The Podcast
Video
Show Links
- Get a Store Audit - https://jadepuma.com/products/shopify-store-audit
- Elizabeth's Website - https://www.elizabethpottsweinstein.com/
- Elizabeth's YouTube - https://www.youtube.com/@ElizabethPW
- USPTO - https://www.uspto.gov/
- Trademarkia - https://www.trademarkia.com/
Help the Podcast
- Apply for Shopify Store Consult - https://jadepuma.com/pages/podcast-consult-application
Transcript
Scott
Hey, everybody. Scott Austin here. And in this episode, we're going to have a topic that I've been trying to dig into for a long time and trying to understand because I have no idea in this what is kind of a legal space, what the answers are. And my clients always have questions on how do I do this, how do I do that in this space of trademarking.
So I actually was researching on the Internet and I found some YouTube channels and the person who had what I thought was the best advice for people that were small, new businesses was Elizabeth Potts. Wainstein. So I asked her if she'd be on the podcast, and she graciously answered yes. So here's Elizabeth. And can you explain to people a little bit about your background and why you're the trademark expert for small businesses?
Elizabeth
Yeah, I mean, I've I've been practicing as an attorney for 23 years now, and I've done a lot different kinds of things, but primarily helping small business owners. And I really specialize in tiny businesses. You know, there's a lot of kind of business corporate attorneys out there who are helping startups, who are trying to be the next whatever Tik tok Facebook, you know, thing that and I'm not really looking at that.
I'm looking at people who just have a really small business, you know, and it's just them maybe a couple people as they grow, but really specializing in that because those are the people who tend to not have good legal resources. You know, they don't have a lawyer yet. They don't have an in-house counsel or any of those kinds of things.
And that's really why I started my YouTube channel, was to help people who can't afford to hire a lawyer at all. And they just are going to do things themselves and they need some tips to navigate stuff. So yeah, so I've been doing trademarks for people for most of that 20 something years of, of that time.
Scott
In my my JadePuma brand. I started it in 2018 and I never trademarked Jade Puma. And then I see my Jade Puma. It's completely blue ocean. There is no other jade pumas out there or anything that looks like it would conflict. But, you know, I saw like one of my clients got into a trademark thing. I'm like, maybe I should get around to doing a trademark finally and it was your videos that convinced me that I could do it myself.
So I did my own application, paid my fee, and that's how, you know, I did my own trademark from your videos. And that's why I was like, I have to share this information because you're absolutely right. You know that people listen to this, this podcast, most of them are very small businesses. And there were in 17 different ads and they only have 15 minutes of time to dedicate to the thought of trademarking because they know all these other fires going on in their business.
So, you know, we can give them a trademarking for dumb use here in the next few minutes and bring them up to speed on what they should be thinking about in the world of trademarking. Yeah, What is a trademark right?
Elizabeth
Yeah. So and people get this mixed up between trademarks and copyrights and patents and all that kind of stuff. So yeah, it's a mixture all on the same page. So a trademark is a word or words, or it can be a symbol or like a logo that you're using in conjunction with the sale of a product or service has to be some kind of money involved to identify the source of that product or service.
And so most of the time it's a word or words. It's, you know, Nike or something. But sometimes it can be a symbol like the Nike little that swish thing, you know, for what Nike has. So and you can trademark both the words and the symbol you can do. You don't have to do them together, you know. So the question a lot of people have, sometimes we just do one or the other and it goes, there's a lot of consideration to that.
But and it it has to be something that either makes money. Now, you've already made a sale or you're going to and you intend to do it in the future, like you would actually say on the application under penalty of perjury. I am intending for this to be a business that I'm going to make money on in the future.
Scott
And why would someone want a trademark?
Elizabeth
Yeah, so there's a number of different reasons. Some of the reasons are very practical. So let's say you want to get you want to have actually an also have an Amazon brand, Amazon store, or you want to get the the username on some social media or something like that. Sometimes having the trademark is your way in to get some of something with some third party like Amazon or whatever Twitter's called now or you know, what they whatever it's.
Scott
Called going out of business.
Elizabeth
But yeah exactly. The next thing that will replace her. So that can be very helpful in a practical sense. So that's one. The second is, is that if you have kind of a plan, you know, maybe your secret plan is that you want to build up this business to sell someday. This is an asset of your business and is another piece of property of your business and makes your business worth more money because you own that trademark.
And it is one of the more things that you're going to sell. And then from another perspective, too, is from kind of the other side is what if someone else starts, you know, copies you or your worry that someone else has something similar and they're going to come after you, after you've made all this investment into starting this business.
And so the idea is by having a trademark, you've kind of cleared out what is yours. And so you have leverage if anyone ever disputes that in the future.
Scott
So I'm a big believer in most ecommerce businesses should be thinking about building a brand. And what I just heard you say, here's here's what I'm thinking about summarizing what what you just said is the way a patent is to an invention, a trademark is to a brand. It marks out your turf that this is yours and people can't infringe on it.
So if your brand becomes successful, let's just say you come up with, I don't know, I'm really bad at coming up with ideas of thought in my head. And let's say your brand is, you know, peanuts from California, right? Com is your store and you trademark peanuts from California. And all of a sudden California is the biggest peanut place in the world.
Everybody wants to have peanuts from California on their website. If you trademarked it beforehand, they can't put that and use that as their brand and put it into their marketing materials because you've got that trademark pushing them away from the boundaries. You start out with your trademark claim.
Elizabeth
Right? Exactly. Yeah. And and one thing to remember is trademark law, and this comes up a lot is trademark law is actually designed to protect consumers from counterfeits. And the reason I bring that up is because unlike patterns which are designed to give someone a monopoly or the business owner, it's like the protecting the business owner trademark should actually protect consumers.
And so the reason that that tends to come up a lot when if someone has trouble getting a trademark, that's usually why it's something from the perspective of consumer protection being an issue versus your property of a trademark. But but yeah, I think it's it is very important as a way to protect a brand, and that's a way to think about trademarks.
Trademarks is about branding your business and your products and services.
Scott
So what are the dangers of not getting a trademark if I don't trademark my business, you know, what's what's the worst case scenario? And then like the likely scenario.
Elizabeth
Yeah, I mean I so I think the one of big things that can go wrong is you don't trademark your business and then someone else starts a business with the exact same name and then they file a trademark application. So you if you have made sales, you might have a bit of rights because there's something called concurrent rights that is very complicated and hard to explain, but it means that you have a little bit of dibs because you were first but only where you made sales.
So let's say you have a store. Yeah, you sell on the Internet, but you've really only made sales in California, Nevada. You haven't really expanded in other places. You haven't made sales in like literally all 50 states. And so then what happens is you may still have some rights in the places you made sales, but they get dibs everywhere else.
And it the short version is it creates a horrible mess. Is is what happens. And that's really what you don't want to have happen. And so that's one of the things about filing your trademark application is unlike the right, you get some limited state law rights in states where you've made sales, continuously made sales. But if you want rights over the whole United States, then you actually have to file the trademark application with the States Patent Trademark Office.
Scott
Okay. So that worst case scenario, if you don't get a trademark, that is that you can lose rights to your brand.
Elizabeth
Yeah, you can lose rights to your brand. You have to start over because one of the things that can happen to is, let's say the the other person is actually not a person. It's a gigantic company who decides, just do it. Well, you, you cannot going to get into a lawsuit with some with gigantic company like you can't afford to do that you know versus if you have the actual registered trademark then they know that.
Elizabeth
And so you have a lot more leverage even with a big company. I mean, they may come in, want to buy you or something like that because they want that brand. But if it if you don't have that registered trademark, you're going to have no leverage. And so I think that tends to be the worst case scenario is is big, huge giant company who has a, you know, all kinds of lawyers on staff trying to get your brand and you have absolutely no leverage with them.
Scott
Yeah. And in a real example of that is I worked at Microsoft for 12 years and we never ever considered how expensive of the legal process was. We just did whatever we need to do legally and brought in. We had, you know, attorneys on staff kind of thing, whereas every small business owner knows the idea of even bringing a lawyer for half a minute is a huge expense, huge consideration.
But big companies, it doesn't even cross their mind. It's just part of the process. They got people lined up to do it all day long and that's just what they do.
Elizabeth
Yeah, and I think too, I've had I have had clients where they didn't get the registered trademark and they didn't even do a trademark search, which is at the minimum they want to do. And then it's, you know, months later and they get accused of infringement from somebody. And the thing is, they are the other person has the trademark and now they have to redo all of their branding, which is expensive and messy.
And you in some ways, you're kind of starting your business over again. So, you know, you don't want to waste all that money you spend on all of your branding and website and emails and domain names and all this stuff because you didn't get a trademark or at least do a trademark search.
Scott
Well, that brings up my next question is, as small business owners, you know, when you start up a new business, they get a lot of things going on. When is the right time for them to think about trademarking? And what I heard you just say, it sounds like there's two phases in trademarking, at least in the process. One is doing the search and then the other is actually doing the trademark application process, right?
Elizabeth
Yeah. So I would say, you know, when you're brainstorming names, don't just or, you know, whatever brand is for your business, don't just look for what domain name you can get because this is a common mistake is people be like, Oh, I got the domain name, so it must be okay. But the problem is someone else could have just done a different tweak on that domain, you know, and be using that brand or they might not even have a regular website.
They just have an Amazon store or whatever, something else. But they got the registered trademark on that brand. And so you want to search I mean, obviously you're going to look for is there domain names available and things like that. But you also want to just do plain old Google searches to see is anyone else using this name in a business that's similar to it?
If it's wildly unrelated, then, you know, if they're selling, if they're selling fishing line and you're selling t shirts, unless the t shirts are about fishing and, you know, they're completely different things, but if they're somehow overlapping, then you may decide to go in a different direction. You want to do that at the very beginning and then also search in the trademark database.
You can go to USPTO gov and they it's totally free to search in the trademark database looking for anything that's similar. So yeah, you want to do that in the beginning when you're still brainstorming. We haven't spent a lot of money on your brand and then when is the right time is a hard answer. And the reason is it used to be trademarks used to not take that long.
It used to be that you would file and then three months later you'll get your first response. And so because of that, I'd be like, let's file early. Let's, you know, like we'll get in the answer and then we'll know what to do. The problem is now, if you file today, you're not going to hear from them for a year.
Maybe I would say nine months to a year, how far behind they are. So because of that makes this kind of longer, drawn out thing that you have to factor in. I think the time to file a trademark is for especially if someone has a tiny budget, is as soon as you're really settled on your brand because you can't change that name that you file under.
So if you're going to tweak it, then you have to start over again. And if you have a tiny budget, that's obviously not very helpful for if you're going to file it on a logo or some other, you know, illustration or something, it has to similarly be settled because if you tweak it at all, if you change anything on that logo, you've got to start over again.
So when people have tiny budgets, we want to be fairly settled on what they want to do. But but you know, the earlier you file, the earlier. Deb, so so it's hard to make a stricter foundation because if someone had unlimited budget, I'd be like, file as soon as as soon as you can. But you don't want to waste your money either.
Scott
Yeah, well, and for small store owners, I find the money's one equation. The other one is just time. Yeah. To to create that process and understand how to do the application. So you talked about, you know, similar names and businesses kind of thing. Can you give me a couple of examples of, you know, where things become, you know, it's obvious if this is Acme, you're trying to Acme Corp, there's already Acme Corp dot com that you can't do that right.
I already have the trademark but what if they're at Acme Corp and you're Acme Corp right? Or what if you're Acme spelt with a Y, not an E and those kind of things. How close do you use the infringement become if someone has a trademark?
Elizabeth
Yeah, and that's a great question because it's all from the perspective of the consumer. So what the consumer makes them up. And for Acme Corp. and AP Corporation, yes, they would, you know, they would mix those up there too close. So what are the ways you look at it? Is is that are the other words kind of generic words?
So if it was Acme Systems and Acme programs, well, systems and programs are kind of these meaningless in words. And the ACME is the thing that the unique word and if it's Acme corp and then the other one, the person who has a trademark is actually just Acme. Well, adding extra words won't get around the person who has the shorter one unless it fundamentally changes the the meaning.
Like if it's becomes like an idiom or something where it's like a clever ness to the whole thing. But most of the time adding extra words isn't going to help you at all. And so but one of the things to remember, though, is it is it's not just whether or not the the trademark is close. It's also whether or not you're in a similar class, which is your description of your product or service.
So like I said, someone selling fishing lines and fishing laws and you're selling t shirts unless your t shirt thing is somehow about fishing or something like that. They're unrelated types of products, but there are some products that are very closely related, but people tend to sell. So like if you sell t shirts and they sell hats, those are in the same number of class.
They're both things that people wear. A lot of the same companies sell both of those things, so that would be too close. So you have it. So it's a kind of a complicated thing. You're looking at the words that you're using the trademark, and then you're also looking at how do these products or services typically overlap such that a customer would be confused?
Scott
Yep. And on the example of Acme spelt with an E versus Y, how is that gray area? You know, do you want to get into that messiness or should you just avoid it as a small business?
Elizabeth
Yeah, the thing is, if it sounds the same, then it's the same. That's the short version. So and that there's actually like a rule about that it's sound alikes rule. So if it sounds the same, it doesn't matter that you spell it differently or you put in a hyphen or you know what I mean? Like you put some cleverness into how you're spelling it or something.
It's all about, Does it sound the same?
Scott
Yep. Now just another example for you to use my brand because it brings it home for me. Really? Well. Jade Puma. Right. So a jade is a stone and Puma is a cat. And I just combined two words and made a company out of it kind of thing. What if another Shopify focused agency, to be very specific, it's in my exact space.
What if they came up with Emerald Puma? Or that the trademark infringement? Would that be in the gray zone or. No, that's totally fine.
Elizabeth
Yeah. I mean, I think you would have a good argument that it was it should be trademark infringement, but you have to make the argument. So it's not a slam dunk. But I do think like if if it is something where they're just changing one thing but there's a part of it would be confusing potentially to consumers, but you'd have to make the argument.
So, yeah, it's not a slam dunk as well as things that if they want to apply for the registered trademark, some trademark examiners would reject them because of your trademark and some wouldn't. Yeah and you know and so and then you would, you know hopefully find it and you could file an opposition. There's all these things you can do right but it's it is not a slam dunk because it would really depend on which examiners someone got.
Scott
So there's a lot of subjectivity in the evaluation of things and who you get on any given day is going to influence the outcome.
Elizabeth
Yeah. And it's it's very frustrating because I would say 90% of the examiners are very reasonable. Some a lot of them are really nice. You know, a lot of them they'll email you like, Oh, you need to tweak this and then I'll accept it. And you know, especially if you're representing yourself, a lot of them are really cool, but not all of them.
Some of them, I feel like are just like out to get you. They're out to reject it. So just know that you are rolling the dice of it and maybe you'll get lucky. And most of the time it's fine. But sometimes we're just unlucky and we get someone. It's just I, you know, now there's things you can do.
You can't appeal what someone does, but that starts to get complicated. That starts to be like, you may need to hire a lawyer because how are you going to write an appeal? You don't know how to do that. That's kind of beyond the scope of just filling out a form. So there is things you can do if you get someone who's just being a jerk to you.
But it does make things much more complicated, you know.
Scott
And as you probably will know, I find with the smaller stories, when you get to that, that level of hassle, you just move on because you got, yeah, certain things or higher hierarchy of needs things. You just got to be working on. So what I heard is you should definitely be thinking about can you trademark your brand when you're creating your brand and coming up with your brand name right?
And you should register it as soon as you can after that. And I would guess, especially if you think this is a space where you're going to have conflicts or other people come in after you want to stake your claim early by filing before they do kind of thing. So let's say we're on now. We're going to go do an application.
We're going to we're going to file our application. What does that process look like? Can people do it on their own? How much does it cost? All that good stuff.
Elizabeth
Right? Yeah. So I think it is possible to do it your own, but it is not intuitive. It is a lot of weird rules. And what class should something be in for the product or service And like, they're they're not things that are obvious. They're obscure kind of things. And and I've actually looked at people have done studies on whether or not attorney filed ones get a better result than someone who files it for themselves.
And for the first trademark application someone does they an attorney is always better. But once someone's done one, then it's almost the same because it's not necessarily about being a lawyer. It is about understanding the system of the trademarks and the weird rules and and all this stuff. So I'm actually a big, huge corporations. The person filing trademarks.
Latham's not a lawyer. They're just someone who just does this as their job, you know, because there's just.
Scott
A learning curve on the process versus a learning curve. And being a legal expert, right?
Elizabeth
Yeah. And there are times where you may run into things where you would need a lawyer to help you or even just give you an advice on whether or not you should spend money on a lawyer. You know, like, is this even worth fighting kind of thing? But for yeah, the for file, the actually doing the trademark application and navigating that process, it's mostly just that it's a big learning curve that's very non-intuitive.
And and what how it actually works is you it's all done online and there is a form that you go through like all these different screens and it auto populates what the next step is as you go and a lot of mistakes that you might make it tells you like it rejects you in the little form you know well it won't let you file that if it's completely not making any sense.
The forms are kind of hard, like they're not the best user interface. So that's part of the esoteric learning curve, is you get to a form and you're like, it's like this huge long thing. There's all these different stuff in it. And even for me, sometimes, like they change the forms and I'll be like, Where is the thing that I need to check?
You know, because they just change that around. So if you have trouble when you're going through it, you're not alone. I still have trouble sometimes because every time they change it, I have to like refind all the things. So But yeah, once you file that, then everything is done online nowadays. And nowadays the examiner, who is a person who actually examines whether or not you should get the trademark, they will actually almost always email you if there's trouble with it.
It used to call you, but I haven't gotten a call in many, many years from them, so I think they're doing everything by email now. So that makes it a lot easier in the sense of the fact that it's all online.
Scott
And where is that online at? Is that the trademark office?
Elizabeth
Right? You go to USPTO dot gov and that has both patent and trademark just because it's the United States Patent and Trademark Office. So there's like a dropdown menu for trademarks and it'll be like, you know, they will they change what it says. James but it'll, you know, be something about apply here or whatever. They also have a bunch of educational things too.
They have videos you can watch and all kinds of articles and stuff like that. So that can be another good place to just get some other information.
Scott
Okay. And then as they're doing that, that process and that application, what is the fee that they have to pay and when does that get paid?
Elizabeth
Right. So when you file it at the very last screen, then you go pay for it, right? Then the filing fee is $250 per class. If you do it online and you use the class descriptions, the product or service descriptions that are like in the system and you don't make up your own. And I, I generally recommend, if it's possible, use the ones that are made up not just because you save money, because the other fee is higher, but because it is more likely to get accepted that if you make up your own class, it like goes kind of in like a different system in a way, and it will take longer.
And there's a good chance they're going to reject because they the ones that are in the system, someone already approved them. So you're not going to be rejected on how you wrote the words. So it just kind of gets rid of one of the problems that could happen. So nowadays, I think the only time I ever have some time where we write our own description is when they have they're the one of the first ones.
We're filing on a very, very new technology. So like when VR first came out, I had to do one on VR and there was nothing in there on VR and so, you know, we had to write our own because that was the only solution. But and, but I'm sure by now I haven't looked lately, but I'm sure by now those VR ones in there.
So it sometimes when you have a brand new thing, it won't be in there, but otherwise you should be able to find.
Scott
A script and the fee is relatively small at $250. It's not like, Yeah, like.
Elizabeth
Yeah, it's true. Every $2 per class. So if you do it in multiple categories now that's, that's per number class. So if you, if you're selling both T-shirts and hoodies, that's all in the same class of clothing for humans. But if you also sell clothing for pets, that's a separate class and that's would be another $250. So and whether or not you should file in just one class or multiple classes, obviously part of it's a budget thing, but it really depends on, you know, how what your goals are for your business, obviously, what your budget is.
And, you know, sometimes it can make sense to just file it in one class and then see how that goes. And then you could always file in the other classes later. But you're starting over with a new application If you file in the other classes, they do look at your old one. So it's not like you're completely starting over, but you do.
You start over with a new filing if you want to add things later. But sometimes I have class where they know what they're going to be doing, and so we file in two or three classes at once. But it really depends on the situation.
Scott
Basically, you're just staking out your claim and your turf, right? If you think about going to this place in the future, you want to put your dibs in. Now so that you have that recorded first date in case anybody else tries to come in later kind of thing.
Elizabeth
So yeah, you're going to add something that actually I also want to make sure I bring up is that there's two kind of ways you can apply for a trademark. One is if you're already in use, so you've already made sales, you made your firm. So yesterday, then you're filing kind of the regular trademark application where you give them the date of your first sale and you take a photo of your product with the tag on it and things like that.
But you can also find intent to use application. So let's say you're still figuring out you haven't made a sale yet, but you're planning to make a sale hopefully soon. You can file it now and then give them all the rest of the stuff for the data for sale and all that. Later, you do end up paying a little bit more in fees because when you file those things, you have to pay more fees and if you have to extend the time and so that ends up being more expensive, but you get the date that you filed versus your data for sale.
So it can be an earlier date. So that can be helpful for people.
Scott
I would imagine that that filing ahead of time is going to be the thing that the big companies do when they're launching a new brand and they don't want people to come in and steal it from them after the fact. But the small audience we're talking about is going to be doing that after they get their first sale kind of thing.
Elizabeth
Yeah, I mean, because I actually have I have seen many times the danger with an intent to use is you change, you tweak something before you make the first sale. Sometimes you tweak what your product is or your service, sometimes you tweak the brand and then it's like, Well, there was no point in filing that because you got to start over again.
Anyway. So that can be very frustrating. So I you still do need to be fairly settled on it. And, and the thing is, I've had a lot number of clients where they're like, they're like ready to launch. So I'm like, okay, if you're launching like next week, just send me an email the second you make a sale and then I'll go ahead, file it.
So, you know, if you're in the really short timeframe, it can make sense to just go ahead and file it when you make that sale.
Scott
Makes sense. Makes sense. Now, you mentioned a second ago products. Are we trademarking our company's brand or our products brand or both? And are those separate applications? How does that work between company and products?
Elizabeth
Right. Yeah. So really it's it has to be something that identifies the source of a product or service. So sometimes it is the name of the business or the name of the brand or the name of the website. Sometimes it can be the name of a product, but it has to be identified in the source. Like the customer has to think, Oh well, I get such and such product from this company.
And it's hard because these are like very kind of vague rules that are difficult to explain. So I've had times where I, someone who was one of the trademarks, something where it was like a personal brand, it was like her name too. After her name, she would have this like little saying that was like her personal brand, but the trademark obviously rejected it, saying, Well, that's not identifying your company as the source of product or service.
It's actually just about you because she had a corporation, so she was filing it on behalf of a company. So that's the thing is like sometimes those things can be difficult. So yeah, and for big companies, they'll file on everything, right? They file it on their products and services and business lines and their business overall. But I would say for a small business you want to think about in your customers head what word or phrase do they put together with your stuff and you as the business?
What is that the thing that connects those two together?
Scott
Yeah, and at the product level, if I'm a store owner reselling someone else's products versus making my own products, I guess that's if I'm reselling. No need to trademark the products. But if I'm making my own, then I have to ask myself, should I trademark that the name, right?
Elizabeth
Yes, exactly.
Scott
Now, can you explain to me what those little are symbols and those term symbols are on websites. And when I have to use them and when I should use them, because I personally believe that those things are unprofessional on a Web site and too many websites think they have to have them everywhere, like a little time next to every place their logo and name is used and if that's legally required, great.
Scott
But I think it detracts from the user experience. So I like to add a little guidance on when do I have to use those hours in terms and when when can I not use them?
Elizabeth
Right. Yeah. So in eight states you're never required to use RTM. But I'll tell you the difference between them. So are the are the little circle symbol. That means you have a registered trademark. So you applied for it. It got approved. You got the certificate in the mail. You have a registered I mean the email you first before you get the thing in the mail.
But you have a registered trademark. You're not required to put the little R with the circle symbol. I recommend you have it in some places though. So like maybe in your footer you of your website, you have such and such. Our little circle is a registered trademark of all blah and all rights reserved. The reason you do that is just to put the world on notice that you have a registered trademark because there's a lot of unsophisticated people who think if I they don't see that, then that's free game, even though it's not for your game.
But you kind of want to like get rid of those people from copying you so it can.
Scott
Be a defensive mode to protect.
Elizabeth
Yeah, Yeah. I mean, and so I think it's good to put it like in a footer or places like that where it's appropriate. It does not need to be in the banner necessarily. It doesn't need to be in the I mean it can't be in a domain and it wouldn't even work. But so it really isn't required. But I think it's a good idea to have it there a little bit.
Now, team time is just under state law or common law, which means that you can use TM without applying for a registered trademark. Any time you're using a word or words in conjunction with a sale of a product or service, and you're kind of putting the world on notice that you're claiming these trademark rights, but you haven't done the registered trademark.
And the reason behind that tell all times is either because it's something that you're don't think it makes sense to apply register trademark for like a tagline. So then that you change very often you'll see this with big companies, Jim, that they sometimes will do that for things that are temporary, or people will do it too, when they've applied for the trademark and they are gotten it yet.
And it's kind of like almost like a placeholder for where the R is going to go. And it's helpful for the same reason because your average person doesn't know the difference. And so it'll be like, Oh, this is the trademark. I'm not going to just copy it. So it can be helpful in that situation to be using the term and same thing as using the R, But yeah, it's not required.
So it's really more of just a way to put people on notice.
Scott
Because I had clients and they're applying for trademark and their attorney tells them, No, you've got to put this up everywhere or and I assume and that was when they were applying, I assumed in that situation it was so that when the trademark office looked at the website which they I assume they do as part of the review process, they're like, Oh yeah, these guys are really serious about this.
I my guess was they're just by doing that term. It just shows that, Hey, we're serious about this. Please approve our trademark application.
Elizabeth
Yeah. And another thing that could actually help I don't know if this happens a lot in products, but this happens a lot in services is it can be a discipline on the business owner to use that word or phrase only in a trademark way. So what I mean is this happens a lot more with services than products, but sometimes not with products too, is if you have a phrase that could be used in a generic way.
So let's there's an example like Google. So let's say on Google's website, they said they talked about their business and talked about here you can do your do your you can Google this answer. Well, that makes it be generic. It's instead of saying a Google search. So always want to make sure that on our own website we don't accidentally make our brand generic.
We don't talk about Kleenex, we talk about a Kleenex tissue or Kleenex actually almost also trademarks. They had to spend millions of millions of dollars on advertising. That was to get people to say, Kleenex brand tissues instead of Kleenex even though we also like links.
Scott
So if you're a verb, you have trademark issues.
Elizabeth
Yes. So yes, you have that. And so that's something that's one of the reasons sometimes I say to clients who especially who are service providers, who this is where it tends to come up, but sometimes came with products like Kleenex is is you want to make sure you're not using it as a verb as and you want to make sure it's a is still a brand.
Everyone your website. So sometimes using the RTM symbol gives people kind of the self-discipline to do that so they don't accidentally make it look like they're generic.
Scott
Well, and I would say that if you get to the point where you are a verb, you have enough money that you can afford. The lawyers to figure that problem out. And that's a good problem to have, right?
Elizabeth
Yeah. Which is very true.
Scott
So a couple more questions for you. One is what sort of store owner can do this on their own and what sort of store owner? And maybe it's situation of the business, not the store owner. Should they call in the legal help?
Elizabeth
Right. So, you know, the first thing is is that you have to be to represent yourself before do your own trademark application. You have to be domiciled in the United States. You have to be a resident of the United States and have a U.S. address. So that's one short answer. If you're outside the US, then you need to hire a U.S. lawyer.
And that's this is actually a recent rule that I think is wrong. However, they did it too, because they were getting so many outside applications from outside the U.S. that were completely bizarre and required a whole bunch of work on their part. So that's just a rule. It's just how it is. And so, yeah, that's the first answer you can't do it unless you're domicile here.
You ought to be a U.S. citizen. You just have to have a residence address and you can't use like a virtual address or post office box or upstairs box or anything like that, because they literally look it up on Google Maps and do a street view and figure out what the addresses. And I've had them send me the Streetview picture so that is a very strict block.
Scott
Either way, you're you're, you're shutting down my questions before I ask them by answering them ahead of time. That's okay.
Elizabeth
Yeah. So, like, they, they actually they also interface with that post office's database where you know how when you get a virtual address you like, fill all those forms and stuff, they have access to all those forms so they know if it's a real address or not. So you can't trick them that way. Now, if you're in the U.S., you could represent yourself.
And so then, you know, part of it is if you, you know, I would say look over the their forms. And, you know, obviously I have tutorial videos you can watch and see. Do you think that you could do this Like I've had some people where English isn't their first language. Figuring this stuff out just is not realistic for them.
And it makes sense to hire a lawyer. Some people obviously do not have time and hopefully you don't have time because you have little bit more money and then you can hire someone to do it. So yeah, it's it really depends upon the person. If they're comfortable doing that kind of thing. And and you could also hire a lawyer if you get stuck, obviously.
But sometimes the reason you got stuck is because you did in the beginning you were having trouble too. So yeah, it really depends upon the person. But I would say look at the stuff and see if you think you can do it now.
Scott
So that's on the complexity of the process. Are there times where, No, it's a no brainer. This one's going to be so sticky because you're close to other trademarks, boundaries and borders that you're going to need the lawyers or is that not something to consider?
Elizabeth
Yeah, that can be definitely true. Or like, let's say someone is already infringing you. And by the way, there's a special like fasttrack process you can get. I think if you pay more money for that and looked at it a little bit, but where you can get your trademark through faster if someone's are infringing on you because you need to get the trademark faster so you can do something about it.
So yeah, if you're really close to somebody else, if it's somebody else, you're close to as a big company, then yeah, you may need a lawyer to help you navigate that. Like, let's say you did the trademark search and you found another trademark that's a little bit close and it's in a class that's a little bit close where it's not like you for sure are going to file as trademark, but you need to kind of navigate that, really narrow that the boundaries of that very carefully.
Then it can make sense to hire a lawyer to help you kind of be strategic when you're doing that filing.
Scott
Yep. And I think as an example we kind of brought up a minute ago was X is the analysis that I've seen is like Microsoft with Xbox and I guess Facebook has some other stuff. There's there's a lot of people debating like if people go after the trademark of X, you know, can they defend it or not? Yeah.
Was that another reason that that brand might have been silly kind of thing?
Elizabeth
Yeah.
Scott
So if I decide that I want to bring in the attorneys, how do I find a good, reasonable, responsible one and avoid those charlatans? What's some best practice, Right.
Elizabeth
Yeah. So I would say the first thing is make sure you're actually hiring an attorney. And I say that because there's a lot of, like, websites that will be like, I'll file your trademark for you. They are not lawyers, a lot of them. So there's a point in that like, what are you paying for someone to fill out a form?
Like you can fill out the form. Like if you're if you're going to pay someone, you want to pay them for the actual advice and for their expertise. So first, make sure you're actually hiring an actual lawyer. And then it really does. You know, part of it depends upon your resources and your budget and my resources. I mean do you have anybody who can give you a referral, like the best thing in the world is to have another business owner, you know, who use this attorney, and then you get a referral from that.
And then besides that, it really depends upon what kind of relationship you want with the attorney and the kind of person you are. So I sometimes I'll run into people where they want a lawyer they meet with in person. So then you need someone local, you know, and you need someone who's going to be that in-person person who's going to sit down with you.
Some people are totally fine. Is doing it all online. Some people want it be built in where they're going to have phone calls or whatever. And so people can just do everything 100% virtual. So if you think about who you are as a person, what kind of relationship you want, when I have people come in who have absolutely no idea who to hire, one of the websites that I think is a good idea actually has lawyers is trademarking a trademark.
Yeah, they have fairly reasonable fees for a legal service and they're actual law firm and. I've had people had good experience with them and they can file all over the place. So that's one. One thing I tend to recommend for trademarks. But yeah, I mean the best in a perfect world, we all have get referrals for things like that, but sometimes we don't.
Scott
Yep. And do are there firms that specialize just in things like patents and trademarks, or can I just go to a jack of all trades attorney and get this done? Should I look for a specialist or a generalist?
Elizabeth
Yeah, it's a good question. I would say you want a specialist who does trademarks on that. There are lawyers who do a number of things in intellectual property or a number of things in kind of business law who have done enough trademarks that they're they are an expert. You know, it is 25% of their practice or something, but you don't want to go with someone who they do everything they're doing, you know, personal injury litigation, and they're doing this and they're doing that.
Like that's too many things because like we were talking about earlier trademarks is so esoteric like that. And they don't actually require you to take a trademark class in law school. So someone has to have decided to learn this stuff on purpose and either in law school or they took other classes or they went and worked at a firm and got trained up on it.
So you want to make sure that they have some specialty in in trademark law. Yeah.
Scott
You know, now I as I said, I submitted a trademark application this year following your YouTube video. Did it myself and my experience post submission of that has been unbelievable to me. And I'm wondering, is this normal or not with all the scammers out there? And if it's normal, can you explain what it is and how they're trying to deceive you?
And it's it was mind boggling to me of how many scammers there were in my experience.
Elizabeth
Yeah, I agree. This is one of the things that makes me crazy as is and this happens also, by the way, if someone files an LLC or corporation, they it's because the thing is, anytime you file something with the trademark office or your local secretary of State to your LLC or whatever, that address and your email goes into a database that's publicly available and then you're going to get email spam and you're going to get mail spam and a lot of it some of it will be just like lawyers who use that as a way to try to get clients, and they actually are lawyers.
So it's just annoying. And then a whole bunch of it will be stuff that's lies like just absolute fraudulent wrong things. And so there'll be things like one thing to look out for is the international trademark database, which is not a thing that exists, and they'll be like, Oh, you have to pay 1200 dollars or whatever, but They'll be all these things where someone they like literally send you something.
It looks like an invoice and it looks like it's a government.
Scott
I've gotten several of them, but here's the one I had that blew my mind right? So I got a phone call and it said Trademark Office on my caller ID, So I picked it up and this woman's talking to me saying, We got your application. You did a great job for submitting it on your own, you know, really impressed with how you did it so well know.
So I think I'm talking to a government official, right? Yeah. And they're pretending to be that person. And then she wanted to know what my credit card number was for my processing fee. And that's when I realized this is a scam. Right. And they just totally wanted to take my my, my credit card number, charge me the 400 bucks and probably provide no service at all and just take my money and run kind of thing.
In addition to all that, I got the mail once, but the phone call once blew my mind and when I called her out on her lying to me, she's like, Look at your caller ID, We are the patent office. Like, you know, like you saying that they completely lie to you and they knew exactly what they were doing and trying to grift me kind of thing.
Elizabeth
Yeah. And interestingly enough, when the trademark when the patent office calls you the caller ID says nothing because they have already blocked. Yes. So so and on the number could be any number like that. The trademark office has offices in other places. So it's not going to just be like Washington, D.C. They have like local ones here in California where I'm at that will call me.
So and the thing is, I like I said, I haven't got a call the trademark office in years. They do and they do everything by email. So, yeah, if you ever get something that is a call or an email or whatever, you're not sure, you can log into the TSA. ADR, which is the kind of back end of the trademark system and see the status of your trademark.
And then there were also say once you're assigned to an examiner, it'll say who your examiner is and you can email them. So if you're not sure, you'll can always log in to it. You should log into it regular to see the status. Anyway, just so you know, you miss something and then you can log in to it, see the status if you have an exam, or you can email them and most of the examiners are nice and will tell you if there's some scam, especially something like that.
Scott
Yeah, well, so will the trademark office ever ask you for more money after you submit your application?
Elizabeth
If you have to pay more money, it will be in an official form thing in the sense of like you will do as part of a next filing. So they won't say to you, you have to send more money. What it will happen is they'll say, okay, I think this class that you described, for example, actually is two classes because you try to put two things in one class.
So you need to add this these words you put in the second class, which means you have to pay another $200 and then you actually get to decide that will be in a letter they send to you that you actually get it by email, but it's like a PDF and then you fill out another form on the Trademark Office's website and then pay that money at the end, just like you paid the money the first time.
So no one will ever call you on the phone to ask you for money, because that's not how they work. They're the person you talk to. The examiner is not a money person. They have nothing to do with the money. You always pay money through the website through. And if you're don't you know, if you don't want to click on a link, which is a good idea, just you just go to USPTO dot gov and then you go to where the place is to do the filings.
And then it has like every single filing that you could possibly ever do is on that same page. And so you can always find the original filing right there.
Scott
Yep. That's a good tip that all your money is gonna be paid through the same application form process website and you're going to be driving through it instead of them pulling you submit your credit card here type stuff, which you do all the time. So that's been a really good summary for the Shopify store owners. Small business owners get to start it out.
Is there anything that they need to think about that we haven't talked about?
Elizabeth
HM Yeah, I think, you know, I think the only other thing that I think we didn't talk about was if you have a if you want to file it in a whole bunch of classes and some of them you're actually making sales and some of them you aren't, I would recommend that. Or some of them you're going to make a sale next week.
But your other thing, you're not going to launch for three years. I'd recommend splitting those into separate applications because it is cheaper to do that in the front end than to split them up later, because how it works is you don't get your trademark until you've made a sale and you have to make a sale in every class, every numbered class.
So you don't want to put, you know, five or ten different classes when you're only going to make sales in two of them and I mean number of classes. So it isn't like you don't have to sell both T-shirts and hoodies and hats because they're all together in the same class. You didn't sell one of those. But if you put in a class for the T-shirt class and you also are going to be selling the fishing line, then you have to make sales of both of those for the trademark to issue if they're in the same application or are you going to pay a bunch of fees and split them up.
And that's a whole big thing. So you'll make the mistake of trying to do too many things at once. It's better to split them up. It doesn't cost anything extra to file it separately and they'll get assigned to the same examiner. So if they're filed around the same time.
Scott
So just one step at a time. I'm always a fan of walking instead of running the impossible.
Elizabeth
Yeah.
Scott
Excellent. So how can people find you and your YouTube channel and and get advice from you if they have questions?
Elizabeth
Yeah. So my YouTube channel is Elizabeth Potts. Weinstein But you can go to Elizabeth P.W. that's you don't have to spell that whole thing out. You can also go to Elizabeth P.W. dot com will react to my website and that links to a whole bunch of different places. I have the best place to get advice from me if someone actually wants one on one advice is I have a patron that's also under my same name and links through all those different places.
And then I have on there you can get advice by email, by direct message or by phone, depending upon the level of patron that you do. So that's a real good way to like get just a little bit of help. If you want to do things yourself.
Scott
Oh, interesting. Interesting. I haven't seen attorneys that do that before. It's it's pretty cool. Yeah.
Elizabeth
I don't know if anybody else is doing that, but I thought it is a really nice way for people to get just a bit of advice.
Scott
Well, that's another class that you can create when you file for that trade.
Elizabeth
Yeah.
Scott
Well, I appreciate it. This has been really helpful for me and I'm sure it's been helpful for the audience. Listening to this is a place that most people just don't understand and need that basic one on one education that I think you just gave them.
Elizabeth
Yeah. Good. Good. I'm glad.
Scott
Thank you.