with lasers. Um and not with the law which is why I go to you my friend because you always make sure you know you file them. You file my trademarks you file my copyrights and they're laserproof. Let's just say they are laser proof and yeah.

Ethan

Yeah I appreciate that look you can you can and should hire a trademark lawyer to be able to help you with a trademark you can however file these things on your own and many people have done So so even though there are mind fields there. It is important to know that that option is available to you.

Dave

F.

Dave

Um, yeah.

Ethan

Ah, you could try to to file it yourself. Some people will use companies like legal zoom or these like online service providers that charge a low fee to help collect the information for you. There's benefits and drawbacks to doing that I would not trust my invention to using something like like a legal Zoom type product not because they don't help you with the process.

Dave

Yeah.

Ethan

But because they're not an attorney. They don't represent your best interest and if something goes wrong in the process they're they're not going to help you and sometimes you can put something in the application that I or another trademark lawyer can't fix because it's going to be used against you in the future. So it is important to to work with someone. You trust now. What's the rest of the process from there once the trademark gets filed you sit on your hands and wait ah because the government's not going to review your application for about three and a half to now five months ah it takes a long time for them to look at it used to be always three and a half pandemic happened.

Dave

Um, new.

Dave

What.

Ethan

Backlogged. Um, once the trademark attorney who works for the government becomes assigned to your file. He reviews your application and he assesses 1 whether your trademark is.

Dave

Um, he I Assume it's not always a guy though right? They they've let some ladies look at it at the trademark certain as well, right? Good good.

Ethan

Yes, you're absolutely right? Um, so what? the next step in the process is is a trademark examining attorney from the government gets assigned to your file. So basically it's a lawyer that represents the government and this examining attorney is going to determine. Whether a your name is trademarkable which I said banana tech is probably not going to be trademarked but Banana Miracle probably could be trademarked so they're going to assess whether it is trademarkable meaning is it distinctive enough and then they're also going to do their own search. Just like I did in the beginning to see if there are any other confusingly similar trademarks meaning ones that look sound or perhaps mean the same thing and assuming that um they do find something the government files what's called an office action meaning they're taking an action against you. You might have to litigate and fix or they might say you know what? this looks good to us so it moves to the next phase of the process where your trademark becomes published for opposition. Any idea what that means on your end.

Dave

I Mean someone gonna try to step to me and take my invention.

Ethan

Well actually kind of so it's not that they're going to step to you to take your invention but when you publish something for opposition. The trademark office puts your trademark into a magazine called the Trademark Gazette um.

Dave

Um, oh.

Ethan

Then other business owners have thirty days from within which to file an objection to your trademark saying it's too similar for yours if that happens that's right fista cuffs you're going to have to battle it out in a legal proceeding if they file a petition for cancellation and they can even hold up the process for a long period of time. That's why it's always important to do that trademark clearing search at the beginning so you can see is there a risk that this is gonna happen and how can I avoid it by changing my name or by just expecting that the process might be held up assuming that no one files the opposition you're pretty much in the clear at this point then the last and final step is you get that? nice.

Dave

Um I um.

Ethan

Shiny certificate from the government that you talked about in the beginning with like a gold seal on it. Ah, the entire process takes about a year the government will say 12 to 18 months. Um the fastest we're ever able to get them is about nine months but I'd say pre pandemicdemic about a year is a normal turnaround time. Ah, with with little to no hurdles throughout the process and from there boom you're a registered trademark holder and have the monopoly to use your banana miracle with four ends in banana in connection banana with your laser.

Dave

Banana na me minute hurdle.

Ethan

And can now stop anybody else in the marketplace from using a confusedly similar name or logo for their banana laser opener or other banana laser related products.

Dave

Awesome because potassium is important now I have a question this sounds very complex. How much does it cost to do to to file.

Ethan

Yeah, so there's 2 different costs. You have to look at the first is going to be the trademark filing fee that the government charges and then if you hire a trademark lawyer. Um, they will charge their own fees as well. So but regardless you first have to pay the government about. Two hundred and fifty dollars per trademark per class of goods or services. So let's say for example that you were selling banana and a miracle and you wanted to get trademark protection both over the laser. But also hats you know you wanted to have hats because you don't want the banana to splatter all over your face when you shoot it with the laser so you have a cool hat with like a visor on it. That's yellow. Um, maybe there's like a monkey on it too right? But not.

Dave

Um, what's.

Dave

Um, you stick to the legal stuff but I'll do the creative. Um, but yes, yes.

Ethan

No okay okay inventor so there you might be filing your 1 logo in 2 different classes because hats fall in different class or category than lasers and so you probably pay two hundred and fifty bucks a piece.

Dave

Um.

Ethan

But you pay the government their fee and then you pay the government excuse me, you pay a lawyer their fee every lawyer charges something different ballpark. You should be expecting to pay around $1000 to a lawyer to go through that trademark process for you. Our law firm. For example, may charge twelve hundred and fifty dollars for the first trademark. But then every other trademark thereafter we may charge seven hundred and fifty dollars because there's less work involved each time that you do it and that you're familiar and we like to pass those savings off to our clients but I would say probably a reasonable market rate.

Dave

Are.

Ethan

Is going to be somewhere in the ballpark of $1000 for a lawyer some lawyers charge more some lawyers charge less. They can charge what they think is reasonable and what you think is reasonable and then the government will charge their about two hundred and fifty dollars fee I say that because sometimes the fee is two twenty five sometimes it's two 75 it depends upon certain types of legal factors but two fifty is a good ballpark number.

Dave

Well, you know, um like that Dave Matthews band song you pay for what you get and if I was starting a business and you know putting all that time and effort into it I feel like I definitely would want to make sure that it was on a very strong foundation and make sure that.

Ethan

That the government will charge you.

Dave

You know it's my intellectual property is protected and that I get off on the right foot with that. So you know I would definitely pay a lawyer. Um, which is why I have paid you several thousand million dollars for banana miracle now just kidding.

Ethan

I Still waiting for mine in the mail.

Dave

Ah, well I'm still working on the laser God Do you know anybody who um, knows.

Ethan

Oh that's actually a real good point. Well you brought us something really cool. Okay, because you're still working on the laser did you know that you can file a trademark application before you actually start using your trademark. Okay, so this is really exciting because I'm a nerd. But when you file a trademark application. You can either file a one a application or 1 b application a one a means you are already using the banana miracle laser in commerce and you can produce evidence to the government to say hey here's my website here's my product packaging.

Dave

Um, I mean.

Ethan

And you actually get trademark rights from both the date that the trademark office approves or registers your trademark but it will also say the date that you first began to use it so we started using it five years ago you now both remember that whole perjury thing of when you start using it. You can get those trademark rights.

Dave

Are um, yeah.

Ethan

But now let's say you're an inventor like you who hasn't done it yet. But you want to be proactive because you're going be investing a bunch of time energy and effort you can file what's called a 1 b intent to use trademark meaning you're not currently using banana miracle with foreigns in commerce. But you have a good faith intention to do so at some time in the future and you have an additional six months to begin using it and you could pay the government a couple hundred bucks and get six more months ultimately you can get like two and a half to 3 years of time but still putting your application in line to get priority.

Dave

Are.

Ethan

And the only difference between these applications. Are you pay the government an extra $100 when you actually start using it and then submit your evidence and you will then get the trademark protection when you get it registered and the date that you started using it which has to be obviously sometime after you filed your application. Because you weren't using it in Commerce yet. So Even you who hasn't used his banana Tech Banana Miracle Banana Opening laser can still file for trademark protection before you even ah come to the market with it. Bring it.

Dave

I have 2 more questions for you do you know anybody who knows anything about building a laser and secondly um, if anybody wanted to find you to ask you any more questions about the process for getting a trademark. Um.

Ethan

No.

Dave

You know how to file for that and um, you know, inquiring about what the best costs are how would they find you.

Ethan

Yeah, absolutely. So if you want to learn more about trademark law more about social media and the law are more about building Dave's laser just find the social media law firm on social media. You can find us by typing in the social media law firm. We're on Instagram Linkedin Facebook we're on Twitter but we don't really tweet very much Instagram's always the best way to be able to find us just slide into our Dms and send us a message at the social media law firm and what you should also do when you're done with that subscribe to this podcast. We'd love to share more information with you. Ah, give Dave 5 stars He's done a fantastic job and leave something in the comments about how I could do a better job in the future. Totally cool with it and then also slide into our Dms as well and let us know what you want to hear on a future episode of the social media law cast.

Dave

Awesome! Thanks so much.

Ethan

Um, yeah man can't wait to ah to use your banana Tech Miracle Banana Opening laser appreciate your brother see another episode of so ah.

Dave

Ah, oh Shh shit I gotta go my house on fire again.

Dave

Um, beep beep out the sword are.

Ethan

Yeah I became a lawyer for this.

Ethan

Ah, all right? and.