TRANSCRIPT:
Introduction
MAG: Today we talk with the trademark expert who has filed more than 1,000 trademarks. We’ll talk about everything you need to know about trademarks for your brands. My name is Steven Pope, and this is the MY AMAZON GUY podcast. This podcast is sponsored by Alpha Raven House. If you want to triple your daily sales by ranking your products to the top of page one at ten percent of the usual costs and getting verified reviews along the way. They’re your solution. Check them out at AlphaRavenHouse.com. [music]. So I’m now joined by Preston with BrandRegistryTrademark.com, and I’ve got to say a thousand trademarks you’ve probably seen a few things in your day.
Preston: Yeah when you do that many you definitely see lots of different facets, and you see lots of different aspects of businesses and things that go right and things that go wrong.
MAG: Well I appreciate you joining me on my podcast today so just to set you up for our audience, tell us a little about who you are and what you guys do.
Preston: Sure, my name is Preston Frischknecht, and I’m an intellectual property attorney. I’m a registered patent attorney, and I basically run a small legal practice that focuses exclusively on intellectual property. So that would be patents, trademarks, copyrights, and anything that’s related to those issues.
MAG: Great and so since you filed so many trademarks, I have to ask: have you had any interesting ones, or what’s like the funniest trademark you’ve had to file?
Preston: I think, you know, the law has changed a little bit in the last year or two based on a Supreme Court decision. So a lot of the funnier trademarks right now are, you know, four-letter words from making it possible to protect things that were previously considered maybe immoral or obscene, and so people are getting pretty creative with some colorful terms recently.
What Should You Know about Filing a Trademark?
MAG: Well I doubt Amazon will appreciate that, but who knows how that plays out. All right so let’s talk about trademarks. There’s so much to know. It’s a very complicated field and you’re an expert in this, so if I had never filed a trademark before, what’s the first thing I should know?
Preston: That’s a good question. You know getting a trademark is a legal process and so there are lots of different laws that apply to this area, and you know I think the first things that are helpful to be aware of is knowing how to pick the right type of mark. There are actually laws that address the topic of whether a certain type of mark is more protectable than another, so if you know some of the categories that are more protectable then that will help you select a mark. And then beyond that there are other things to take into consideration. For example: whether the mark you have is too similar to another mark for a related product in the market. And those types of things can be obstacles when you’re getting a registration they can also generate liability legal liability for your company.
The Potential for Trademark Infringement
MAG: Talk to me a little bit about that, the legal liability. I wouldn’t assume if I file a trademark there might be some legal implications?
Preston: Sure. Yeah, the most important thing I think and the reason why you know it’s nice to find an expert in this area is because a lot of people think of a trademark application kind of along the lines of, maybe like a domain name registration, where you just jump online you know you go onto GoDaddy or whatever and see if it’s available. And then if it’s available then you buy it for 10 bucks. Trademarks are a little bit different in the sense that the analysis is more complicated. You don’t just look to see if the mark that you’re trying to protect is being used by someone else, but you also look to see if there’s a similar type of mark. So, something that’s in the ballpark, things that are phonetically similar maybe, or things that give the same commercial impression. All those kinds of things can be considered confusingly similar, and if you’ve got something that’s confusingly similar to someone that has prior rights then basically what you’re walking into is trademark infringement. And so it’s something that’s a little more complicated than just filling out a form online and seeing where it lands. It’s doing some due diligence up front to make sure that what you’re launching is something that has space to land and that’s gonna land safely.
Hiring an Expert and Trademark Specimens
MAG: So the first trademark I ever filed was a couple years ago, and I did exactly kind of what you mentioned. I thought it was like filing for a registered domain. And so I went in and I read all the videos and I did it and I filled it out and I submitted it. So the trademark I submitted was for a brand called Monster. It went through just fine. I didn’t have any challenges, but it was a very frustrating process to try and learn it and so I definitely recommend my viewers to get an expert. It is not worth the countless amount of hours it takes to go file it yourself. You should hire an expert, like Preston who’s joined the call today, to make sure it’s done correctly. There are so many mistakes you can make along the way. One of the mistakes that I personally see people make is their specimen. So maybe you could speak a little bit briefly on that any tips, or recommendations, or common mistakes you see on specimens.
Preston: Sure. There’s really a lot of different things to talk about in this particular area, but a couple of the big ones: there are two different routes you can go about when you file for a trademark application. One is called an intent-to-use application and another is called a use-based application. So, under an intent-to-use application basically what you’re saying to the trademark office is, “Hey I’m not necessarily using this right now, but I will be doing so at some point in the future, so start examining it now.” With that type of application, you don’t submit a specimen. With a use base-d application, you start off by submitting a specimen. And at some point in any application you’re gonna submit a specimen. There are many advantages to filing an intent-to-use application instead of a use-based application. That’s one thing that a lot of people that try to do it themselves don’t know. But there are there are really a lot of advantages to doing that former type of application. Another thing that I find pretty commonly with do-it-yourself type typed folks is that they’ll apply for a mark and then when they submit a specimen, the trademark office will come back and say “wait a second,” the specimen that you have submitted is different than the mark that you’ve applied for. And the trademark office is very particular and very sort of precise about matching up what you’ve applied for and the specimen that you submit, and a lot of people aren’t really aware of how precise those two things need to match up.
MAG: Same thing with Amazon right? So I onboard clients all the time at my Amazon guy and their trademark is for an all caps word and they want to have a brand name with proper case with just a capital first letter, and I’m like sorry you got to match your trademark name. And that’s a multi-thousand dollar mistake—branding affected—that somebody like you Preston would just catch immediately, and say “Hey are you sure you want to file this in all caps?,” “Are you sure you want a space here?,” or “You know I don’t see a lot of trademarks with that ‘’’ on the ‘e’ at the end you sure you want to do that?” Right it’s like that’s the kind of thing I think you know you’re probably catching on a daily basis if I had to guess.
Preston: Exactly, yeah.
Amazon Benefits of Trademark Registration and the IP Accelerators
MAG: So let’s talk a little bit about trademarks and how they relate to Amazon. So for those that don’t know, you need a trademark to get what’s called Brand Registry on Amazon. Brand registry is really cool because it gets you access to new types of advertisements, A -plus content, brand stores– the list goes on. You can even, you know, track product reviews easier– a lot a lot of brand dashboard benefits. So one of the one of the things that kind of popped out of Amazon here in the last couple months is this program called the IP accelerator, and they get your trademark quicker. And that can be a benefit right, six-month process for a trademark. Normally that’s a long time, but Preston what what’s your opinion on the IP accelerator based on what you’ve seen.
Preston: So I think that you pointed out the main advantage correctly which is I think the IP accelerator program is sort of a preferential path that Amazon has laid out and they say “you know look if you use the attorneys that we like, we’ll bump you to the front of the line and get you on the Brand Registry now and then if something goes wrong and you don’t get your trademark registration we’ll kick you off. But for the time being we’ll move you up to the front of the line.” That’s the main advantage. The main drawback is Amazon is saying that they’ve pre-negotiated the rates. And they’ve sort of pitched that as a good thing. They’ve said, “You know we’ve pre-negotiated the rates and so you don’t need to worry about that,” but there have been a lot of statistics done in this area and we know really well what people pay on average for these types of services. And you really end up paying significantly more by going through the IP accelerator program, on average, than you would by using you know basically a mid-to-large-sized law firm. And you know part of what we do with our services is to try to undercut that even more. And so really, you know, what we do or at least my company does in particular, is we’re doing those services for a fraction of the price that the IP accelerator program does them for. Got it, so it’s just a question of cost and speed. And in terms of expertise, so I know very little about the IP accelerator beyond what you’ve just stated. That is pretty much my own understanding of it. Do you see them as qualified, or do they offer different services? Do you think there’s any superior or inferior elements?
Preston: You know I’ll be honest with you. The firms that are listed on the IP accelerator program are not the biggest, most well-known firms in the country. In fact, I don’t know any of them. I haven’t dealt with any of those firms. I have no reason to doubt that they’re confident with what they’re doing, and I assume, you know, if they’re doing that type of work that hopefully they’re competent. For me, I think the biggest issue is costs—you know getting the biggest bang for your buck. That that’s essentially what I, if I were a business owner or an Amazon seller, that’s kind of what I would be aiming for, so how can I get the most for the least, and so in that sense I think there are lots of options to look at.
Trademark Selection
MAG: Got it. We’ll move on from the IP accelerator so how do you know if you’ve got a good trademark?
Preston: That’s a great question. Typically when people come to me they’ve already picked a brand, but if you come to me early enough and you say, “look I’m in the process of picking brands.” I usually try to guide people and give them some guidelines that they can use to select a good mark, and one of the simplest rules to keep in mind when you’re picking a trademark is to make it distinctive. Trademark law says that brands that are more distinctive are more protectable, and brands that are not distinctive are not protectable. Okay how do you tell when something is distinctive or not? The easy way to think about it is think if you’ve got a generic name. So you know if I had a product that was like a clock and you know my brand name for my clock is “clock.” That’s not gonna be a protectable brand. It’s not distinctive. You’re basically calling the product what it is. But if you were to call, you know, the clock the “ninja clock” or something like that, you know, think of something that adds a little bit of distinction on to it. That makes it more protectable. And the strongest marks have to do with words that are made up; they’re completely made-up words or logos that really have no close association between the brand and the product, and a good example of that may be the Apple logo. So, an apple with a bite out of it really doesn’t have anything to do with computers. There’s no direct association between those two things, but Apple has forged this identity in the marketplace for this particular symbol so that when people see that they know inherently that that’s an Apple computer. So the strongest marks are the most distinctive. The weakest are the least distinctive. Usually if you’re starting a company or starting a brand you’re trying to land somewhere in the middle because you want to tell your potential customers what it is you’re selling. You want to have something catchy that maybe hints towards what you’re selling but doesn’t totally let the cat out of the bag if that makes sense.
MAG: It does, and so you mentioned that clock example. I think what you’re describing is if your mark is too descriptive then it won’t get approved. Is that what you’re talking about?
Preston: Yes. In fact that’s one of the categories that there are. There are four or five major categories. The weakest marks are generic or descriptive. Those are a couple categories of marks that are not protectable. And then once you get into a mark that’s suggestive meaning that it doesn’t directly tell the consumer some aspect of the product but it kind of hints a little bit towards it then that’s where you start getting into a protectable brand, and beyond that you get into the arbitrary and fanciful marks where, you know, the word’s made up. It’s a logo that’s completely disassociated with the product. Those are the strongest. So, you’re exactly right.
MAG: One of the other areas that I know we have struggled with is location-in-name marks. I would I would love to pick your brain on this one. So we’ve tried to file marks for you know things that have like the name “Kyoto” in it and haven’t had success on this because the product wasn’t made in Kyoto Japan. What can you share wisdom-wise on whether you should have a location in your name—or maybe you shouldn’t?
Preston: Yeah that’s another great question, and really the area of law that that deals with is descriptiveness, and what the trademark office is trying to say is that if you’ve got something that’s too descriptive, we don’t want you to lock it up. We don’t want you to lock up city names or the names of people– that kind of thing. But there are some caveats to that general rule where you can name things geographically or give them a person’s name, and some of those caveats have to do with lesser-known locations. So, if you have, you know, the name of the location that’s not commonly known then that’s typically something that you can use to brand your product. Or in some instances, if you have a location that is far away from where you are– what I’m meaning to say with that is if it’s far away from where you’re sourcing your product or where your corporate headquarters are in. In lots of instances if there’s some space between the geographical location you’re trying to use as a brand and where you are, that can fit into an exception. And so those are some, you know, examples of exceptions, but really it’s gonna be case by case. So I wouldn’t eliminate geographic names or persons’ names entirely from consideration, but this is really where it’s worth it to sit down with an expert to see, you know, “Is there space for a brand in my particular application?” And that’s something that someone can help you work through.
The Value of Trademark Registration
MAG: So that makes perfect sense, and there’s a lot of complications with that I’m sure. Alright so next question for you. So me as an Amazon agency, “My Amazon Guy” and most of my clients really the only thing on our minds is we just want brand registry, right? But I assume there’s probably some more value to a trademark outside of Amazon. Help educate me on that one.
Preston: Yeah you know and that’s what a lot you know we work with a lot of Amazon sellers too and that’s what they’re looking for is to get on the brand registry because that’s the immediate payoff for them of having a registered trademark. To look at it a little bit more broadly, I think there are a lot of long-term advantages to having protected your rights, and you know if you want to sort of pull up at a 30,000 foot level, something that’s interesting to look at is: you know there are there are people who have crunched the data of the value in companies. And you know, back in the 70s, most of the value in companies came from the hard assets in that company. So, you know, if you made widgets it was all the widgets that’s in your warehouse. Or, you know, if you’ve got a building, it’s the building or whatever assets you’ve got. But if you look at it now in the S&P 500 almost 90% of the value of those companies comes from their intangible assets. So it’s not their buildings. It’s not their inventory. It’s not all that stuff. It’s the actual brand value, and you know you can say that’s great for S&P 500 companies. I’m just a little mom-and-pop shop, but it operates the same way. Your brand can become essentially an appraisable asset in your company, and that’s what I think a lot of businesses goals should be– is how can I build value in my company the quickest and the most effectively? When you lock up brands as assets, those can actually add baseline value, so that’s the long-term. The short-term is maybe the brand registered trademark—in the sort of in their intermediate parts of those two perspectives—you’ve got a lot of competition management you can do there are a lot of games that you can play when you have locked up your intellectual property rights against your competition. And most people just aren’t aware of them, and if you look at how the game’s played at the highest levels, you’ll see that people are throwing their elbows around. You know if they have intellectual property assets, they know how to use them, and we’ve been very effective helping a lot of sellers d-list competitors—lots of times without the seller even having an intellectual property basis to do so to begin with. It’s just someone coming to me and saying I’m having a lot of trouble with these competitos; is there something we can do, and you know we can we can find or establish intellectual property hooks to manage them and basically increase the bottom line.
What to Do in the Event of Trademark Infringement
MAG: Great. So if somebody has the opposite side of that spectrum where they have accidentally infringed on a trademark on Amazon what should they do?
Preston: That’s another great question, and again, it goes I think, to the fact that a lot of people for a lot of people this is kind of nebulous territory. It’s a little unexplored they don’t know where rights begin and where rights end, and so we also help a lot of people who are defending against infringement allegations. And we can help those people understand better where rights begin and end because it’s one thing to get a really scary letter from an attorney that says stop what you’re doing, you know, change everything or we’re gonna sue you. And it’s another thing to understand, okay that’s argument has a 5% chance of succeeding– like it’s just wrong. And so lots of times on the back side of things it’s really worth exploring where exactly are the lines and the rights here, and what are my options for negotiating, you know? Lots of times there’s a lot of room to negotiate. You can negotiate phase-out periods even if you’re a hundred percent in violation of someone else’s rights. If you have someone who knows what they’re doing, they can buy you time and that time can help you work through inventory and help you pivot to something else that’s more closely aligned with what you wanted to do rather than what someone else makes you do. And so it’s simply worthwhile to sit down with an expert or partner with an expert to find out what the options are.
MAG: So for somebody who’s ready to get started with Brand Registry Trademark, your business, Preston what’s the first step?
Preston: You know one of the things that we’ve really tried to do, our goal is to be affordable we don’t want to be a normal law firm. And so we want to give people a lot of value and be sort of, you know, I think we’re in the bottom quartile of costs, and what we’re trying to do is offer the top 10% level of services for the bottom quartile of price. And typically, what I want to do is just understand what people are doing. If I can understand what they’re doing and find out where they want to go, then I can kind of show them the options that they might have or [show them] tools that they haven’t considered. And what we do is we do a lot of consultations. Really if you look at our process you know we’re talking to people a lot, and we’re trying to include a lot of that time in our price and our pricing, so people aren’t worried about, “oh my gosh! I’m talking into attorney for six minutes and I got to pay for all this.” You know we try to build in a lot of consultation time upfront so that we can get people where they want to go.
MAG: Well perfect. Well Preston it was a pleasure talking with you today. There is such a foreign, complicated, complex world in the trademark world, and I’m sure you know how to navigate it, so if somebody needs your service they just go to BrandRegistryTrademark.com. I appreciate you coming on today.
Preston: Thank you we appreciate it.
MAG: All right, well perfect, that is the My Amazon Guy show today, so if you are new to My Amazon Guy—maybe you came in from Preston’s group of people—My Amazon Guy is a one-stop shop for all things Amazon. We can help you with getting your listings created, SEO, and PPC, all of your keywords, and then once you have that brand registry you need to go get that a plus content in place we do that for 500 bucks right on the website. Go to my AmazonGuy.com. Thanks so much for listening today we hope you subscribe to the My Amazon Guy podcast.
