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All right, let's see, share screen.

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Okay, I just want to show you guys a few features here

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under trademark searching.

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So what I did was I went into the second block. So there's three different types of searches,

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there's the basic word search, which is this one. So your options here are combined word mark,

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which really can be any single word or multiple words. The problem is,

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unfortunately, when you search multiple words, it can be complicated because if I look up

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Microsoft, let's see, what's, oh, Burger King, that's a good one, Burger King. Burger King.

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All right, so anything that has Burger King will pop up, but then what you also get,

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see if I have some examples here, next list. Okay, so if you get more records than you can

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see on one screen, just click the button next list down there. That'll get you to more. But

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the only search results you're going to get when you type that are the words that anything that

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has the word Burger King in it, or apparently somebody was smart enough to go after BK

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and add that into the United States Patent and Trademark Office's database. So they see that

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as an equivalent to Burger King. That was kind of clever, kind of smart. I wonder if it's actually

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owned by Burger King. Let's see. Yeah, Burger King brands. So owned by them. All the BKs are

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Burger King brands. Yeah. So the thing is, when you become big enough, you can actually own

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acronyms. So remember how we talked about getting trademarks for acronyms? And we said what they'll

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do is they'll actually search for what the acronym stands for. There's a good example of that.

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So BK stands for Burger King. So when you did a search for Burger King, you got everything

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that had BK. So anytime that somebody files for an acronym with the United States Patent and

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Trademark Office, you'll find that the examiner is going to ask you what does that stand for? And

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when they ask you what it stands for, they're going to actually make an equivalent to that

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within their database. So what should technically happen, and I use the word should because sometimes

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it doesn't work this way, but what should technically happen is the acronym, the equivalent

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of the acronym, whatever the words are that's associated with that acronym should pop up in

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your search. Should. What I'm going to tell you is don't rely upon that though, just in case.

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All right. So if you have BK, then make sure you're searching for Burger King also.

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Like search for both. Search for the acronym plus search for the words themselves. It's important.

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Otherwise what can happen is you think that you're safe and you're really not. The other part is

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you can search live trademarks here or dead trademarks. Now let me just kind of talk a little

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bit about dead trademarks. What most people think is that if a trademark is dead, you don't have to

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worry about it. That's not true. That is not true. Okay. So if I do a search for, like we just did,

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Burger King, and then I scroll down as I go lower, next list. Why is only 24 coming up now?

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Let me see. Oh, I clicked live. That's why. All right. Live and dead. There we go. Submit.

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All right. There we go. There's your hundred. It's kind of funny that Burger King has exactly

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100 trademarks. Anybody else find that interesting? Exactly 100. That's kind of interesting.

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All right. So you see all these trademarks here? They say dead. See that? Seems rare.

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All those are dead. Dead. These were like burger ideas that never made it very far.

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So you might think to yourself, well, I can go use BK Joe because BK Joe is dead.

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But here's the problem. Okay. The problem is that even though somebody may have allowed the

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trademark to go abandoned by not renewing it or not responding to a office action or whatever

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the case may be, that does not mean that they necessarily do not have any rights.

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see their trademarks. Somebody unmute and tell me why. See if

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anybody can figure this one out. Why is it that on the USPTO site

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it might say dead, but the party may still have trademark rights?

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Is that common law? Yeah, I think they've been using it.

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Yes. Carrie, is it? Can you just work with me? Like, can we just

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work together? I'm wondering, you know, sure, sure. You know,

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all this job. Sure. This is good. Right after I get back

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from Europe in about two weeks. There you go. Just before

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conference is very good. Very good. Carrie. So I had I was

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counting down until you asked her that. I know, right? Like,

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she's, she's so on it. I mean, she and Catherine are like on

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every single point. She's like, though this scenario that

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so good. Alright, so, um, that's correct. So you may have a

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situation where you do a search and you think it's clear, but

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then when you go, and you start, you know, like you go after

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federal registration, you find out the other party owns like

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eight states. You didn't you thought it was safe. So how how

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exactly do you handle these situations? Let me show you

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something that's kind of cool. Let me do I'm going to use a

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different name, though, from Berg. Berg King's not really a

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good example for this.

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Um, before you get off, I guess you are off the page. Now. It

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showed a classes. There you go. What was that? It is. So it

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shows a column for classes. Yes. But not all of them have

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classes. That's correct. So what are classes? international

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classes? Okay, those are the international classes on day two.

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What they are is any goods or services that you have are going

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to fall into a international class. And so as an example,

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here, I apologize, he went over that. Yes. Oh, no, no, it's

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fine. I just want to tell you what day it's on. So you can

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find if you want to watch the replay, it helps you out to

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that would be day twos replay is where there'll be a breakdown of

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it. But you see right here where it says providing online

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training courses, right? Yes. Alright, so that's class 41 is

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typically online training classes are online training.

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Yeah, courses are in class 41 predominantly, right. So for that

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reason, what you should see and what what I don't understand,

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actually, is when you actually look at the list.

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So my real question was that some of them don't have any

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classes. Yeah, that that's what I'm talking about. And I thought

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all of them needed to have classes.

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Well, they all do have classes. The question is, why aren't they

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listed? That's, that I believe is just a USPTO issue. See,

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because here's a registration in class 30. You see that? King

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cake, burger, gosh, that's a hard one. Oh, okay, it was

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another company. Alright, King cake burger, right? So when you

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look at King cake burger, there it is class 30. We just saw that

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right. But then when you look at the next one, BK, that's in

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classes 35 and 41. But when you look back over here, it's not

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listed. So I just think that's what is that because it's more

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than one class? No, because there's multiple classes on some

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here too. Oh, sorry, the chat's blocking me. Here's like three

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of them there. You know, I think it's just the USPTO records or

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not. This is why I tell you guys like what I'm training you on

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and searching is great to get rid of potential trademarks. It's

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horrible to determine whether or not you potentially infringe. I

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would never rely upon the United States Patent and Trademark

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Office exclusively determine if you infringe, I would decrease

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the number of trademarks and then get an attorney or get a

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third party to do a formal search. Like today, john

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umstead called me up with one of his clients, he coaches. So he

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had one of his clients with him. His clients now actually

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become one of my clients. And he had he did a Thompson Reuters

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search, a Syrian search, which is like the best kind of search

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you can get. And he said, Hey, we already paid. Like we already

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paid the 800 and change to that company, we got the results

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already. We just want you to result to review them. And so I

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said, fine, no problem. So he just forwarded to me and over an

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hour, we started looking at these different logos to see if

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they're potential trademarks.

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infringement and then word marks to see if there's potential trademark infringement.

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We did that together live, and it worked out really well for his client.

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When we did that, we found certain things that may be a concern.

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And so now he has to kind of go a little bit back to the drawing board.

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But, you know, when he did the search himself, he thought, I'm clear.

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But that Syrian search is so good. It's like,

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I mean, honestly, I wouldn't spend 800 bucks on a search, but they are really good.

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And so they find stuff that you just not going to find anywhere else. And so

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for that reason, it's good. But you asked an excellent question, as usual, Catherine. And

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I honestly have no idea why they didn't populate these, because clearly there's a class,

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like every single filing must have a class.

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It's right there, class 43. So class 43 should be on your way. Nothing there.

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So that's their own issue with their own database, not populating things properly.

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So can I ask a general question back to the common law thing?

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Yeah, go ahead.

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Is there a period of time that you have to,

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well, is there a period of time that if it has not been used for a period of time,

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put it that way, that then you can use it? Like, does common law just exist forever?

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Yeah, that's a good question.

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Right? I mean, at some point, it's got to be able to fall off.

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Yeah. So in the United States, if you have a federal registration, then it's

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it's three years of consecutive use, you have to maintain three years of consecutive use.

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If you don't, you can lose your trademark under common law.

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See, common law is, it's not like United States patent trademark law,

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where you kind of you have a very clear rule on it. Under common law, I would think if somebody

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stopped using it for two years, I would think they'd lose their rights. I mean, that's not the

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law, though. I just say, you know, it's I think it also depends on how famous the trademark is.

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And if there's any inventory out in the industry, because if there's still stuff on eBay,

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even though the company is not manufacturing it, that's still in the public side. That's

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still interstate commerce. So that's still a sale. Okay. Yeah. So I would say it's going to

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be situation specific. But if you're like three years, four years, five years, not using a

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trademark, I think you're dead. At that point, it gets really difficult. So with this year,

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so let's say we got a scenario where there's a trademark that's listed as dead.

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And we think to ourselves, okay, we're clear. Now, let me try to think of a trademark where

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they definitely would have listed the website of the company. How about let me see.

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Let me see if MIT.

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MIT dead.

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Next list.

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Dead.

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Live.

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See if this one works.

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Go down to the original filing documents.

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Application. I just want to show you something that's pretty cool.

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Here's a company. See if they list the website. Read Law. What's the

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company?

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It's in services. Didn't MIT create the internet for someone there? I have no idea.

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The internet got created by a guy, well, I guess browsers. There was a gentleman who actually

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created it as a page. And then somebody else who created calculators, digital calculators,

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saw how applicable the browser could be and what they could use it purpose-wise. And that's how it

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evolved.

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Wow. I thought it was some senator or governor who thought he claimed that he created the internet.

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Not the former vice president who was affiliated with. That's right. That's who it was.

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I created the internet. Yeah, whatever, man.

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I created the internet. Yeah, whatever, man.

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You created a farce.

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You'd be a billionaire if you created the internet. I'm trying to think of a name that

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where somebody who files the application will definitely list a website,

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but even if we can't find one, that's okay.

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How about we just look up Google? Let's see if Google.

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Come on, Apple.

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Google's got like four billion trademarks.

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Let's go down to the bottom.

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Oh, they're dead.

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Google's dead.

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Google.com? Did you see that?

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Yeah, but I'm looking for one of their earlier trademarks.

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Google Chrome. Cool.

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Let's see. All right, we're getting close.

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There we go. Google Play. That should work.

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Yep, that's a good one. Okay.

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So if I look at their original application filing documents,

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let's just assume that it's a dead trademark.

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If we look at the original application,

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what we're looking for is a listing of a website.

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And it doesn't look like they did either.

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No, they didn't.

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They didn't. Okay.

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Anyways, if you're trying to figure out whether or not a trademark

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that's listed as dead,

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if the company is actually still using that trademark,

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there's a way to do it.

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There's a way to, there's a tool that helps.

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And it's the Wayback Machine.

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But what you want to do is you want to figure out,

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one of the things I do in practice is I'll figure out

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what is the website for that company?

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And then I'll go to the Wayback Machine and I'll look at their browsers

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from each year and each month.

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And I'll find out when they stopped using it on their website.

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So if they stopped using like five years ago,

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like Kerry and I were talking about,

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then if it's been five years and it's not on their website,

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you don't see it anywhere.

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But before then it was all over their website.

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That helps me to kind of get an idea of, okay, well,

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maybe they stopped some time.

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Then I'll look at things. I'll look on Google.

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I'll look on eBay, Amazon.

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I'll look on Alibaba.

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If I don't see anything in any of those places,

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I think I'm pretty clear.

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That's what I do.

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But in general,

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just because a trademark after a search is stated to be dead,

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does not in any way, shape or form mean that it's actually clear.

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Okay.

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So don't rely upon that word dead to think to yourself, I'm safe.

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It's not a good idea.

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Let's see if I do swoosh.

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Okay.

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I'm going to give you a, did everybody here fill out the assessment form yet?

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Yep.

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Yes.

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Yes.

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Yes.

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Because I want to kind of show you guys something.

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Beforehand.

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But before I do that, let me.

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There we go. Now I can see you guys.

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Okay. So.

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What I would say is I wanted to give you guys an example of something on,

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on a logo search, because it is kind of tricky.

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You're going to get when you, when you fill out the assessment form,

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you're going to get a video that breaks it down for you in more detail.

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But I want to kind of live since you guys are in VIP.

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I want to kind of live,

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just kind of give you a preview of what you're going to see in the video.

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All right.

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Because it is, it is a little tricky.

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And this way, if you guys have a question while I'm doing it,

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it'll help you out.

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So, so if you haven't filled out that form,

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I am like going forward and sharing this stuff with you.

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So make sure you fill out the form. Okay.

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Cause our general rule is we give it out afterwards so we can see what

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kind of feedback we get. All right. So.

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This is kind of cool.

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Every trademark.

252
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Let's look for a swoosh.

253
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There you go. Lots of swishes, many swishes, the diamonds.

254
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There's a swoosh. See, that's a swoosh. Okay.

255
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I'm just going to pull up a trademark here. You guys,

256
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can you guys see this? The diamonds? All right.

257
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If you look at.

258
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The description.

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Let me shrink this down. So I don't, I can't see you guys.

260
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All right, here we go.

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If you look at the description of the mark itself, you'll see the mark.

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Consists of a remember whenever you file a trademark for a logo.

263
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You have to describe.

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The logo. So it says right here, description of the mark.

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That's it right there.

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It says the mark consists of a concentric diamond shape.

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And at the center of it is a pair of gradient building.

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Should be buildings, plural.

269
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Oh, well.

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With a triangular shape, a top.

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And a shaded. Do you see the word there?

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beneath it. The words, the diamonds, are written in large and stylized lettering underneath the

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concentric diamond shape. Okay, so here's the thing is that when you do a cert, what you can do

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to find logos is you can think of how would you describe the logo. That's what I would do is

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think to yourself, how exactly would I describe this logo? And as I'm thinking of how I describe

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this logo, I type in the word for the description. So swoosh, obviously, is something that people

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become associated with this or this, you know, it's kind of like a line that's just kind of

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cursive or there's a curve to it. It's considered swoosh, right? So when you use that word,

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what you can do in the field section is you can go down to description of mark. You see that there,

280
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that field, click description of mark. And now when you submit this query, you get any trademarks

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that have the swoosh in it, pops up, right? So what you're essentially doing is you're,

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but here's the bad part. The bad part is that you need to ask, you need to use the right words.

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That's the thing that's really difficult about this is you don't use the right words.

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It can be really tricky because you can miss something if you don't use the right words.

285
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Now, you see how I'm going to show you something that you probably have never seen before.

286
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You see how there's all these results right over here. There's a button says image list.

287
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Do you see that? Click that. Look at that. Oh, very cool. Now what you're seeing is you're

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seeing the logos and the results. So instead of, instead of looking at this here, where you are

289
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like, well, what's a W like, I don't know what W they click it. Okay. Got it. Now you got to go

290
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back and I got to go to the next one and click it. I got to go back. Instead. You can click right

291
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here. Image list. And there it is. Now you can just scroll down and go. That doesn't look like

292
00:22:30.880 --> 00:22:37.040
mine. Nope. Nope. Nope. Nope. Nope. Nope. Nope. Oh, that one. This one seems like a problem. Then

293
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you have the number that you click on the number and you can see the trademark. Isn't that cool?

294
00:22:43.360 --> 00:22:52.800
That's cool. That's a faster way to go through trademarks way faster. All right. So, excuse me,

295
00:22:52.800 --> 00:22:59.280
Peter, one more time. Where did you find image list on the sheet on the page? Hold on a second.

296
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Share. Right. You have to be on the page with the results. There's a page. See the page with

297
00:23:11.120 --> 00:23:18.480
the results right there. Yes. You see it right there. Oh, now I see it. Okay. Up at the top.

298
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Got it. It's kind of hard. Thank you. Between between next, next list and bottom. Okay. Yes.

299
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Thank you. Click on that. And now you've got all these images that are right there.

300
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Which is I'm telling you, this will save you so much time. Otherwise, what you're doing is

301
00:23:48.080 --> 00:23:53.520
it's so frustrating because you're going through everyone because there's no way to know what kind

302
00:23:53.520 --> 00:23:58.560
of image is there as you're looking at the word marks. So, you're going through everyone one by

303
00:23:58.560 --> 00:24:03.440
one and every one of them, you'll see in the description of the mark, there's the word swoosh.

304
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So, you're trying to determine whether or not there's potential trademark infringement and

305
00:24:07.440 --> 00:24:12.800
you're looking at them one by one. But this, this, that just doesn't work. I would click the

306
00:24:12.800 --> 00:24:21.600
image list. Just scroll down and go through. Sorry. Is there a way, let's say you want it

307
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to use a swoosh, but you want it to use it in the restaurant industry or the consulting industry or

308
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can you search for the swoosh in a category? Yes. You tell me how to do that. Well, you go back up

309
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to the top and put swoosh in the term and the field description of mark. And then search term

310
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would, or maybe in the other field, you would put, put the field or put in, or let's say,

311
00:25:00.000 --> 00:25:06.880
Is there consulting? Or what did you say? Some kind of training? Online online training? Yeah,

312
00:25:06.880 --> 00:25:16.000
sure. 41. Right? Yeah, come on. That's what you said. Let's say you wanted to do this.

313
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Just so good, guys. This is like, this is the best way to me for me to have a Friday when like,

314
00:25:22.640 --> 00:25:28.000
literally the students are like, teaching the class. It's so good. I love this. This is why

315
00:25:28.000 --> 00:25:35.360
I love what I do. So let's say you were like online training. Right? Right. So you come over

316
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here and you you do what? What would you select? I'm down. Where is the rich? Oh, international

317
00:25:48.640 --> 00:25:56.320
class. Okay, let's see if you did that. You clicked international class. You wouldn't do that.

318
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The reason why is because if you did in a cloud international class, you have to put the number.

319
00:26:01.520 --> 00:26:06.560
Oh, okay. I thought you do that. Okay, if you do like online training,

320
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then what you could do is come over here and select the non punctuated or something

321
00:26:15.120 --> 00:26:19.600
right here. Goods and services. Okay, services, right? What else do I need to do?

322
00:26:20.240 --> 00:26:26.800
Do the operators and and? Come on. Do you want a paralegal position?

323
00:26:29.360 --> 00:26:36.880
See, submit query. There you go. So now what you do is you go to image list again.

324
00:26:38.400 --> 00:26:46.400
So when I go to let's say that one. What is that? Let's back up. Maybe that one.

325
00:26:46.880 --> 00:26:51.520
Maybe that one. That's better. What was that? I clicked the image.

326
00:26:53.280 --> 00:26:59.680
Oh, so if you click the image, it just goes crazy. Apparently. That's nice. Good to know.

327
00:26:59.680 --> 00:27:04.560
Does that happen everywhere? It does. Oh, wow. That's interesting. You have to make sure you

328
00:27:04.560 --> 00:27:11.440
click the number. Alright, so there you go. See consulting services, right? Class 41. Very good.

329
00:27:11.440 --> 00:27:18.080
You nailed it. Class 41. And in the description, what do they have? So the other way that you could

330
00:27:18.080 --> 00:27:30.960
do it would be to change this to 041 and change this to international class. And then do a search.

331
00:27:32.480 --> 00:27:38.640
Now you only get 478 records, right? It's a lot lower. Then you can go to your image list and see

332
00:27:39.520 --> 00:27:46.080
what's out there. And if you didn't have a logo yet, this might give you some ideas of what's out

333
00:27:46.080 --> 00:27:52.080
there. Yeah, it'll definitely give you ideas of what's out there. Yeah. It'll lay it all out for

334
00:27:52.080 --> 00:27:59.040
you one by one, every single one of them. I mean, it's not, again, it's the USPTO website is not the

335
00:27:59.040 --> 00:28:05.680
most comprehensive thing in the world. That's why I say use Syrian. Use those guys. Clairvate is

336
00:28:06.160 --> 00:28:12.240
actually what they're called. But then when you click on one of those, you're going to see the

337
00:28:12.240 --> 00:28:20.960
same thing. And you go down to description of the mark, there's the word swoosh. See, now you've got

338
00:28:20.960 --> 00:28:25.040
there's your class 41, which you typed in. And there's your educational services.

339
00:28:25.840 --> 00:28:30.320
Hey, Peter, that one I noticed it also down there at the bottom said color is not claimed

340
00:28:31.200 --> 00:28:36.720
as a feature of the mark, right? That's what I've actually told you guys. See, here's the thing.

341
00:28:38.320 --> 00:28:44.480
As you've been going through this training, you're probably I don't think you're you're

342
00:28:44.480 --> 00:28:50.480
capable of understanding all the stuff that you've learned yet. The stuff that I've actually

343
00:28:50.480 --> 00:28:56.720
taught you taught all of you are like secrets to the industry and things that a lot of lawyers

344
00:28:56.720 --> 00:29:01.200
don't even know. Like like I just figured if you're going to be doing this, do it right.

345
00:29:01.200 --> 00:29:08.640
Like understand all the tools, excel and just do really well. But there's little nuances of

346
00:29:08.640 --> 00:29:13.760
things that I've taught you. Like when you file an application, don't claim color. Then you covers

347
00:29:13.760 --> 00:29:19.840
all colors. You know, when you do a trademark search, use the image button to fly right through

348
00:29:19.840 --> 00:29:25.840
a lot faster. When you're searching for multiple words, how to use the multiple words, you know,

349
00:29:25.840 --> 00:29:33.600
using the and not the or like all these little things here. If if you guys understood the stuff

350
00:29:33.600 --> 00:29:42.320
that you're learning. It would blow your mind. So this stuff should make your lives a lot easier.

351
00:29:42.320 --> 00:29:47.440
But again, you're going to you're going to keep using this stuff and there's going to be other

352
00:29:47.440 --> 00:29:51.120
things that you're going to need. And that's why the portals there, because there's a lot of stuff

353
00:29:51.120 --> 00:29:58.880
you're going to need. You've learned a fraction of what's important. So let me share one other thing here.

354
00:30:00.000 --> 00:30:04.120
Share screen, there we go.

355
00:30:04.120 --> 00:30:09.120
Okay, so let me do this.

356
00:30:13.560 --> 00:30:15.620
Let's say that you find somebody,

357
00:30:15.620 --> 00:30:17.620
all right, this is not legal advice.

358
00:30:20.180 --> 00:30:24.140
I'm just saying in general, if you find a,

359
00:30:24.140 --> 00:30:26.920
like if somebody finds a trademark and they think,

360
00:30:27.840 --> 00:30:29.280
say they're looking through all the records

361
00:30:29.280 --> 00:30:31.360
and they're going blah, blah, blah.

362
00:30:31.360 --> 00:30:33.320
Yeah, yeah, yeah, who cares, who cares?

363
00:30:33.320 --> 00:30:38.320
Whoa, whoa, that looks very similar to the logo

364
00:30:40.360 --> 00:30:43.520
that we've been using the last three years, right?

365
00:30:44.960 --> 00:30:47.200
And so you look at it, you click on it

366
00:30:47.200 --> 00:30:49.360
and you're like, what?

367
00:30:49.360 --> 00:30:54.160
Like, look at the list of services, right?

368
00:30:54.160 --> 00:30:55.240
Look at this list.

369
00:30:56.240 --> 00:31:00.440
And then look at this list, like, oh my gosh.

370
00:31:00.440 --> 00:31:02.680
And then when we haven't even gotten to 41 yet,

371
00:31:02.680 --> 00:31:05.080
there's 35, look at 35.

372
00:31:05.080 --> 00:31:06.680
What, what is that?

373
00:31:06.680 --> 00:31:07.780
Look at this.

374
00:31:09.940 --> 00:31:13.120
And then go down to 41, wait till you see 41.

375
00:31:13.120 --> 00:31:18.120
Look at 41, all of this is covered.

376
00:31:18.480 --> 00:31:20.880
So when you run into a situation like this

377
00:31:21.800 --> 00:31:26.800
and you go, oh my gosh, like that's a lot.

378
00:31:29.360 --> 00:31:31.760
Oh, I needed this right here, hold on a second.

379
00:31:33.320 --> 00:31:34.800
That was incredibly convenient.

380
00:31:34.800 --> 00:31:35.960
Software as a service,

381
00:31:35.960 --> 00:31:38.320
featuring software for databases.

382
00:31:38.320 --> 00:31:41.400
Oh, this is perfect, I needed that language right there.

383
00:31:43.800 --> 00:31:45.280
Hold on, actually, you know what?

384
00:31:45.280 --> 00:31:48.280
I'm gonna grab all this right here to here.

385
00:31:48.280 --> 00:31:49.440
I click copy.

386
00:31:51.520 --> 00:31:53.440
Give me one quick second, guys.

387
00:31:54.440 --> 00:31:56.280
I'm just gonna copy and paste this language

388
00:31:56.280 --> 00:31:58.940
into my Microsoft Word.

389
00:32:00.600 --> 00:32:03.720
I was actually looking for a really good description

390
00:32:03.720 --> 00:32:08.720
of a SaaS platform for a trademark application.

391
00:32:09.640 --> 00:32:14.560
So as the Lord would bless me, thank you, Lord.

392
00:32:14.560 --> 00:32:17.120
I just found one and trying to demonstrate for,

393
00:32:17.120 --> 00:32:18.280
see, this is how life is.

394
00:32:18.280 --> 00:32:21.240
When you serve others, things just come to you.

395
00:32:21.240 --> 00:32:22.760
It just happens.

396
00:32:22.760 --> 00:32:25.240
I was trying to come up with the best description

397
00:32:25.240 --> 00:32:28.560
for a SaaS platform and it just so happens

398
00:32:28.560 --> 00:32:29.840
that boom, there it is.

399
00:32:30.680 --> 00:32:33.280
All right, so let me share my screen again.

400
00:32:33.280 --> 00:32:35.760
Okay, so when you run into a situation like this

401
00:32:35.760 --> 00:32:37.480
and you go, are you kidding me?

402
00:32:37.480 --> 00:32:40.700
Like, oh my gosh, and so you think to yourself,

403
00:32:42.840 --> 00:32:46.120
I don't know, can I continue using this name

404
00:32:46.120 --> 00:32:47.480
or do I need to change it?

405
00:32:47.520 --> 00:32:49.000
And so you think to yourself, all right,

406
00:32:49.000 --> 00:32:52.440
well, I remember Peter showed me how to find out

407
00:32:52.440 --> 00:32:53.360
who owns it.

408
00:32:53.360 --> 00:32:55.720
Like, there's their registrant.

409
00:32:55.720 --> 00:32:58.160
Look who it is, Alibaba.

410
00:32:58.160 --> 00:33:01.440
Huge, huge corporation.

411
00:33:01.440 --> 00:33:04.720
Absolutely huge, monstrous corporation.

412
00:33:04.720 --> 00:33:06.360
They're the ones that own it.

413
00:33:06.360 --> 00:33:10.760
And so I think to myself, well, let me reach out to them.

414
00:33:11.680 --> 00:33:12.920
Let me reach out to them.

415
00:33:12.920 --> 00:33:14.880
So I'm gonna figure out where's the information.

416
00:33:14.880 --> 00:33:17.760
So I click this TSDR thing here

417
00:33:17.760 --> 00:33:21.440
and then I scroll down to see who's the contact.

418
00:33:21.440 --> 00:33:24.760
When I click on attorney correspondence information,

419
00:33:24.760 --> 00:33:26.440
there's the information right there.

420
00:33:26.440 --> 00:33:29.640
No way, Nixon Peabody represents?

421
00:33:29.640 --> 00:33:30.720
I didn't know that.

422
00:33:30.720 --> 00:33:32.320
Alibaba, that's good to know.

423
00:33:33.200 --> 00:33:34.480
Huh, okay.

424
00:33:34.480 --> 00:33:36.560
I know Jeff, very cool.

425
00:33:36.560 --> 00:33:39.840
All right, so you think to yourself,

426
00:33:39.840 --> 00:33:41.920
well, maybe I'll just call this guy

427
00:33:42.920 --> 00:33:46.240
and I'll just ask him.

428
00:33:46.240 --> 00:33:48.280
I'm just gonna ask him, you know, is it okay?

429
00:33:48.280 --> 00:33:50.240
Like, I'm using this thing, are you all right with that?

430
00:33:50.240 --> 00:33:52.320
Like, you know, I just wanna find out.

431
00:33:53.600 --> 00:33:57.640
Please involve a lawyer before you do that

432
00:33:57.640 --> 00:34:00.640
because if you've been doing that

433
00:34:00.640 --> 00:34:03.920
and it's actually trademark infringement,

434
00:34:03.920 --> 00:34:07.520
when you call them, you've now told them,

435
00:34:07.520 --> 00:34:10.760
hey, I am infringing your trademark.

436
00:34:11.920 --> 00:34:13.920
I mean, they could literally just turn around

437
00:34:13.920 --> 00:34:15.679
and say, thank you very much.

438
00:34:15.679 --> 00:34:20.679
Please send me a check for $100,000 or for $25,000.

439
00:34:20.719 --> 00:34:23.480
And you go, well, no, I was trying to do the right thing.

440
00:34:23.480 --> 00:34:24.800
I was trying to reach out to you.

441
00:34:24.800 --> 00:34:26.679
And they go, yes, you did the right thing.

442
00:34:26.679 --> 00:34:27.920
You reached out to us.

443
00:34:27.920 --> 00:34:29.679
We applaud your efforts.

444
00:34:29.679 --> 00:34:33.920
We just love that you're so honest and trustworthy.

445
00:34:33.920 --> 00:34:35.520
We'd like to welcome you to dinner

446
00:34:35.520 --> 00:34:38.239
as you are giving us a check for $100,000

447
00:34:38.239 --> 00:34:40.600
for infringing for the last three years.

448
00:34:40.600 --> 00:34:43.000
Like that will happen to you guys.

449
00:34:43.000 --> 00:34:46.400
So don't just go calling people.

450
00:34:46.400 --> 00:34:47.639
I've seen people do that.

451
00:34:47.639 --> 00:34:51.360
They just, they learn, you know, who the contact is.

452
00:34:51.360 --> 00:34:53.760
And then they say, well, I can figure this out.

453
00:34:53.760 --> 00:34:56.520
And they just call, like call a lawyer,

454
00:34:56.520 --> 00:34:58.920
let the lawyer do the assessment and say, okay, hold it.

455
00:34:58.920 --> 00:35:00.160
That's Alibaba.

456
00:35:00.000 --> 00:35:03.840
That's one of the biggest companies out there.

457
00:35:03.840 --> 00:35:06.080
They're worth a ton of money.

458
00:35:06.080 --> 00:35:08.280
And you're calling up Nixon Peabody,

459
00:35:09.640 --> 00:35:12.480
which is an extremely litigious law firm,

460
00:35:12.480 --> 00:35:17.360
to actually get them to agree to let you use

461
00:35:17.360 --> 00:35:18.940
something that belongs to their client,

462
00:35:18.940 --> 00:35:20.720
where they're thinking,

463
00:35:20.720 --> 00:35:24.000
I'm gonna make money off of this litigation.

464
00:35:24.000 --> 00:35:25.300
Bad combination.

465
00:35:26.400 --> 00:35:29.080
So what you should be doing is thinking,

466
00:35:29.080 --> 00:35:31.640
okay, I found a trademark here.

467
00:35:31.640 --> 00:35:33.120
Let me do a little research.

468
00:35:33.120 --> 00:35:36.240
As you do research, I would involve an attorney personally

469
00:35:36.240 --> 00:35:39.560
and ask the attorney what they suggest you should do, okay?

470
00:35:39.560 --> 00:35:42.120
And one of the things that the attorney should be asking is,

471
00:35:42.120 --> 00:35:43.800
all right, what are the potential damages?

472
00:35:43.800 --> 00:35:46.440
You know, how long have you been using it?

473
00:35:46.440 --> 00:35:47.880
What do you have to lose?

474
00:35:47.880 --> 00:35:50.520
Like, what is the potential for loss here?

475
00:35:50.520 --> 00:35:53.240
Is the potential for loss here $5,000?

476
00:35:53.240 --> 00:35:55.200
Yeah, let's make the call, who cares?

477
00:35:55.200 --> 00:35:58.400
If $5,000 in damages, who cares?

478
00:35:59.880 --> 00:36:02.080
Or if you've been using it for a number of years

479
00:36:02.080 --> 00:36:04.080
and you find out about the infringement,

480
00:36:05.080 --> 00:36:08.480
you may just say, yeah, no way, I'm not calling.

481
00:36:08.480 --> 00:36:09.520
Does that make sense?

482
00:36:11.400 --> 00:36:13.000
Just because you have information

483
00:36:13.000 --> 00:36:14.920
doesn't mean you should always use it.

484
00:36:16.240 --> 00:36:17.600
Let's just put it that way.

485
00:36:18.520 --> 00:36:20.080
Having knowledge is one thing,

486
00:36:20.080 --> 00:36:21.400
using it properly is another.

487
00:36:21.400 --> 00:36:23.120
Yes, Catherine, good.

488
00:36:23.120 --> 00:36:28.120
So my question is, they got that in 2016.

489
00:36:30.000 --> 00:36:35.000
Let's say my mom and pop store has been using it since 2010.

490
00:36:40.120 --> 00:36:42.320
Yes, so you tell me what happens.

491
00:36:42.320 --> 00:36:44.720
So then if I understand correctly,

492
00:36:44.720 --> 00:36:49.200
then that gives me some rights

493
00:36:50.200 --> 00:36:53.120
even though I have not filed the paperwork,

494
00:36:54.640 --> 00:36:57.160
that still gives me some rights

495
00:36:57.160 --> 00:37:02.080
to be able to possibly continue using what I have

496
00:37:02.080 --> 00:37:03.880
and not have to change.

497
00:37:03.880 --> 00:37:06.160
I'd still need to contact an IP attorney.

498
00:37:07.440 --> 00:37:11.240
And there could be the possibility that,

499
00:37:11.240 --> 00:37:14.200
oh, by the way, Alibaba,

500
00:37:14.200 --> 00:37:17.960
you're taking me out to dinner tonight

501
00:37:18.040 --> 00:37:20.360
and every other night for the rest of my life.

502
00:37:21.760 --> 00:37:24.160
It's true, it's true.

503
00:37:24.160 --> 00:37:26.960
I mean, there's a definite possibility of that, right?

504
00:37:26.960 --> 00:37:30.160
And so you need to do that assessment

505
00:37:30.160 --> 00:37:32.720
and find out, well, hold it.

506
00:37:32.720 --> 00:37:35.800
I've had this name for multiple years prior to them.

507
00:37:38.000 --> 00:37:40.440
Just keep in mind that under common law,

508
00:37:40.440 --> 00:37:42.920
you get, what they do is they give you

509
00:37:42.920 --> 00:37:45.440
the specific geographical region, right?

510
00:37:45.440 --> 00:37:48.360
That's what the law says, a geographical region.

511
00:37:48.360 --> 00:37:50.720
A geographical region is not a whole state.

512
00:37:50.720 --> 00:37:52.320
It's not even a whole city.

513
00:37:52.320 --> 00:37:56.000
It's like a small region within the town.

514
00:37:56.000 --> 00:37:57.960
You don't own all of it.

515
00:37:57.960 --> 00:38:02.200
And so you could continue, like under common law,

516
00:38:02.200 --> 00:38:06.080
a company could continue using or making,

517
00:38:06.080 --> 00:38:07.720
using, selling, doing whatever they're doing

518
00:38:07.720 --> 00:38:11.360
with the trademark on products or services

519
00:38:11.360 --> 00:38:15.160
in those same geographical regions, but they can't expand.

520
00:38:15.960 --> 00:38:18.400
They can't go past those regions, right?

521
00:38:18.400 --> 00:38:20.400
If you're selling products on the internet,

522
00:38:20.400 --> 00:38:22.240
that's where it gets really tricky.

523
00:38:22.240 --> 00:38:24.760
So like I have a client who's been selling

524
00:38:24.760 --> 00:38:28.320
on the internet for a while

525
00:38:28.320 --> 00:38:31.320
and another party went and filed a trademark.

526
00:38:31.320 --> 00:38:33.840
And I said, I don't care.

527
00:38:33.840 --> 00:38:35.800
Like I reached out to the other party and I said,

528
00:38:35.800 --> 00:38:40.800
hey, we've been providing these services for seven years,

529
00:38:41.480 --> 00:38:42.840
eight years, eight years.

530
00:38:44.480 --> 00:38:47.680
And his clients are around the world

531
00:38:47.680 --> 00:38:50.440
in every single state, like in many culture,

532
00:38:50.440 --> 00:38:52.000
in many countries.

533
00:38:52.000 --> 00:38:54.920
So you've got a choice here.

534
00:38:54.920 --> 00:38:58.160
You can stop using the federally registered trademark

535
00:38:58.160 --> 00:39:01.400
that you got, or we could sue you.

536
00:39:01.400 --> 00:39:02.920
It's your call.

537
00:39:02.920 --> 00:39:04.320
And they backed off.

538
00:39:04.320 --> 00:39:06.520
Like they just, they backed off because they saw.

539
00:39:06.520 --> 00:39:08.080
Now, like when I made that,

540
00:39:08.080 --> 00:39:10.960
when I had that communication, I had to be very,

541
00:39:10.960 --> 00:39:13.960
I had to make sure that I did my homework

542
00:39:13.960 --> 00:39:16.040
to make sure that I was right, right?

543
00:39:16.040 --> 00:39:18.440
Like you don't go out there making a threat

544
00:39:18.440 --> 00:39:22.040
and then find out, oh my gosh, no, they predate me.

545
00:39:22.040 --> 00:39:23.720
I just walked myself into a lawsuit

546
00:39:23.720 --> 00:39:26.400
because I admitted that I'd been using it, right?

547
00:39:26.400 --> 00:39:28.320
So you don't do that.

548
00:39:28.320 --> 00:39:31.480
But at the same time, once I was comfortable

549
00:39:31.480 --> 00:39:35.520
and confident that my client had those rights,

550
00:39:36.200 --> 00:39:37.520
reached out to the other side and said,

551
00:39:37.520 --> 00:39:39.200
you guys have to stop.

552
00:39:39.200 --> 00:39:42.960
Now they had, you know, they had a federal registration.

553
00:39:42.960 --> 00:39:45.760
Todd Engwald just pinged me.

554
00:39:45.760 --> 00:39:47.240
How's your, how did your challenge go?

555
00:39:47.240 --> 00:39:48.600
He thinks it's over.

556
00:39:48.600 --> 00:39:50.040
It's not over, buddy.

557
00:39:50.040 --> 00:39:52.760
So I love Todd and Tamara.

558
00:39:52.760 --> 00:39:54.280
They're awesome people.

559
00:39:54.280 --> 00:39:59.280
So, I'm, I'm, I'm, I'm, I'm, I'm, I'm, I'm, I'm, I'm,

560
00:40:00.000 --> 00:40:13.000
You just have to be careful, because you can end up shooting a missile at somebody and then having them hit you with a nuclear bomb.

561
00:40:00.400 --> 00:40:05.400
I'm, I'm, I'm, I'm, I'm, I'm, I'm, I'm, I'm, I'm, I'm,

562
00:40:13.000 --> 00:40:21.000
And I've seen that a lot. People get very excited about a potential infringement issue or a cease and desist letter.

563
00:40:21.000 --> 00:40:29.000
They send it out, and then they end up in a litigation matter that, if they had done the homework properly, they never would have gotten in the first place.

564
00:40:29.000 --> 00:40:42.000
So just be careful. That's why it's important to use a good IP attorney, because if they do their homework properly, it should minimize the potential exposure for you.

565
00:40:42.000 --> 00:40:51.000
You want to minimize potential exposure. So let me take one more question, and I think we're going to close.

566
00:40:51.000 --> 00:40:54.000
I had just a quick question, but I hate for it to be the last one.

567
00:40:54.000 --> 00:41:07.000
Yeah, let's just check and see. Kay, or Mandy, or Carrie, or the other Carrie, or Clyde. And if not, then I'll go to the other Carrie.

568
00:41:07.000 --> 00:41:11.000
Doesn't look like it. Okay, go ahead. Carrie, go ahead.

569
00:41:11.000 --> 00:41:21.000
I just thought about it in that scenario you raised with you've been using it and someone else has it. Can you sell a trademark?

570
00:41:21.000 --> 00:41:22.000
Oh, yeah.

571
00:41:22.000 --> 00:41:37.000
So at that point, if you don't have a federal registration, but they do, but now you have the right to it, could part of the negotiation be that they buy the rights from them and you actually secure your position?

572
00:41:37.000 --> 00:41:39.000
Oh, yes, definitely.

573
00:41:40.000 --> 00:41:46.000
Yeah, that part, definitely. The other sequence is more difficult. So let's say that you've been using it under common law.

574
00:41:46.000 --> 00:41:51.000
Somebody has a federal registration and you threaten them, and then they say, okay, yeah, I got to back off.

575
00:41:51.000 --> 00:41:58.000
And you say, well, hold it. I'd like to buy it off of you. Can you assign our right title and interest over to me?

576
00:41:58.000 --> 00:42:08.000
Now, the tricky part, though, is that you have to make sure that obviously you fall under the recitation of goods and services that they have listed.

577
00:42:08.000 --> 00:42:16.000
You have to be doing exactly what's in their recitation of goods and services. Otherwise, you'll have to abandon at least part of your trademark.

578
00:42:16.000 --> 00:42:25.000
So let's say it lists bicycles, tricycles and unicycles. And so you get that, but you only make bicycles.

579
00:42:25.000 --> 00:42:33.000
So you purchase the trademark off of them, but you only make bicycles. That means you're going to have to abandon unicycles and tricycles because all you make is bicycles.

580
00:42:33.000 --> 00:42:41.000
You can only maintain a trademark for the goods or services that are listed that you actually use in interstate commerce.

581
00:42:41.000 --> 00:42:49.000
So when Alibaba did that trademark with all those things listed, did they pay for one or did they pay for each of those?

582
00:42:49.000 --> 00:42:54.000
Like, how does. Well, you guys tell me. Let's take a look at it.

583
00:42:54.000 --> 00:43:01.000
It's a good question. So let's take a look at it. Here's their trademark, right?

584
00:43:01.000 --> 00:43:08.000
You guys tell me, I'll go through it slowly. I'll go very slowly.

585
00:43:08.000 --> 00:43:19.000
You tell me.

586
00:43:19.000 --> 00:43:24.000
That's off of one trade. I'm sorry. That was off of.

587
00:43:24.000 --> 00:43:31.000
Don't ask the question yet. I want to make sure this question first.

588
00:43:31.000 --> 00:43:33.000
I think I have an answer if I'm allowed to go.

589
00:43:33.000 --> 00:43:35.000
All right, go for it. Good.

590
00:43:35.000 --> 00:43:43.000
Didn't you say that you do have to pay, but only for each individual class and not each of those like little ones, but just each class.

591
00:43:43.000 --> 00:43:45.000
Yes.

592
00:43:45.000 --> 00:43:47.000
Gosh, was that Mandy?

593
00:43:47.000 --> 00:43:48.000
Yep.

594
00:43:48.000 --> 00:43:49.000
Hi, Mandy.

595
00:43:49.000 --> 00:43:51.000
Hi. Sorry, I'm not on camera right now.

596
00:43:51.000 --> 00:43:55.000
That's awesome. That is awesome. Well done. That's right.

597
00:43:55.000 --> 00:44:01.000
So in this trade, in this class 42, look at all this they listed. They only paid one fee.

598
00:44:01.000 --> 00:44:02.000
OK.

599
00:44:02.000 --> 00:44:06.000
They paid one fee for that entire monstrous listing.

600
00:44:06.000 --> 00:44:17.000
Now, going along the lines of what Carrie mentioned, they need to actually be using the trademark on every single thing listed here.

601
00:44:17.000 --> 00:44:22.000
Like every one. They go back to class nine. Do they have class nine? I think they had a class nine.

602
00:44:22.000 --> 00:44:29.000
Yeah. So they've got to be using it on like everything.

603
00:44:30.000 --> 00:44:41.000
Anything that's missing. Anything that's in here that's missing, like computer software that may be downloaded from a global computer network for posting information, blah, blah, blah.

604
00:44:41.000 --> 00:44:46.000
Let's say that one thing up until.

605
00:44:46.000 --> 00:44:53.000
Well, let's just say up to here. Let's say they're not doing that. Then that part there they're supposed to abandon.

606
00:44:53.000 --> 00:44:56.000
But who's enforcing that?

607
00:44:56.000 --> 00:45:00.000
When they try to enforce against another party, that's what the other party will do.

608
00:45:00.000 --> 00:45:04.480
do, the party will try to, to confirm that some of the goods

609
00:45:04.480 --> 00:45:09.000
or services that are listed actually are not being sold.

610
00:45:09.400 --> 00:45:12.480
Right. All right. And the other thing is, when they go to file

611
00:45:12.480 --> 00:45:16.920
their renewal, the examiners, the examiners over the last like

612
00:45:16.920 --> 00:45:20.480
five years have gotten very, very aggressive where they come

613
00:45:20.480 --> 00:45:23.480
out and they say, Look, you need to send me a specimen for every

614
00:45:23.480 --> 00:45:26.720
single thing that you have listed. You do that to Alibaba,

615
00:45:26.760 --> 00:45:29.680
can you imagine how much money they have to spend just for one

616
00:45:29.680 --> 00:45:33.520
renewal with an attorney, that attorney would literally have to

617
00:45:33.520 --> 00:45:38.200
take every single one of those 5000 things that were listed and

618
00:45:38.200 --> 00:45:44.600
find a specimen for that one thing. And then upload the

619
00:45:44.600 --> 00:45:48.680
probably the largest ever renewal for a trademark ever

620
00:45:48.680 --> 00:45:52.240
filed. You know, but that's, that's literally what will

621
00:45:52.240 --> 00:45:56.080
happen. Catherine, I'm going to give you the last question. Go

622
00:45:56.080 --> 00:45:56.720
ahead, my friend.

623
00:46:03.920 --> 00:46:08.000
Sorry about that. I'm a little confused. My hand wasn't raised.

624
00:46:08.280 --> 00:46:10.440
You were starting to comment when I was going through

625
00:46:10.440 --> 00:46:13.640
something. And I said, Don't say anything yet. Because I wanted

626
00:46:13.640 --> 00:46:16.760
to finish that let them finish counting. Otherwise, I would

627
00:46:16.760 --> 00:46:18.800
have stopped and people would have lost track. So

628
00:46:19.720 --> 00:46:23.240
I apologize. That was me commenting over here. Like, oh,

629
00:46:23.240 --> 00:46:28.000
my gosh, like, that we measure things in this household by

630
00:46:28.000 --> 00:46:32.560
our got this, like there. So that's a lot of all about this.

631
00:46:37.200 --> 00:46:43.400
It is I mean, the renewal of this trademark could potentially

632
00:46:43.400 --> 00:46:51.600
cost could could potentially cost $20,000. If if the attorney

633
00:46:51.600 --> 00:46:54.920
has to go through literally every single item one by one.

634
00:46:55.160 --> 00:46:57.360
And based on the fact that they're with that law firm, I

635
00:46:57.360 --> 00:47:02.400
wouldn't doubt that they spent at least $10,000. It's a good

636
00:47:02.400 --> 00:47:04.880
law firm. I'm just saying that, you know that they charge a lot

637
00:47:04.880 --> 00:47:10.080
of money. So alright, my friends, I think that is enough

638
00:47:10.560 --> 00:47:14.400
for you to digest. You have the video since you're VIP, you have

639
00:47:14.400 --> 00:47:18.320
the videos for a little while. I highly encourage you to jump

640
00:47:18.320 --> 00:47:22.640
into the protection portal. We do this and way more. We

641
00:47:22.640 --> 00:47:25.640
continue going more and we talk about actual application in real

642
00:47:25.640 --> 00:47:28.840
life. Like how do you actually implement some of these things?

643
00:47:28.840 --> 00:47:34.160
And then we also talk about what's the cost? Like, you kind

644
00:47:34.160 --> 00:47:36.680
of learn some of the top level things. But now you got to be

645
00:47:36.680 --> 00:47:39.280
asking yourself, well, all right, what does it cost for a

646
00:47:39.280 --> 00:47:42.040
declaration? What does it cost for an assignment document? You

647
00:47:42.040 --> 00:47:47.160
know, if I end up doing a, a license agreement, what does it

648
00:47:47.160 --> 00:47:50.520
typically cost for a lawyer to do a license agreement? We go

649
00:47:50.520 --> 00:47:54.920
into all that kind of stuff in the portal, and we do a lot more

650
00:47:54.920 --> 00:47:57.880
there. So I look forward to seeing you hope to see you

651
00:47:57.880 --> 00:48:01.880
there. And it has been a true honor to serve you over the last

652
00:48:01.880 --> 00:48:09.880
week. I'm going to sleep well this weekend. And yeah, so I'm

653
00:48:09.880 --> 00:48:15.400
going to jump off Larissa. Thank you, Ray. Thank you. I'll catch

654
00:48:15.400 --> 00:48:19.760
up with you ladies. Later. Just go relax.

655
00:48:20.480 --> 00:48:21.040
Whoo.

656
00:48:22.320 --> 00:48:27.200
Wow. Let me know. Thank you so much. Everyone. Thank you,

657
00:48:27.200 --> 00:48:31.880
Anders and Carrie and Catherine, Kay, Carrie, Clyde, Mandy, all

658
00:48:31.880 --> 00:48:35.960
your awesome, awesome participation. You guys are what

659
00:48:35.960 --> 00:48:39.720
makes being here all that much better.