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Protecting Your Disruptive Intellectual Property with Angela Langlotz
My guest is Angela Langlotz who’s an attorney for many years and for the past several of those years, she has been focusing on business, intellectual property and trademarks with a TrademarkDoctor.net. I invited her on the show because she helps me with the protection of my intellectual property. I wanted for her to share with you what you need to do to protect your disruptive intellectual property. Welcome, Angela.
Thank you, Mark. It’s wonderful to be here on your show. I’m happy to share what I know with your audience.
Let’s start off with the biggest mistakes that companies and executives make when it comes to intellectual property.
There are a lot of mistakes that people make, but one of the biggest mistakes is failing to ahead of the production or the selection of the brand or the production of the product to involve an IP attorney. When you’re developing a brand, you can get a trademark for your brand’s name. You can get a patent to protect your useful inventions. I do the trademark and the copyright and the licensing side. I’m not a patent attorney. One of the things that people tend to do is they tend to select a brand name or a product name without checking to see whether or not that brand name or product name is free to use on their goods. What happens is they’ll select a brand or a product name. When I say a brand, it can either be a brand name for a company or it can be a brand name for a product. For example, the Nike Corporation owns the word Nike for their overarching company name and all of the things that their company produces. They also have trademarks filed for their individual products.
For example, they own a mark called Air Jordan and they owned Cortez for tennis shoes. They have a lot of product trademarks as well as their overarching company trademark. Apple owns the Apple word, but they also own Mac for computers. One of the things that I see a lot of people doing is they are adopting product names or brand names that infringe on other people’s trademarks. They spend time investing in the brand and then they get a cease and desist letter or their trademark application gets refused. It turns out that they would have saved themselves a lot of heartache and headache had they contacted an attorney beforehand and said, “We’re thinking of using this name. Can you help us get a trademark clearance for this to make sure that we can use it and then help us to protect it?”
Without that small investment in talking to an IP attorney, you waste all of that marketing effort and worse yet you could be sued for infringement.
It’s not just the marketing material, it’s all the marketing collateral as well. How much does it cost for you to have flyers made and business cards made and all of the other marketing collateral, the logo, all of that made? All of a sudden you have to switch horses in midstream and redo it all. It’s a big expense. It’s less than $2,000 to have a trademark application filed and do the search and everything. I don’t understand why that’s not a consideration.
You’ve got to put that into your product development mix is check the IP early, and then work with the trademark attorney to make sure that everything is in alignment so that you get the trademark.
When you don’t get the trademark, it throws a wrench into everything. To give you an example, let’s say that you do decide to apply for the trademark but you don’t bother to do a good search or you do what’s called an exact match search. These exact match searches which are what these cheapie trademark filing services do like Trademarkia. What they do is they go in and they do what’s called an exact match search, which means they spend 30 seconds, they put the exact brand that you want to know about into the trademark register. They do a search and then see if somebody has that exact mark. The problem is other people’s trademark rights extend beyond their exact mark and extend beyond their exact goods. Anything that is confusingly similar to their mark is not going to be capable of being registered. You need to do a good search and that’s where people screw this up.
It seems to me as confusingly similar is a pretty broad declaration or test. How do we know what’s confusingly similar or not?
It depends on the goods and it depends on what people are used to seeing in the marketplace. For example, we look at what are related goods. Related goods are anything that consumers are used to seeing marketed under the same brand name in the marketplace. For example, I did a video about how perfume and cosmetics are related goods. Perfume and sunglasses are related goods. If somebody has a trademark for Tom Ford for sunglasses and somebody else wanted to produce some perfume under Tom Ford, those would be considered related goods in the marketplace. The trademark application would be denied. It’s because we see it’s common for people who produce sunglasses to also produce perfume.
Tiffany & Co. produces sunglasses and perfume. Ralph Lauren produces sunglasses and perfume. Carolina Herrera produces sunglasses and perfume. The point is it’s common in the marketplace to see those two types of goods produced by the same brand, by the same company. If you’re the consumer you would say, “I wonder if,” and any time the consumer is saying in their mind, “I wonder if,” that’s a likelihood of confusion. You don’t have to have confusion. We have to assert that there is a likelihood of confusion. We all know what that looks like when you’re used to looking at these things in the context of the goods and services, but it’s all contextual. We have to look at what are people used to seeing in the marketplace when we evaluate a likelihood of confusion, of question.
I could see easily that somebody would say, “There’s nothing like this,” and not realize that there’s the adjacency, that likelihood of confusion. Yet that’s what the trademark examiner is going to be doing because they do that every day. Your job as an intellectual property attorney is to crawl into the mind of the examiner and think about what they might rule one way or the other.
When you’ve done this long enough, you start to understand what the trademark examiner is looking for. You figure out ways to describe the goods that are a good description but seem far away from anything that’s already in the trademark record. There are ways sometimes to massage, we’re not deceiving anybody but we’re massaging some things to make it easier for the trademark examiner to say yes.
Part of this is picking brand names and titles and whatever that we’re using to describe our products and services in a way that it is going to be protectable.
We want to make sure that whatever we’re filing with the trademark office is capable of being protected. There are other reasons besides being likely to be confused with another mark that a trademark application might be rejected. For example, people often try to register marks that are nearly descriptive or generic and those aren’t going to work. I see that a lot too among people who file their trademark applications themselves.
Give me an example of a descriptive trademark that might get thrown out.
A descriptive trademark is one that merely describes a quality of the goods or the purpose of the goods. For example, there was one guy who wanted to register Portland SEO for SEO services. That is a descriptive trademark. His company was in Portland and he offered SEO. It’s a geographically descriptive mark and it’s also a mark that describes the goods that he’s offering. That would be considered descriptive. Other marks that might be rejected under that merely descriptive umbrella are marks that are merely laudatory. If I say best like, “I want Best SEO,” I want that to be for search engine optimization services, I want Best SEO. That’s going to be rejected for being merely laudatory. In other words, it’s merely describing how great my SEO services are.
Anything that describes the superlative characteristics of your goods and services, that’s going to be rejected at least initially under a merely descriptive theory. It sounds weird to have laudatory remarks fall under the category of merely descriptive but when you think about it, something that’s laudatory is merely describing a quality of the goods. It’s best. It’s super. It’s wonderful. If a superlative mark is for long enough associated with the goods, then it is registerable but it will be registerable after a period of years. If you want to get your trademark application registered right away, don’t use those terms.
If you don’t register it, that also leaves you open to infringement that’s unenforceable.
I’m not saying don’t register your superlative marks. What I’m saying is you can apply to register those but they’re not going to be protectable for five years. There are two trademark registries. There is the principal register for distinctive marks and then from non-distinctive marks, there’s something called the supplemental register. When a mark is registered on the supplemental register, it is a registered trademark but it’s not enforceable for five years. Think of the supplemental register as a trademark sandbox where non-distinctive marks go to play for five years, and thereafter we can apply again to move them to the principal register. During that five-year period, you’re not able to enforce your exclusive right to use that term as a trademark. Let’s say that you wanted to register Best SEO, you can register Best SEO, in theory, on the supplemental register but you’re not going to be able to prevent other people from also claiming that their SEO is the best. After five years however, you might be able to prove that you’re Best SEO brand has acquired what’s called secondary meaning. When people think of Best SEO, they think of your brand. That’s probably going to be a stretch but if you can prove that, then your mark is eligible to be registered on the principal register. There are ways to get those terms registered but it’s more time and it’s going to be more difficult of a case to prove.
What we want to do is pick names for trademarks that are going to be something that we’re going to build our brand around.
You don’t want words that are laudatory or descriptive or generic. The best way to avoid that is to make up a word. Brillo is one of my favorite brands, those scrubbing pads. There are a lot of reasons why I like that mark. It’s fanciful. It’s unlikely that someone else is going to be using it. It conjures up some things about the Brillo. Brillante is Italian for shining. Brillo, shiny sounds a little abrasive. You can imagine scrubbing your dishes.
It’s a word that you can play with, as you pointed out, fanciful. You can create whatever meaning you want around that brand. You recommend that people come up with these fanciful, made-up names that are easy to get a yes in the trademark office because nobody’s associated with it. You get to do it any way that you want.
Other terms that make good trademarks are so-called arbitrary marks, the most famous being Apple. Apple was arbitrarily assigned to computers. Jaguar is suggestive too. Jaguar suggests something that is sleek and fast and sexy and maybe it purrs when you start the motor up. It’s a good brand for a sports car.
It growls when you punch the accelerator. There’s something that we could create a story around. It’s tempting especially for entrepreneurs to go out there to the USPTO website and step through and pay the money and avoid the legal fee. That usually costs a lot of money in the long run.
It does and here’s the problem. The filing part, that’s the easy part. Anybody can do that, but the hard part is avoiding somebody else’s brand and doing the search and evaluating the search results. You might say, “If I get a rejection, we’ll apply again.” You can do that, but the issue is that you don’t hear back from the trademark examiner for about four months after you submit the application. During that four-month period, you’re investing in the brand. You’re creating marketing collateral. You’re producing packaging perhaps. You’re betting on a yes from the trademark examiner and then during month four, you get the bad news. Your trademark is refused under 2(d) rejection because it’s confusingly similar to somebody else’s mark. Sometimes we can overcome those rejections. Sometimes the trademark examiner unjustifiably rejects the application. Oftentimes, we can’t argue against them because truly the trademark application should have never been filed in the first place. I don’t think people realize there aren’t any do-overs. You’ve wasted the filing fee and you’ve wasted the four months and now you have to start over from square one trying to figure out a name that is going to work for your product or service.
If you do it wrong, it can set things up for the fact you’ll never get it even if it was possible to argue for justification.
You can make a record that can’t be undone. I’ve had some clients come to me after they’ve made certain admissions in the trademark record. Let’s say you were going to apply again because you’ve got a rejection in a certain international class. You were going to claim the use of the mark in another class and some other goods that didn’t seem quite related to what’s already in the trademark registry. The thing is that the trademark examiner is going to go back and look at the earlier application and that’s going to alert them possibly to some issues that they need to take a closer look at. Once you file something with the patent and trademark office, it’s there forever. There’s no erasing it. I’ve had a couple of situations before where the client has made admissions to the trademark examiner or filed certain things in a certain way with the trademark office and I can’t undo those. That can be hard to deal with.
We need to do it right the first time. When you have that, then you can get that protection. The biggest issue is not getting help filing the intellectual property mark. What other big mistakes do you see companies make in the protection of their intellectual property?
This is one that I see a lot for unrepresented parties. I understand that when you’re starting up a new business, it doesn’t seem like a good idea to go and hire an attorney to figure all this out for you. It’s less than $2,000 but it’s money that you feel you can spend elsewhere. I’m sympathetic to that. I also see it causing a lot of problems for people. One of the things that happen and I see this a lot with eCommerce is the client or the self-represented person will go in and they’ll say, “I want to use this on t-shirts, but I also want to use it on hats and socks and baby onesies and all of that.” When you claim use on clothing, you can’t just say, “I want to use it on clothing.” You have to say, “Clothing, namely,” and then name all the clothing that you want to use it for. There is a rule that you have to be using the mark on all of the goods that you’re claiming in your trademark application, even if those goods are in the same class.
If you aren’t truthful about that, your mark can later be canceled for fraud upon the trademark office and not just the parts that you were fraudulent about the entire mark. It’s the nuclear option. Anytime I’m looking at a trademark cancellation for a client, I go in and I look at what was their opponent claiming use on and were they using it that way? In many cases, the answer is no. You leave yourself open to a cancellation action for fraud at any time after your mark is issued. You can have an issued trademark that you’ve had for fifteen years. If you keep renewing the mark based on an allegation of use that isn’t true, say you were using it on t-shirts, hats and socks but not baby onesies and you never removed baby onesies from your trademark registration, your mark can be canceled for fraud.
You’ve got to do it. You’ve got to put into play what you say because that does keep people from locking up on lots and lots of trademarks and never using them.
If we’re going to give you a trademark registration for certain clothing items, then you need to be using the mark on those items. You can’t fudge that. You can but you’re leaving yourself open to the cancellation of your trademark for fraud.
The other side of that is if there’s a mark out there that you like, there could be a path to get that mark canceled so you could use it.
Depending on what the goods are, yes.
What are the key benefits of getting the protection, of getting a trademark?
Certainty is one of the biggest things that you get the trademark registration. When you own the trademark registration, it gives you exclusive rights to use that mark nationwide. That means that you have unlimited ability to expand into new markets. Let’s say you’re a brick and mortar and you want to expand or franchise, you have the ability to do that with a trademark registration. When you don’t have a trademark registration, it’s going to be hard for you to expand because someone else could come in. Let’s say that you do business in Idaho and Oregon and some other person who’s selling related goods comes in and they get a trademark registration. Will they have rights everywhere that you’re not using the mark? If you’re only using it in Oregon and Idaho, then they have rights in the other 48 states. Your rights don’t trump theirs in areas that you don’t have common law rights. Common law trademark rights only extend to those areas where you’re using the mark. When you’ve got internet businesses, which is primarily who I represent, although I do represent some brick and mortar businesses as well. When you have an internet business, you can say, “I’m doing business everywhere so that means that I don’t have to get a trademark registration.”
One of the biggest advantages of getting a trademark registration is that your mark is in the trademark database for other people to find and avoid. Sometimes people don’t do a search online to see if they’re using it. They just go to the trademark database. When the trademark examiner evaluates whether or not a trademark is available for use, they don’t go out into internet land and look. The only place they look is in the trademark database. They’re not going to know about your common law rights. They’re going to be oblivious to that and they’re going to say, “It’s not in the trademark registry. We are going to issue a trademark, a registration for this brand.” The senior trademark holder, without the trademark registration, is in an uncomfortable position of having to defend their trademark rights. That can happen and I’ve seen that happen in my practice a couple of times and it’s hard to defend against. There’s a lot of stuff you have to prove. Anytime I say there’s a lot of stuff you have to prove, whenever I say prove, that’s money you didn’t need to spend but now you have to spend it to prove stuff in court.
What’s the approach that an executive should take to make sure that their intellectual property is protected? Give me the things that you’ve got to do, a sequence of events.
Anytime you’re coming up with new products and you’re evaluating brand names, you should go to an IP attorney and say, “We have this new product we’re coming out with. Could you please check?” I usually tell my clients, “Give me three names and I’ll tell you which one is most available. Tell me what your favorite one is and if that one’s available, we’ll stop there. If that one’s not available, I’ll go to the second one and into the third one and we’ll see what’s available.” I don’t think people realize there are literally thousands of trademark applications being filed every day because it’s not just people in the United States who are filing trademark applications. It’s anybody who does business in the United States. Think about all these people in China and Europe and other parts of the world that are filing trademark applications here in the United States at the Patent and Trademark Office. It’s not just us here. It’s a crowded field out there. It’s sometimes hard to find a good brand that you can use. Before you start investing in a brand, you want to make sure that it’s available.
Now that you’ve got an IP attorney checking out what’s possible, what’s the next step then?
You want to file intent to use the application in order to maintain your right to use that brand. There are two bases for filing a trademark application. You can file one based on your actual use in commerce or you can file one based on your intent to use the mark in commerce. The second one based on your intent to use the mark in commerce is great because it allows you to reserve the right to that brand before you’ve started using it. It means that you’re first in line for that brand. All we need to do is we file the trademark application, but we don’t prove use yet. We have some time after the mark is approved, six months, in order to prove use. If we can’t prove use, we can extend that time by another six months up to three years by paying a fee and filing a form.
If you’ve got something they’re looking at down the road, then intent to use is the magic. You can lock it up and then start working your way to it. Otherwise, you have something that is in use now and you’re attempting to file the trademark for it.
You can file based on your actual use if you want to. The problem is if you have a brand that you like and you want to develop that brand. If you wait until you use it to file, somebody else can sneak in there and apply to register it. Even if they’re not using it, they can apply based on their intent to use and now you’ve lost your brand.
It’s locked up for three years even if they don’t.
That’s the potential. I have had some clients that have happened to. We’re stuck waiting for them to either use the brand or not use the brand. That could go on for three years.
That’s not a good business plan.
It’s a terrible business plan. One of the major reasons why you want to get a trademark is certainty. That’s the other reason why you want to file a brand-new mark based on your intent to use it is that you get the certainty before you start using it that you can use that brand. You don’t have to go, “I hope it’s still there in six months when we finish our product development. Maybe, we’ll cross our fingers,” not a good strategy.
Thank you for sharing all these great insights into how to protect your intellectual property. If you have a valuable brand and it grows and you don’t have the protection, it could be stolen away from you. How do people get ahold of you, Angela, to have a conversation with you if they’d like to tap into your wisdom and working with intellectual property?
Both of those are great ways of getting ahold of Angela. I always benefit from the conversations that we’ve had. Thank you for generously sharing your insights with our audience.
Thank you so much for having me. It’s been wonderful to be on with you.
About Angela LanglotzAngela Langlotz is an attorney specializing in online trademark and copyright issues. Having marketed products online for over 10 years, Angela is acutely aware of the unique issues that online marketers face with regard to domain name issues, copyright issues, and cybersquatting.
Angela serves offline “brick and mortar” clients as well, and has extensive experience in the firearms industry, helping companies such as Hornady, Barrett, Cor-Bon, DeSantis Holsters, Hogue Grips, and Dillon protect their valuable brand identities.
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