WEBVTT 1 00:00:00.000 --> 00:00:01.920 Welcome, everybody, as you come in. 2 00:00:01.920 --> 00:00:04.520 I know folks are just coming into the room. 3 00:00:04.520 --> 00:00:07.160 Peter's just about ready to join us. 4 00:00:07.160 --> 00:00:08.160 Anyone else want to join? 5 00:00:08.160 --> 00:00:08.880 Hey, everybody. 6 00:00:08.880 --> 00:00:09.600 How's it going? 7 00:00:09.600 --> 00:00:10.880 How is everyone? 8 00:00:10.880 --> 00:00:12.680 You guys awake? 9 00:00:12.680 --> 00:00:13.400 How is everybody? 10 00:00:13.400 --> 00:00:14.400 I just jumped in. 11 00:00:14.400 --> 00:00:16.520 I just finished looking over some stuff over here. 12 00:00:16.520 --> 00:00:19.640 Some of you have actually been emailing me, which is amazing. 13 00:00:19.640 --> 00:00:21.400 This is so awesome. 14 00:00:21.400 --> 00:00:24.920 You guys are so interactive. 15 00:00:24.920 --> 00:00:30.120 When I heard that word, pioneer, it definitely was not a joke. 16 00:00:30.120 --> 00:00:31.800 So I just wanted to jump in. 17 00:00:31.800 --> 00:00:34.640 I know I'm probably a minute early on you. 18 00:00:34.640 --> 00:00:36.960 So I just want to start jumping in because we 19 00:00:36.960 --> 00:00:39.240 want to start covering things. 20 00:00:39.240 --> 00:00:41.560 And I just finished looking over the last email 21 00:00:41.560 --> 00:00:45.320 that was sent over to me, which is wonderful. 22 00:00:45.320 --> 00:00:47.080 How's everybody doing? 23 00:00:47.080 --> 00:00:48.600 Everybody good? 24 00:00:48.600 --> 00:00:49.440 Yeah? 25 00:00:49.440 --> 00:00:51.560 You ready for day two? 26 00:00:51.560 --> 00:00:54.960 Can you believe this is day two? 27 00:00:54.960 --> 00:00:58.720 Yesterday, you probably learned enough for five days. 28 00:00:58.720 --> 00:01:01.800 So we're trying to take it piece by piece. 29 00:01:01.800 --> 00:01:05.400 Larissa, I'm seeing you're pinned up. 30 00:01:05.400 --> 00:01:08.840 Is there a way to give me a gallery view or something like that? 31 00:01:08.840 --> 00:01:10.760 Or I guess I can just change it on my side. 32 00:01:10.760 --> 00:01:11.280 There we go. 33 00:01:11.280 --> 00:01:12.360 I'll change it on my side. 34 00:01:12.360 --> 00:01:12.880 All right. 35 00:01:12.880 --> 00:01:16.360 So I'm pinned up right now? 36 00:01:16.360 --> 00:01:16.960 Just checking. 37 00:01:16.960 --> 00:01:17.440 No? 38 00:01:17.440 --> 00:01:19.040 Yes? 39 00:01:19.040 --> 00:01:21.720 The reason why I'm asking that is because on the recordings, 40 00:01:21.720 --> 00:01:23.960 I want to make sure that people can see the person who's 41 00:01:23.960 --> 00:01:26.440 speaking, not just the gallery view. 42 00:01:26.440 --> 00:01:30.560 So if you can pin just me as the speaker, 43 00:01:30.560 --> 00:01:32.480 or just pin the speaker, that'd be awesome. 44 00:01:32.480 --> 00:01:34.680 All right, thanks. 45 00:01:34.680 --> 00:01:35.960 Because we're getting larger. 46 00:01:35.960 --> 00:01:39.200 I don't know if you guys have noticed, you guys and gals. 47 00:01:39.200 --> 00:01:41.520 By the way, predominantly gals, all right? 48 00:01:41.520 --> 00:01:43.480 That was raised to me by John. 49 00:01:43.480 --> 00:01:45.360 John, what's going on, man? 50 00:01:45.360 --> 00:01:47.520 Why are all the women brilliant? 51 00:01:47.520 --> 00:01:48.640 Where are we? 52 00:01:48.640 --> 00:01:50.120 What's going on, bro? 53 00:01:50.120 --> 00:01:50.960 I don't know. 54 00:01:50.960 --> 00:01:52.280 I don't know. 55 00:01:52.280 --> 00:01:54.520 Hey, it is what it is. 56 00:01:54.520 --> 00:01:55.320 I'm OK with this. 57 00:01:55.320 --> 00:01:56.560 It's the spirit of entrepreneurship, right? 58 00:01:56.560 --> 00:01:57.400 I'm OK with this. 59 00:01:57.400 --> 00:01:58.160 This is amazing. 60 00:01:58.160 --> 00:01:59.520 These are the minds. 61 00:01:59.520 --> 00:02:00.160 It's awesome. 62 00:02:00.160 --> 00:02:00.960 I love it. 63 00:02:00.960 --> 00:02:04.040 So yeah, there's a number of things 64 00:02:04.040 --> 00:02:06.800 we're going to cover today, which is phenomenal. 65 00:02:06.800 --> 00:02:10.600 Just to give you kind of a layout, 66 00:02:10.600 --> 00:02:12.400 today we're covering trademarks. 67 00:02:12.400 --> 00:02:15.160 Paula Clancy is going to be joining us from Canada. 68 00:02:15.160 --> 00:02:16.240 Awesome. 69 00:02:16.240 --> 00:02:18.000 She's like one of the lead partners 70 00:02:18.000 --> 00:02:21.120 at Galling Law Firm in Canada. 71 00:02:21.120 --> 00:02:22.720 Guys, she's no joke. 72 00:02:22.720 --> 00:02:24.480 Like, she's big money. 73 00:02:24.480 --> 00:02:26.840 She's an incredible attorney. 74 00:02:26.840 --> 00:02:29.600 She represents like billion-dollar corporations 75 00:02:29.600 --> 00:02:31.640 and solo inventors. 76 00:02:31.640 --> 00:02:33.240 Like, she's the real deal. 77 00:02:33.240 --> 00:02:36.360 So you can literally ask her when, in the VIP group, 78 00:02:36.360 --> 00:02:37.720 you can ask her anything. 79 00:02:37.720 --> 00:02:39.360 She will answer any question. 80 00:02:39.360 --> 00:02:40.760 And here's the best part. 81 00:02:40.760 --> 00:02:43.600 You won't have to pay her billing rate. 82 00:02:43.600 --> 00:02:45.840 That's the best part. 83 00:02:45.840 --> 00:02:47.480 Bring your questions. 84 00:02:47.480 --> 00:02:48.600 No billing rates. 85 00:02:48.600 --> 00:02:52.400 You're not getting a 0.2 or a 0.3 or a 0.1. 86 00:02:52.400 --> 00:02:53.240 None of that. 87 00:02:53.240 --> 00:02:54.080 No flat fees. 88 00:02:54.080 --> 00:02:54.880 No nothing. 89 00:02:54.880 --> 00:02:56.320 It's all covered, OK? 90 00:02:56.320 --> 00:02:58.560 So bring any of your questions. 91 00:02:58.560 --> 00:03:00.760 She's going to cover any of that. 92 00:03:00.760 --> 00:03:03.280 Thank you so much for being interactive in the Facebook 93 00:03:03.280 --> 00:03:03.760 group. 94 00:03:03.760 --> 00:03:04.560 It's so important. 95 00:03:04.560 --> 00:03:06.520 I'm getting feedback from some people 96 00:03:06.520 --> 00:03:10.200 who are saying they're actually learning even more 97 00:03:10.200 --> 00:03:13.360 from your interaction in the Facebook group, which 98 00:03:13.360 --> 00:03:15.440 is amazing, because you're giving your real-life 99 00:03:15.440 --> 00:03:16.280 situations. 100 00:03:16.280 --> 00:03:19.360 Like, a lot of people here are entrepreneurs 101 00:03:19.360 --> 00:03:20.720 who have actually run businesses, 102 00:03:20.720 --> 00:03:22.040 who have run into situations. 103 00:03:22.040 --> 00:03:25.400 And as you're sharing what you have gone through yourself, 104 00:03:25.400 --> 00:03:26.520 other people are learning. 105 00:03:26.520 --> 00:03:28.560 So please continue to do that. 106 00:03:28.560 --> 00:03:31.120 Please continue to share. 107 00:03:31.120 --> 00:03:34.000 It's amazing how much the Lord is really involved in this. 108 00:03:34.000 --> 00:03:36.360 For those, I think most of the people who are Christian, 109 00:03:36.360 --> 00:03:38.240 but for anybody who's not, I love you, too. 110 00:03:38.240 --> 00:03:39.280 I love everybody. 111 00:03:39.280 --> 00:03:40.600 But every once in a while, you're 112 00:03:40.600 --> 00:03:43.080 going to hear me sharing a word, because that's 113 00:03:43.080 --> 00:03:45.480 just how my life is, OK? 114 00:03:45.480 --> 00:03:50.320 So today, I'm over there juicing. 115 00:03:50.320 --> 00:03:55.360 Yeah, this concoction here is cucumber, carrot, 116 00:03:55.360 --> 00:03:57.320 beets, all sorts of incredible stuff 117 00:03:57.320 --> 00:03:59.280 to get me going in the days, which 118 00:03:59.280 --> 00:04:01.040 I do practically every day. 119 00:04:01.040 --> 00:04:04.200 But I received a word as I'm sitting there, 120 00:04:04.200 --> 00:04:06.960 because a number of you went live and said, 121 00:04:06.960 --> 00:04:12.160 I can't believe that the cost for this is only $95. 122 00:04:12.200 --> 00:04:13.640 How is that even possible? 123 00:04:13.640 --> 00:04:15.520 And just to be clear, I've had calls 124 00:04:15.520 --> 00:04:19.480 from lawyers at big law firms, Fish and Richardson, 125 00:04:19.480 --> 00:04:23.640 like King and Spaulding, Wolf Greenfield, 126 00:04:23.640 --> 00:04:26.000 others that say, what are you doing? 127 00:04:26.000 --> 00:04:30.040 Like, $95, that doesn't make sense, right? 128 00:04:30.040 --> 00:04:33.200 And what I heard, as I was watching your videos, 129 00:04:33.200 --> 00:04:36.000 I heard, I literally heard in the spirit, 130 00:04:36.000 --> 00:04:38.320 they're worth my investment. 131 00:04:38.320 --> 00:04:40.200 And I was like, whoa. 132 00:04:40.440 --> 00:04:42.880 When I heard that, I was like, I'm getting goosebumps now 133 00:04:42.880 --> 00:04:43.960 even saying that. 134 00:04:43.960 --> 00:04:46.000 You need to hear this. 135 00:04:46.000 --> 00:04:48.800 You are worth God investing in. 136 00:04:48.800 --> 00:04:50.800 You've heard over and over that you're 137 00:04:50.800 --> 00:04:52.800 worth yourself investing in. 138 00:04:52.800 --> 00:04:55.120 But you are worth God's investment. 139 00:04:55.120 --> 00:04:58.960 He paid the top price for you, His one and only beloved son. 140 00:04:58.960 --> 00:05:02.520 That shows you that you are worth God's investment. 141 00:05:00.000 --> 00:05:04.840 who are important. Okay, that word pioneer was important, you 142 00:05:04.840 --> 00:05:08.120 are important. There are certain gift things that you have, and 143 00:05:08.120 --> 00:05:11.920 the majority of you in this room are coaches, you're going to be 144 00:05:11.920 --> 00:05:15.360 teaching and training and guiding other people, you are 145 00:05:15.360 --> 00:05:20.480 very important. I want you to understand that. Okay. So when I 146 00:05:20.480 --> 00:05:23.760 want you to change from this, and this is the only spiritual 147 00:05:23.760 --> 00:05:26.440 part, I believe that's going to be in this today. Then we're 148 00:05:26.440 --> 00:05:29.080 jumping into trademarks, I promise. But I want you to 149 00:05:29.080 --> 00:05:33.280 change your, I want you to start having a reverential 150 00:05:33.280 --> 00:05:37.080 expectations of blessings to fall upon you. I want you to 151 00:05:37.080 --> 00:05:40.720 have that expectation, go through your day with that 152 00:05:40.720 --> 00:05:43.920 expectation, don't go through an expectation of, well, if I pay a 153 00:05:43.920 --> 00:05:45.840 dollar, I'm going to get $1. No, I want you to have an 154 00:05:45.840 --> 00:05:49.040 expectation of when I pay $1, I'm going to get $1,000 back. I 155 00:05:49.040 --> 00:05:51.600 want you to have and this is not just about finances, it's in 156 00:05:51.600 --> 00:05:55.120 everything. You're an ambassador of the kingdom of heaven, you 157 00:05:55.120 --> 00:05:57.800 represent the kingdom of heaven, why would you be walking around 158 00:05:57.800 --> 00:06:01.160 with the bare minimum? I'm going to stop there. I'm going to 159 00:06:01.160 --> 00:06:03.400 keep going. So I'm going to jump into trademarks. Now I'm going 160 00:06:03.400 --> 00:06:06.200 to stop there. But I just want you to understand that. So when 161 00:06:06.200 --> 00:06:10.200 you look at like the VIP, and you say, how am I getting all of 162 00:06:10.200 --> 00:06:14.680 this information for only 195? Or like this course for only 95? 163 00:06:14.960 --> 00:06:17.640 Because you are worth the investment. And I honestly 164 00:06:17.640 --> 00:06:20.400 believe that. And that's why I'm doing this for you. Okay, now 165 00:06:20.400 --> 00:06:25.040 some people have asked this question of, hey, can I get into 166 00:06:25.080 --> 00:06:28.400 VIP? You can Larissa, can you just drop the link? I'm going to 167 00:06:28.400 --> 00:06:32.240 let people get into that. I did shut it off already. I'm going 168 00:06:32.240 --> 00:06:36.280 to reopen it because people are hearing from you what that's 169 00:06:36.280 --> 00:06:40.000 really about. And they want in. And so if you could drop that 170 00:06:40.000 --> 00:06:43.040 link, it's still there. It's still the 195. The recordings 171 00:06:43.040 --> 00:06:47.000 are there. Access to the challenge you'll have for 90 172 00:06:47.000 --> 00:06:51.280 days if you're in the VIP. Plus, you'll have access to the videos 173 00:06:51.560 --> 00:06:54.840 for the VIP as well for 90 days. If you're in the challenge, you 174 00:06:54.840 --> 00:06:57.960 have access to the videos for 30 days. All right. And with 175 00:06:57.960 --> 00:07:02.120 that stuff, I am going to jump in because we've got a good 176 00:07:02.120 --> 00:07:05.960 amount to cover before Paula gets here. But I'm not going to 177 00:07:05.960 --> 00:07:09.360 go too fast. I just want you to get familiar with a few things. 178 00:07:09.880 --> 00:07:13.480 Before we start jumping into things like trademark searches 179 00:07:13.480 --> 00:07:18.600 and trademark applications. Okay, let's go into the first 180 00:07:18.600 --> 00:07:23.640 thing. If you get a federal registration for a trademark, 181 00:07:24.080 --> 00:07:26.640 all right. Oh, I should actually explain why I'm wearing this. I 182 00:07:26.640 --> 00:07:29.080 don't usually wear these kind of things. All right. So you see 183 00:07:29.080 --> 00:07:32.000 the thing I'm wearing here? Let me bring the camera down a 184 00:07:32.000 --> 00:07:36.560 little bit. Okay. This here, this is the jacket that Pedro 185 00:07:36.560 --> 00:07:39.360 gave out for the masterminds, the people in the master's mind. 186 00:07:39.360 --> 00:07:43.240 All right. Why am I wearing this? Because you see the icon, 187 00:07:43.240 --> 00:07:50.280 the logo here? Do you see a TM anywhere? No. All right. Now, 188 00:07:50.320 --> 00:07:52.560 why am I doing that? I'm not doing that to criticize 189 00:07:52.560 --> 00:07:55.920 anything. The reason why I'm doing that is because I'm 190 00:07:55.920 --> 00:08:00.360 teaching you what the law says. But you need to make a business 191 00:08:00.360 --> 00:08:04.240 decision in everything you do. You need to determine whether 192 00:08:04.240 --> 00:08:07.360 or not you want to use a circle R or if you want to use a TM or 193 00:08:07.360 --> 00:08:11.080 if you believe that using the circle or the TM actually 194 00:08:11.200 --> 00:08:16.400 changes the public impression of that logo. All right. What do I 195 00:08:16.400 --> 00:08:21.520 mean by that? When you look at Denon and Moran's high end audio 196 00:08:21.520 --> 00:08:24.480 equipment, you're never going to see a TM or a circle are next 197 00:08:24.480 --> 00:08:28.280 to their names ever. They will not do it. I represent them 198 00:08:28.280 --> 00:08:32.400 both. They sell things like receivers from $500 to like 199 00:08:32.400 --> 00:08:37.919 $50,000. Plus, you will never see a TM on their stuff. They 200 00:08:37.919 --> 00:08:40.799 won't do it. Now, they're still following trademark 201 00:08:40.799 --> 00:08:44.280 applications. I'm still getting them registrations. But they've 202 00:08:44.280 --> 00:08:48.520 made a business decision that they like how clean it looks 203 00:08:48.520 --> 00:08:52.880 just the word Denon. They love that look. And so you have to 204 00:08:52.880 --> 00:08:56.320 make while I'm teaching you what the law says, you have to make a 205 00:08:56.320 --> 00:08:58.960 business decision. Sometimes you're going to say you know 206 00:08:58.960 --> 00:09:03.440 what, this looks good just the way it is. I don't want a TM on 207 00:09:03.440 --> 00:09:06.160 it. I don't want to circle are on it. So I'm going to leave it 208 00:09:06.160 --> 00:09:09.440 just the way it is. And that is a good business decision at 209 00:09:09.440 --> 00:09:12.040 times. Other times, you know, there's going to be a lot of 210 00:09:12.040 --> 00:09:14.400 competition that is going to copy what you have. So 211 00:09:14.400 --> 00:09:16.520 therefore, what are you going to do, you're going to use the 212 00:09:16.520 --> 00:09:18.960 circle are to make sure people understand and they back off. 213 00:09:19.360 --> 00:09:22.840 So that's I'm teaching you what the law is. Now you go forward 214 00:09:22.840 --> 00:09:25.520 and you make up your own mind as to what you want to do with 215 00:09:25.520 --> 00:09:28.520 that. Okay, just understand if you don't use the circle or the 216 00:09:28.520 --> 00:09:32.920 TM, you're going to have trouble getting damages. And that might 217 00:09:32.920 --> 00:09:35.920 not be an issue for you. That's just that's up to you and your 218 00:09:35.920 --> 00:09:39.040 own companies. Okay. I just wanted to cover that because 219 00:09:39.240 --> 00:09:42.240 when I saw this in my in my closet, I thought what a perfect 220 00:09:42.240 --> 00:09:45.440 example of understanding the law, but making a business 221 00:09:45.440 --> 00:09:48.880 decision. Understanding the law does not necessarily mean that 222 00:09:48.880 --> 00:09:51.720 you're going to follow it all the time. All right, I'm 223 00:09:51.720 --> 00:09:54.640 teaching you the tools to make that decision. It's up to you if 224 00:09:54.640 --> 00:09:58.680 you follow that decision. Okay, let's go into the first thing 225 00:09:58.680 --> 00:10:00.080 that I think is going to be 226 00:10:00.000 --> 00:10:03.880 be really, really helpful for you. 227 00:10:05.160 --> 00:10:08.080 If you get a federal registration on a trademark, 228 00:10:08.080 --> 00:10:10.920 oh, and by the way, we're covering copyrights tomorrow. 229 00:10:10.920 --> 00:10:13.360 So that's when we're gonna go into things like artwork, 230 00:10:13.360 --> 00:10:18.360 books, website protection, your copy, 231 00:10:18.960 --> 00:10:19.920 you know, those kinds of things. 232 00:10:19.920 --> 00:10:22.700 So if you're in any of those fields, 233 00:10:22.700 --> 00:10:24.620 you're definitely gonna wanna be there tomorrow 234 00:10:24.620 --> 00:10:26.660 because we're gonna go very deep into that. 235 00:10:26.660 --> 00:10:28.720 I'm gonna give you real life examples 236 00:10:28.720 --> 00:10:30.220 and I'm gonna show you how to file 237 00:10:30.220 --> 00:10:33.480 a copyright application online as well, okay? 238 00:10:33.480 --> 00:10:36.500 So let's go back to trademarks for a second. 239 00:10:36.500 --> 00:10:39.740 And if you get a federal registration, 240 00:10:39.740 --> 00:10:44.420 what is one of the most annoying things that will happen? 241 00:10:44.420 --> 00:10:45.540 You get the registration, 242 00:10:45.540 --> 00:10:48.140 all of a sudden somebody gets the domain name 243 00:10:48.140 --> 00:10:49.760 for the exact same name. 244 00:10:50.920 --> 00:10:52.620 That is so frustrating. 245 00:10:52.620 --> 00:10:55.300 Like you come out with this incredible name 246 00:10:55.300 --> 00:10:57.380 for your company or your product. 247 00:10:57.380 --> 00:10:59.560 And you think this is great. 248 00:10:59.560 --> 00:11:01.040 And then you try to get the domain name 249 00:11:01.040 --> 00:11:02.280 and it's not available. 250 00:11:02.280 --> 00:11:04.680 Now, I'm gonna teach you a little something. 251 00:11:05.600 --> 00:11:10.080 Do not go to these domain name selling points 252 00:11:10.080 --> 00:11:13.000 and type in the name of the domain 253 00:11:13.000 --> 00:11:14.320 that you're interested in 254 00:11:14.320 --> 00:11:18.880 unless you're gonna buy it immediately, all right? 255 00:11:18.880 --> 00:11:20.600 Why am I saying that? 256 00:11:20.600 --> 00:11:23.240 A lot of them actually have what are called spiders. 257 00:11:23.240 --> 00:11:25.360 They have software in there 258 00:11:25.380 --> 00:11:28.540 and they detect how interested people are 259 00:11:28.540 --> 00:11:30.900 in a specific domain name. 260 00:11:30.900 --> 00:11:32.220 So if you type it in, 261 00:11:32.220 --> 00:11:34.540 and by the way, I would suggest that you use, 262 00:11:34.540 --> 00:11:35.620 what is it, Namecheap? 263 00:11:35.620 --> 00:11:37.300 I think that's the one I use a lot. 264 00:11:37.300 --> 00:11:38.580 Love them. 265 00:11:38.580 --> 00:11:43.580 Oh my gosh, everybody, 8.95, 8.95 a year. 266 00:11:44.720 --> 00:11:46.060 I mean, ridiculous. 267 00:11:46.060 --> 00:11:47.500 Go to Namecheap, you know? 268 00:11:47.500 --> 00:11:48.780 And I'm not affiliate or anything. 269 00:11:48.780 --> 00:11:51.360 Like I'm serious, like they're so cheap. 270 00:11:51.360 --> 00:11:53.000 Namecheap, there you go. 271 00:11:53.000 --> 00:11:55.860 So I would use them because it's only 8.95. 272 00:11:55.860 --> 00:11:57.100 You can get your registration. 273 00:11:57.100 --> 00:11:58.100 But this is what happens. 274 00:11:58.100 --> 00:12:02.640 If you go online and you type in 275 00:12:03.580 --> 00:12:05.060 the name that you're interested in, 276 00:12:05.060 --> 00:12:07.840 but you don't buy it at that moment, 277 00:12:07.840 --> 00:12:11.380 what a lot of them use is a filter or a software program 278 00:12:11.380 --> 00:12:13.080 that determines the interest in it 279 00:12:13.080 --> 00:12:17.300 and the price goes up immediately if you don't buy it. 280 00:12:17.300 --> 00:12:19.460 So something that you searched yesterday 281 00:12:19.460 --> 00:12:22.300 may in fact go up by $100 282 00:12:22.300 --> 00:12:24.680 because they now know that there's an interest 283 00:12:24.680 --> 00:12:26.200 behind the name. 284 00:12:26.200 --> 00:12:28.440 So go out there, do your trademark searches, 285 00:12:28.440 --> 00:12:29.740 which I'm gonna show you today, 286 00:12:29.740 --> 00:12:31.880 how to do a trademark search. 287 00:12:31.880 --> 00:12:35.440 You all know how to do a trademark search after today. 288 00:12:35.440 --> 00:12:37.400 But after you do your trademark search, 289 00:12:37.400 --> 00:12:41.000 when you go on that domain name site, 290 00:12:41.000 --> 00:12:42.600 make sure the second you look it up, 291 00:12:42.600 --> 00:12:44.640 if you're interested, you buy that immediately. 292 00:12:44.640 --> 00:12:47.280 My gosh, it's 10 bucks for the year, you know? 293 00:12:47.280 --> 00:12:49.520 And some of these have a package where you buy five, 294 00:12:49.520 --> 00:12:53.080 10 years and it only costs you like 50 bucks, 60 bucks. 295 00:12:53.080 --> 00:12:55.640 I mean, that's pretty incredible. 296 00:12:55.640 --> 00:12:58.440 So that's one hint I wanted to share with you. 297 00:12:58.440 --> 00:13:01.040 So if you get the domain name, 298 00:13:01.040 --> 00:13:03.080 I mean, if you get the federal registered trademark, 299 00:13:03.080 --> 00:13:05.360 go get the domain name immediately, right? 300 00:13:05.360 --> 00:13:06.200 But here's the thing. 301 00:13:06.200 --> 00:13:10.800 What if you go and you have a federal registration 302 00:13:10.800 --> 00:13:13.040 and then three weeks later, 303 00:13:13.040 --> 00:13:17.800 somebody says, oh, I know that Susan, 304 00:13:17.800 --> 00:13:21.240 Susan has this really cool name for her products 305 00:13:21.240 --> 00:13:22.360 and she talked about it. 306 00:13:22.360 --> 00:13:25.920 So I'm gonna go buy the domain name, all right? 307 00:13:25.920 --> 00:13:27.400 Now here's the thing. 308 00:13:27.400 --> 00:13:28.900 Susan, because she was here 309 00:13:28.900 --> 00:13:31.320 in the Protect Your Idea Challenge, 310 00:13:31.320 --> 00:13:33.400 now realizes that she could actually file 311 00:13:33.400 --> 00:13:38.040 what's called a domain name dispute with ICANN, okay? 312 00:13:38.040 --> 00:13:40.400 And I'm gonna show you how to do that, okay? 313 00:13:40.400 --> 00:13:43.280 I'm gonna show you actually how to walk through this. 314 00:13:43.280 --> 00:13:44.120 I'm gonna give you the link. 315 00:13:44.120 --> 00:13:47.440 You can do some reading, some extra reading later, 316 00:13:47.960 --> 00:13:51.800 but I'm dropping in the, let me copy and paste it now. 317 00:13:51.800 --> 00:13:53.640 Here's a link for it. 318 00:13:53.640 --> 00:13:56.960 What this policy says, 319 00:13:58.320 --> 00:14:00.680 what this company does, ICANN, 320 00:14:00.680 --> 00:14:04.840 is it says that if you have a federal registration 321 00:14:04.840 --> 00:14:09.440 for a trademark and somebody else uses that exact same name 322 00:14:09.440 --> 00:14:10.600 in their domain name, 323 00:14:10.600 --> 00:14:13.440 you can actually file a domain name dispute 324 00:14:13.440 --> 00:14:15.760 against them under ICANN. 325 00:14:15.760 --> 00:14:16.880 And when you win, 326 00:14:16.880 --> 00:14:19.740 because they're using the exact same domain name, 327 00:14:20.660 --> 00:14:22.620 they have to release it to you. 328 00:14:25.120 --> 00:14:28.160 So how do you use this in business? 329 00:14:28.160 --> 00:14:29.000 It's pretty cool. 330 00:14:29.000 --> 00:14:30.200 This is what you do. 331 00:14:30.200 --> 00:14:33.400 If somebody actually buys up your domain name 332 00:14:33.400 --> 00:14:36.280 that's associated with your federally registered trademark, 333 00:14:36.280 --> 00:14:38.640 you send them a letter, 334 00:14:38.640 --> 00:14:40.720 and I will actually use a lawyer for this, 335 00:14:40.720 --> 00:14:42.880 but now you understand what to do. 336 00:14:42.880 --> 00:14:43.980 You send them a letter, 337 00:14:43.980 --> 00:14:47.300 and the letter says if they're actually using 338 00:14:47.300 --> 00:14:49.540 that trademark for the same goods or services 339 00:14:49.540 --> 00:14:52.180 that you have associated with your trademark, 340 00:14:52.180 --> 00:14:54.100 then what you say in that letter is 341 00:14:55.460 --> 00:14:57.260 you're committing trademark infringement, 342 00:14:57.260 --> 00:14:58.260 but separate from that, 343 00:14:58.260 --> 00:15:00.220 you can say you're also in violation. 344 00:15:00.000 --> 00:15:06.000 of the ICANN rules and I'm going to file a domain name dispute against you. 345 00:15:06.000 --> 00:15:08.000 All right, you add that as well. 346 00:15:08.000 --> 00:15:11.000 And at the end of that, I will own your domain name. 347 00:15:11.000 --> 00:15:17.000 So your option is, A, surrender the domain name to me. 348 00:15:17.000 --> 00:15:19.000 I see April smiling. Surrender. 349 00:15:19.000 --> 00:15:22.000 You will surrender and give me your domain name. 350 00:15:22.000 --> 00:15:28.000 I'm teaching you how you're changing from a position of defense to offense very quickly. 351 00:15:28.000 --> 00:15:31.000 So you send them a notice letter and you let them know, 352 00:15:31.000 --> 00:15:34.000 hey, I actually own this federally registered trademark. 353 00:15:34.000 --> 00:15:36.000 It's mine. Your domain name's for the same thing. 354 00:15:36.000 --> 00:15:37.000 You need to stop immediately. 355 00:15:37.000 --> 00:15:38.000 And what do they do? 356 00:15:38.000 --> 00:15:42.000 If they actually look this thing up, they should go, oh, wow. 357 00:15:42.000 --> 00:15:44.000 Okay, that's a big deal. 358 00:15:44.000 --> 00:15:47.000 Now, 50% of the time, that'll work. 359 00:15:47.000 --> 00:15:49.000 Just to be clear, that doesn't work all the time. 360 00:15:49.000 --> 00:15:53.000 Sometimes you have these people in foreign countries that are just buying up tons of domain names 361 00:15:53.000 --> 00:15:56.000 and trying to sell them and they're very hard to catch. 362 00:15:56.000 --> 00:16:00.000 It's kind of like that annoying mosquito where it's dark and you're like, ah, 363 00:16:00.000 --> 00:16:03.000 and you can't get them and they just keep biting you and it's so annoying. 364 00:16:03.000 --> 00:16:07.000 That's what they're like because you can't kind of grab them to stop them. 365 00:16:07.000 --> 00:16:11.000 And if you run into that in VIP, I can tell you how to get after those people. 366 00:16:11.000 --> 00:16:15.000 You can actually go after the domain name registrar themselves, 367 00:16:15.000 --> 00:16:19.000 and you can go a back way to stop them from using your domain name. 368 00:16:19.000 --> 00:16:21.000 I do that for a number of clients. 369 00:16:21.000 --> 00:16:23.000 So I just wanted to share that with you. 370 00:16:23.000 --> 00:16:24.000 Is that helpful? 371 00:16:24.000 --> 00:16:26.000 Type in the chat if that's helpful. 372 00:16:26.000 --> 00:16:32.000 So if somebody actually has a domain name that's the same thing as your federal registration, 373 00:16:32.000 --> 00:16:33.000 that's how you take care of that. 374 00:16:33.000 --> 00:16:35.000 Just follow that link. 375 00:16:35.000 --> 00:16:36.000 All right, awesome. 376 00:16:36.000 --> 00:16:37.000 I'm glad this is helping. 377 00:16:37.000 --> 00:16:38.000 And it's not legal advice. 378 00:16:38.000 --> 00:16:41.000 That's awesome, John. 379 00:16:41.000 --> 00:16:42.000 Thank you, John. 380 00:16:42.000 --> 00:16:43.000 John's my attorney. 381 00:16:43.000 --> 00:16:46.000 So that's the first part I wanted to share with you. 382 00:16:46.000 --> 00:16:53.000 Now, I'm going to walk you through how do you determine whether or not there is trademark infringement? 383 00:16:53.000 --> 00:16:54.000 Why is this important? 384 00:16:54.000 --> 00:17:02.000 Because the very next thing I'm going to teach you after this is specifically how to do a trademark search. 385 00:17:02.000 --> 00:17:10.000 Now, trademark searches, when you're doing a search, you're searching to see if there's a trademark that is so similar to yours 386 00:17:10.000 --> 00:17:17.000 that there would be a likelihood of confusion in the public's eye regarding the goods or services associated with the trademark. 387 00:17:17.000 --> 00:17:19.000 What in the world did I just say? 388 00:17:19.000 --> 00:17:22.000 Okay, so this is a phone, right? 389 00:17:22.000 --> 00:17:23.000 There's a phone. 390 00:17:23.000 --> 00:17:26.000 Now, this is by Samsung. 391 00:17:26.000 --> 00:17:28.000 Don't be mad at me. 392 00:17:28.000 --> 00:17:29.000 It's a Samsung. 393 00:17:29.000 --> 00:17:31.000 I see some of you are offended. 394 00:17:31.000 --> 00:17:32.000 It's okay. 395 00:17:32.000 --> 00:17:33.000 It's going to be okay. 396 00:17:33.000 --> 00:17:35.000 So this is a Samsung. 397 00:17:35.000 --> 00:17:39.000 Now, what if I decided to call this iPhone, right? 398 00:17:39.000 --> 00:17:41.000 That's a problem. 399 00:17:41.000 --> 00:17:43.000 Obviously, it's not an iPhone, right? 400 00:17:43.000 --> 00:17:45.000 That's a trademark of another party. 401 00:17:45.000 --> 00:17:50.000 But if I put that name on here, there's a confusion as to the source of goods. 402 00:17:50.000 --> 00:17:53.000 People believe all of a sudden that this belongs to Apple, right? 403 00:17:53.000 --> 00:17:55.000 That's called trademark infringement. 404 00:17:55.000 --> 00:17:56.000 Why? 405 00:17:56.000 --> 00:17:57.000 You have to do an analysis. 406 00:17:57.000 --> 00:18:04.000 You have to figure out what are the things that people look at when they look at this phone and they see that trademark. 407 00:18:04.000 --> 00:18:07.000 What are the things that they look at that could lead to confusion? 408 00:18:07.000 --> 00:18:11.000 I'm going to walk you through each of those pieces one by one. 409 00:18:11.000 --> 00:18:13.000 Why is this important? 410 00:18:13.000 --> 00:18:21.000 Because the trademark searches that you're going to do, you're doing a search to determine if you can use that trademark. 411 00:18:21.000 --> 00:18:24.000 So if I come up with a brand-new name, nobody's ever used it. 412 00:18:24.000 --> 00:18:25.000 Fashir. 413 00:18:25.000 --> 00:18:28.000 Pretty sure nobody here has ever used that name, like ever. 414 00:18:28.000 --> 00:18:30.000 Okay? 415 00:18:30.000 --> 00:18:31.000 Okay, somebody has. 416 00:18:31.000 --> 00:18:32.000 All right, maybe somebody has. 417 00:18:32.000 --> 00:18:36.000 But Fashir, let's say I come up with that name, and it's for cell phones. 418 00:18:36.000 --> 00:18:40.000 Now, I want to see if I can use that name. 419 00:18:40.000 --> 00:18:43.000 So I want to do what's called a trademark search. 420 00:18:43.000 --> 00:18:50.000 When I do a trademark search, I'm going to look up that name, and I'm going to look for similar goods and similar services. 421 00:18:50.000 --> 00:18:52.000 Does that make sense? 422 00:18:52.000 --> 00:19:02.000 If I find that that name is used for similar goods or services, chances are very high that I would be committing what's called trademark infringement. 423 00:19:02.000 --> 00:19:07.000 So I'm going to walk you through the elements that are looked at to determine trademark infringement. 424 00:19:07.000 --> 00:19:09.000 Then I'm going to show you how to do a trademark search. 425 00:19:09.000 --> 00:19:10.000 Okay? 426 00:19:10.000 --> 00:19:17.000 We're going to do that very slowly, but it's really important for you to understand this part in particular. 427 00:19:17.000 --> 00:19:24.000 So with that, Larissa, can you drop – actually, I can drop it. 428 00:19:24.000 --> 00:19:25.000 It's so fast. 429 00:19:25.000 --> 00:19:29.000 I already got it. 430 00:19:29.000 --> 00:19:31.000 Right-click, paste. 431 00:19:31.000 --> 00:19:36.000 I'm going to ask you to drop link number three, but I've got it already. 432 00:19:36.000 --> 00:19:38.000 Right-click, paste, enter. 433 00:19:38.000 --> 00:19:39.000 Okay. 434 00:19:39.000 --> 00:19:46.000 What I've provided you with right here is a list of the likelihood of confusion factors. 435 00:19:46.000 --> 00:19:48.000 All right? 436 00:19:48.000 --> 00:19:52.000 This is a breakdown of each one of them one by one. 437 00:19:52.000 --> 00:19:59.000 This is what you actually look at to determine whether or not there is trademark infringement. 438 00:19:59.000 --> 00:20:00.000 Okay? 439 00:20:00.000 --> 00:20:04.080 So what I'm going to do with you is I'm going to walk through each of these factors one by one. 440 00:20:04.720 --> 00:20:09.760 Why do you consider these things? You consider these things so as to determine whether or not 441 00:20:09.760 --> 00:20:14.480 you potentially could be sued for trademark infringement. So I'm sharing my screen right now. 442 00:20:16.160 --> 00:20:22.320 I'm going to make this larger. Can everybody see this? Okay. Whoa, that got big real fast. 443 00:20:22.960 --> 00:20:30.480 Minus, minus, minus. There we go. Can everybody see that okay? Okay, great. All right. So 444 00:20:31.760 --> 00:20:36.960 you have this in an attachment right now. I just gave you the Google Doc. You can look it up. 445 00:20:37.840 --> 00:20:41.760 I'm also going to post it in the Facebook group. So you'll have it later. Okay. So you can just 446 00:20:41.760 --> 00:20:46.400 watch for now. So these are the things that you look at to determine whether or not you are 447 00:20:46.400 --> 00:20:50.640 potentially going to be sued for trademark infringement. This is the analysis that I do as 448 00:20:50.640 --> 00:20:56.320 a litigator. All right. So this is the analysis that you want to do before you use a trademark. 449 00:20:57.120 --> 00:21:02.240 Why? Because if you use a specific trademark and somebody sends you a cease and desist letter, 450 00:21:02.240 --> 00:21:06.160 this is the analysis that's going to be used to determine whether or not they'd win in court. 451 00:21:06.160 --> 00:21:10.640 All right. So the first thing you look at is the similarity or dissimilarity of the 452 00:21:10.640 --> 00:21:15.440 marks in their entirety, such as appearance, sound, commercial impression. What does that mean? 453 00:21:15.920 --> 00:21:22.320 Do the words sound the same? So iPhone, iPhone. If I file a trademark application for iPhone, 454 00:21:22.320 --> 00:21:28.640 and Apple already owns the trademark iPhone, do they look the same? Yes. Do they sound the same? 455 00:21:28.640 --> 00:21:33.680 Yes. So those are two things that you look at right off the bat. And then what's the public 456 00:21:33.680 --> 00:21:40.160 impression with regard to that word? So if it's, if it has a negative connotation, like, let's say, 457 00:21:40.400 --> 00:21:47.760 let's say, like, thief, let's just say that, let's say the trademark was intellectual thief, 458 00:21:48.320 --> 00:21:54.400 that has a kind of a connotation. It's kind of like a negative connotation behind it. So it's 459 00:21:54.400 --> 00:22:00.560 also the commercial impression. How do people feel when they see that word? If people feel 460 00:22:00.560 --> 00:22:04.480 really negative about one word, but then the other one, they feel really positive, 461 00:22:04.480 --> 00:22:08.720 then there's a different commercial impression. So there's a lower likelihood of confusion. 462 00:22:09.440 --> 00:22:14.320 All right. So in this analysis for likelihood of confusion, and I'm getting very technical with 463 00:22:14.320 --> 00:22:18.480 you. So I just want to make sure I'm taking this slow with you. In the analysis for likelihood of 464 00:22:18.480 --> 00:22:24.800 confusion, you're determining how many, how many of these factors are yes. And if there's a lot 465 00:22:24.800 --> 00:22:29.760 of yeses, there's a high chance that you're going to lose in a trademark lawsuit. So you're 466 00:22:29.840 --> 00:22:34.800 If there's a lot of yeses, there's a high chance that you're going to lose in a trademark lawsuit. 467 00:22:35.600 --> 00:22:39.600 Why is this important? It's important because when you do a trademark search, and you find a 468 00:22:39.600 --> 00:22:43.680 trademark that's similar to the one that you're thinking about, you're going to look at these 469 00:22:43.680 --> 00:22:47.840 factors, you're going to say, Oh, my gosh, thank goodness, Peter gave me this sheet. 470 00:22:47.840 --> 00:22:55.120 Let me pull out the sheet. Now let me compare the trademark that I just found on the USPTO website. 471 00:22:55.120 --> 00:23:01.360 And let me look at each of these factors one by one. Does it look the same? Are the words the 472 00:23:01.360 --> 00:23:06.400 same? Does it sound the same? Do you see what I mean? That's how you're going to use this in a 473 00:23:06.400 --> 00:23:10.640 trademark search, which we're going to do in literally two minutes. All right. The next thing 474 00:23:10.640 --> 00:23:17.920 you look at is are the goods and services similar? Three minutes. Thank you. Are the goods and 475 00:23:17.920 --> 00:23:23.920 services similar? Okay. When you file a trademark application, you have what's called a recitation 476 00:23:23.920 --> 00:23:32.080 of goods and services. That's where you describe what exactly it is that the trademark is covering. 477 00:23:32.080 --> 00:23:40.480 So for a trademark application for an iPhone, it would say cellular phones, right? Or it wouldn't 478 00:23:40.480 --> 00:23:48.240 say laptops, because iPhone is not provided for covering of laptops. It's used for cell phones. 479 00:23:48.240 --> 00:23:54.480 For that reason, the recitation of goods would say cell phones. That simple. It would be a class 480 00:23:54.480 --> 00:23:58.960 nine filing likely and it would say cell phones. All right. And I'm going to show you how to 481 00:23:58.960 --> 00:24:05.200 determine your international classes as well. Okay. The next thing, is there a similarity 482 00:24:05.200 --> 00:24:12.080 or dissimilarity with regard to the trade channels? What does that mean? Are they both 483 00:24:12.080 --> 00:24:17.360 sold at target? Would your product be sold at target and the product that is already covered 484 00:24:17.360 --> 00:24:23.520 by that trademark both be sold at target? Or can people only order what you're selling if they know 485 00:24:23.520 --> 00:24:30.240 you personally or order it from your website only? That's a different trade channel. Okay. 486 00:24:31.200 --> 00:24:35.440 Would the products that are covered by that trademark, iPhone, iPhone, would they both be 487 00:24:35.440 --> 00:24:40.320 sold side by side in the same store? That's what you want to look at. If the answer is yes, there's 488 00:24:40.320 --> 00:24:45.520 a high likelihood of confusion because the public consumer would see two different products by two 489 00:24:45.520 --> 00:24:51.280 different companies that have the same name. That would lead to a likelihood of confusion. Okay. 490 00:24:51.280 --> 00:24:57.440 The next one is, is it an impulse product or is it something that you're very careful about purchasing? 491 00:24:58.320 --> 00:24:59.840 So if the product is 492 00:25:00.000 --> 00:25:05.000 $9.95, $9.95, that's an impulse product. 493 00:25:05.440 --> 00:25:09.880 If it's $9,995, that is not an impulse product 494 00:25:09.880 --> 00:25:12.520 unless you're filthy rich, okay? 495 00:25:12.520 --> 00:25:14.920 Because most people don't just kind of walk into a store 496 00:25:14.920 --> 00:25:15.800 and say, hey, you know what? 497 00:25:15.800 --> 00:25:17.120 I'm going to drop 10 grand on that. 498 00:25:17.120 --> 00:25:18.460 Yeah, sure, why not? 499 00:25:18.460 --> 00:25:20.960 It's like, that's something you're going to focus on. 500 00:25:20.960 --> 00:25:23.020 That's not an impulse product. 501 00:25:23.020 --> 00:25:26.520 If it's an impulse product and the names are similar, 502 00:25:26.520 --> 00:25:28.840 there's a high likelihood of confusion 503 00:25:28.840 --> 00:25:30.840 because people aren't spending a lot of time 504 00:25:30.840 --> 00:25:32.640 analyzing the products to determine 505 00:25:32.640 --> 00:25:34.320 who's actually creating them. 506 00:25:34.320 --> 00:25:35.600 They're just seeing the name. 507 00:25:35.600 --> 00:25:37.860 Oh, iPhone, boom, I'll take it. 508 00:25:37.860 --> 00:25:39.520 That's it, all right? 509 00:25:39.520 --> 00:25:42.320 But if that product is $20,000, 510 00:25:42.320 --> 00:25:44.520 I guarantee you're going to spend more time. 511 00:25:45.620 --> 00:25:48.440 Okay, I'm going to go into maybe two more of these. 512 00:25:48.440 --> 00:25:49.680 Strength of the market. 513 00:25:51.000 --> 00:25:54.160 There's a company out there that sues literally anybody. 514 00:25:54.160 --> 00:25:57.360 Somebody type in the chat what the name of the company is. 515 00:25:57.360 --> 00:26:00.720 They sue literally anybody that uses MC 516 00:26:00.720 --> 00:26:01.980 with any other word. 517 00:26:05.180 --> 00:26:06.840 And it's associated with food, 518 00:26:06.840 --> 00:26:08.400 it's associated with clothing, 519 00:26:08.400 --> 00:26:10.680 it's associated with all sorts of different goods. 520 00:26:10.680 --> 00:26:12.740 That's just what they do. 521 00:26:12.740 --> 00:26:13.920 It's McDonald's. 522 00:26:14.800 --> 00:26:18.280 You start using Mc, like Mc, 523 00:26:18.280 --> 00:26:23.120 Mc, McShip, McBurger, Mc anything, 524 00:26:23.120 --> 00:26:24.600 you will get a cease and desist letter 525 00:26:24.600 --> 00:26:26.700 from their lawyers immediately. 526 00:26:26.700 --> 00:26:27.540 How do I know this? 527 00:26:27.540 --> 00:26:30.620 I've represented many companies against McDonald's. 528 00:26:30.620 --> 00:26:33.940 We've been very fortunate in being successful, 529 00:26:33.940 --> 00:26:34.900 but the fact of the matter 530 00:26:34.900 --> 00:26:39.240 is that they're very protective of their trademark. 531 00:26:39.240 --> 00:26:40.660 Thank you, Larissa, I got you. 532 00:26:40.660 --> 00:26:42.260 We're all set, thank you. 533 00:26:42.260 --> 00:26:45.620 All right, and I'll go into one other of these, 534 00:26:45.620 --> 00:26:48.860 and that's the number and nature of similar marks. 535 00:26:48.860 --> 00:26:52.320 So if the trademark that you're going after, 536 00:26:52.320 --> 00:26:56.440 if there are many, many, many other trademarks 537 00:26:57.280 --> 00:27:01.160 that are listed with the same name, 538 00:27:01.160 --> 00:27:03.040 so let's say that the name is, 539 00:27:04.320 --> 00:27:07.300 let's say it's Nike, 540 00:27:07.300 --> 00:27:09.660 but let's say that there's a Nike Globe, 541 00:27:09.660 --> 00:27:14.660 there's a Nike Burger, Nike Rib, 542 00:27:14.960 --> 00:27:17.920 boy, I must be hungry, I keep talking about food. 543 00:27:17.920 --> 00:27:20.320 Nike, like all sorts of different Nike this, 544 00:27:20.320 --> 00:27:21.960 Nike that, Nike that, right? 545 00:27:22.600 --> 00:27:23.440 You know, it's probably 546 00:27:23.440 --> 00:27:24.400 because I'm drinking this juice right now. 547 00:27:24.400 --> 00:27:27.600 That's probably why I'm asking for food, right? 548 00:27:27.600 --> 00:27:30.800 So there's all these Nike things out there, 549 00:27:30.800 --> 00:27:32.040 and then you decide, you know what? 550 00:27:32.040 --> 00:27:34.720 I'm gonna use Nike, I don't know, 551 00:27:34.720 --> 00:27:36.560 Nike House or something like that. 552 00:27:36.560 --> 00:27:38.600 And then Nike reaches out to you and says, 553 00:27:38.600 --> 00:27:40.600 hey, you're committing trademark infringement. 554 00:27:40.600 --> 00:27:42.380 One of the defenses you can use 555 00:27:42.380 --> 00:27:45.540 is that their trademark has been what's called diluted. 556 00:27:45.540 --> 00:27:47.440 What that means is everybody 557 00:27:47.440 --> 00:27:49.800 is using their trademark already. 558 00:27:49.800 --> 00:27:51.480 Why in the world are they going after you? 559 00:27:52.000 --> 00:27:55.120 Now, that's not really a strong defense, 560 00:27:55.120 --> 00:27:57.300 but it's something to use in your correspondence 561 00:27:57.300 --> 00:27:58.620 with the other party. 562 00:27:58.620 --> 00:28:03.280 It's showing that their trademark is not very strong, okay? 563 00:28:03.280 --> 00:28:08.280 Now, if instead, is that right, Braylon? 564 00:28:08.440 --> 00:28:11.480 Nike is to overcome, get out. 565 00:28:11.480 --> 00:28:12.440 I didn't know that. 566 00:28:13.400 --> 00:28:14.960 In Greek, means to overcome. 567 00:28:14.960 --> 00:28:17.680 That must be why that example keeps coming up. 568 00:28:17.680 --> 00:28:18.880 That's amazing. 569 00:28:18.880 --> 00:28:21.220 Yeah, so what that really means to you 570 00:28:21.960 --> 00:28:25.180 is that if you're looking to use a certain name 571 00:28:25.180 --> 00:28:26.580 that's been used over and over and over 572 00:28:26.580 --> 00:28:28.580 by a lot of different people, 573 00:28:28.580 --> 00:28:31.320 it decreases the strength of their trademark. 574 00:28:31.320 --> 00:28:32.980 I wouldn't suggest that you use it 575 00:28:32.980 --> 00:28:34.940 because I don't want you to get in trouble, 576 00:28:34.940 --> 00:28:36.380 but at the same time, 577 00:28:36.380 --> 00:28:40.100 just understand that their strength is a lot lower, okay? 578 00:28:40.100 --> 00:28:44.620 Now, secondarily, if it's a trademark that is used 579 00:28:45.740 --> 00:28:49.220 like Microsoft, Microsoft Excel, Microsoft Word, 580 00:28:49.220 --> 00:28:51.580 Microsoft this, Microsoft that, 581 00:28:51.580 --> 00:28:53.500 that's a powerful trademark 582 00:28:54.420 --> 00:28:56.420 because it's exclusively used by them. 583 00:28:56.420 --> 00:28:58.860 So if you use the word Microsoft on anything, 584 00:28:58.860 --> 00:29:01.300 I guarantee you, you're going to get sued 585 00:29:01.300 --> 00:29:03.300 because it's a very powerful trademark. 586 00:29:03.300 --> 00:29:05.480 And your chances of getting away with stating 587 00:29:05.480 --> 00:29:09.860 that there is no likelihood of confusion is close to none 588 00:29:09.860 --> 00:29:12.420 because it's such a strong trademark. 589 00:29:12.420 --> 00:29:14.080 So when you're doing an analysis 590 00:29:14.080 --> 00:29:15.800 for likelihood of confusion to determine 591 00:29:15.800 --> 00:29:20.200 if you can use the trademark that you want to use, 592 00:29:20.200 --> 00:29:22.400 you gotta be careful to make sure that the trademark 593 00:29:22.400 --> 00:29:24.280 that you're comparing yourself to 594 00:29:24.280 --> 00:29:26.400 is not a powerful trademark. 595 00:29:26.400 --> 00:29:29.320 If it is, there's the standard 596 00:29:29.320 --> 00:29:31.580 to determine likelihood of confusion 597 00:29:31.580 --> 00:29:35.120 in that specific case goes lower, lower, lower. 598 00:29:35.120 --> 00:29:36.640 It becomes easier to determine 599 00:29:36.640 --> 00:29:37.960 that there's a likelihood of confusion 600 00:29:37.960 --> 00:29:40.320 because their trademark is so strong. 601 00:29:40.320 --> 00:29:41.520 The trademark is weak. 602 00:29:41.520 --> 00:29:42.840 It takes more to prove 603 00:29:42.840 --> 00:29:45.080 that there's a likelihood of confusion, okay? 604 00:29:45.960 --> 00:29:48.040 I'm going to show you something for two minutes 605 00:29:48.040 --> 00:29:50.160 and then Larissa, Paula's here. 606 00:29:51.560 --> 00:29:52.760 Oh, that's wonderful. 607 00:29:54.000 --> 00:29:55.120 That is wonderful. 608 00:29:55.120 --> 00:29:55.960 Okay, great. 609 00:29:55.960 --> 00:29:56.780 I see you. 610 00:29:56.780 --> 00:29:57.620 Hi, Paula. 611 00:29:57.620 --> 00:29:58.440 We're going to take two more minutes 612 00:29:58.440 --> 00:30:00.240 and then we're going to jump in, okay? 613 00:30:00.000 --> 00:30:05.120 your time. Thank you, my friend. All right. So let me share something with you. 614 00:30:07.200 --> 00:30:10.800 I'm going to share something with you because I think this is going to make your lives a lot easier. 615 00:30:13.440 --> 00:30:15.440 Okay, let me share my screen with you. 616 00:30:21.680 --> 00:30:24.000 Share. Okay, can everyone see my screen right now? 617 00:30:24.000 --> 00:30:29.840 Okay, this is the United States Patent and Trademark Office website. Larissa, 618 00:30:29.840 --> 00:30:36.960 can you drop the link? It's the USPTO.gov site. In here, you'll see right up here, 619 00:30:36.960 --> 00:30:43.760 you see the word trademarks? You click that button, or you can go right down underneath 620 00:30:43.760 --> 00:30:47.440 the application process and go right to searching trademarks. You see that? 621 00:30:48.240 --> 00:30:54.000 You click on searching trademarks. Right at the top here, under search trademark database, 622 00:30:54.640 --> 00:30:59.440 there's a link. It says trademark electronic search system. You can click that, or you can 623 00:30:59.440 --> 00:31:03.840 click this button underneath it that says search our trademark database. Either one. 624 00:31:04.480 --> 00:31:12.080 When you click that, you come to this screen. Select the search option. Okay, I'm going to 625 00:31:12.080 --> 00:31:17.120 walk you through this quickly now, and then in VIP, we're going into it again in more detail. 626 00:31:17.360 --> 00:31:22.080 I want to walk you through this. You see there's three options. I would only choose one of these 627 00:31:22.080 --> 00:31:27.600 two here. The basic word search, which I'm going to show you right now. It opens this screen here, 628 00:31:27.600 --> 00:31:31.120 and all you have to do is type in the word that you're interested in, whatever it is. 629 00:31:32.000 --> 00:31:37.680 I own Protection Portal, right? I have an application out there on that. 630 00:31:38.240 --> 00:31:42.720 But if you so chose to look up... Actually, here's one. Challenge 631 00:31:46.480 --> 00:31:52.480 Whisperer. I actually own the trademark Challenge Whisperer. That's actually my 632 00:31:52.480 --> 00:31:57.840 trademark application. I filed it about nine months ago, which is being federally registered. 633 00:31:57.840 --> 00:32:03.440 Now, if I search for that name, under the field, you see the option combined word 634 00:32:04.320 --> 00:32:09.200 or registration number. You're not going to use that. Or the owner. Let's say there's a 635 00:32:09.200 --> 00:32:13.920 certain person that you're interested in, and you want to know if they have a trademark. You 636 00:32:13.920 --> 00:32:20.720 can type in their name and then search for a trademark. But in here, you're just going to do 637 00:32:20.720 --> 00:32:25.040 a combined wordmark. So that's it. Challenge Whisperer. I submit a query, and what do you 638 00:32:25.040 --> 00:32:30.160 know? There it is right there. There's my trademark application. It pops right up. 639 00:32:30.160 --> 00:32:34.320 There's the wordmark. There are the services right here. 640 00:32:35.600 --> 00:32:42.640 Registration of goods and services. All broken down for you. So it says that it's class 41, 641 00:32:42.640 --> 00:32:48.000 which is associated with services for educational services, namely conducting online courses, 642 00:32:48.000 --> 00:32:52.880 classes, seminars, workshops, and conferences, and providing mentoring, all in the field of 643 00:32:52.880 --> 00:32:57.760 business, marketing, advertising. If any of you are doing coaching, and you're filing your own 644 00:32:57.760 --> 00:33:03.200 trademark applications, you have my permission to use my recitation of services. I'm giving you 645 00:33:03.200 --> 00:33:10.800 my permission right now, and it's recorded. You can go in and copy mine. This is very good. This 646 00:33:10.800 --> 00:33:15.920 is a really good summary. If you're dealing with doing challenges, and you're coaching, 647 00:33:16.640 --> 00:33:22.080 you're going to want to look at my recitation of goods and services. I've done this for many years, 648 00:33:22.080 --> 00:33:30.000 25 at least, and so you have my permission to just copy it and file it in class 41. 649 00:33:30.000 --> 00:33:35.040 So with that being the case, you'll see, what did I do here? I filed it as a 1B. Remember yesterday 650 00:33:35.040 --> 00:33:41.600 how we talked about an intent to use application? It's a section 1B application, okay? Because I had 651 00:33:41.600 --> 00:33:47.600 not been using it yet nine months ago. I'm already using it now, so now I can file to change it from 652 00:33:47.600 --> 00:33:54.880 a 1B to a 1A, okay? And so this is how you do a trademark search. Very simple, very simple. 653 00:33:56.160 --> 00:34:02.720 This is how you change from giving your attorney 10 names to search to giving them three, 654 00:34:03.280 --> 00:34:07.440 because you'll knock out a bunch of them by just typing in the name real quick, 655 00:34:08.800 --> 00:34:13.520 all right? Now I'll show you real briefly for one minute this link over here, the second one. 656 00:34:14.080 --> 00:34:22.560 This is called a structured search, okay? Here you have different options. You can select 657 00:34:23.199 --> 00:34:28.480 the trademark itself as the full mark, but you can also select the goods and services 658 00:34:28.480 --> 00:34:35.840 associated with it. So remember how we mentioned Nike, N-I-K-E. The operator over here you want 659 00:34:35.840 --> 00:34:42.159 to change over to N, because you want to search both the word and you want to search the recitation 660 00:34:42.159 --> 00:34:47.679 of goods or services associated with it, okay? So now I come down here and I say, 661 00:34:47.679 --> 00:34:56.080 well, it's Nike associated with what? Shoes. And I submit a query. And there you go. Nike. 662 00:34:56.080 --> 00:35:00.000 Athletic shoes. See how it popped up right around 663 00:35:00.000 --> 00:35:03.120 Right away, last listed owner, Nike. 664 00:35:03.120 --> 00:35:07.300 Now, what if instead I said Doors? 665 00:35:11.460 --> 00:35:14.260 Nothing comes up because the name Nike 666 00:35:14.260 --> 00:35:18.040 is not associated with anything associated with Doors. 667 00:35:18.040 --> 00:35:20.220 It's associated with shoes, foot apparel. 668 00:35:20.220 --> 00:35:22.780 So if I just type like maybe foot, 669 00:35:22.780 --> 00:35:23.820 maybe it'd even come up there. 670 00:35:23.820 --> 00:35:25.220 Nothing came up there. 671 00:35:25.220 --> 00:35:27.580 Now, this is why it's important to make sure 672 00:35:27.580 --> 00:35:30.440 that the trademark that is most important to you, 673 00:35:30.440 --> 00:35:31.540 and this is what I'm going to close on 674 00:35:31.540 --> 00:35:33.920 before I pull in Paula, 675 00:35:33.920 --> 00:35:37.380 the trademark that is most important to you, 676 00:35:37.380 --> 00:35:40.560 you do want to speak to an attorney about, okay? 677 00:35:40.560 --> 00:35:42.560 So if you start out with like 10 678 00:35:42.560 --> 00:35:45.320 and you break it down through this site, 679 00:35:47.120 --> 00:35:49.960 you break it down to like three that are most important, 680 00:35:49.960 --> 00:35:52.240 give those three to the attorney to look at 681 00:35:52.240 --> 00:35:56.940 because had you used the word foot instead of shoe, 682 00:35:58.080 --> 00:36:00.620 like if I type in foot apparel, 683 00:36:02.580 --> 00:36:04.580 now it comes up. 684 00:36:04.580 --> 00:36:06.260 See, now I can see Nike. 685 00:36:07.160 --> 00:36:09.600 I can see registrations for Nike, right? 686 00:36:09.600 --> 00:36:12.720 But before, when I typed up just foot 687 00:36:12.720 --> 00:36:15.500 because I chose a search term 688 00:36:15.500 --> 00:36:18.300 that wasn't perfect for the database, 689 00:36:18.300 --> 00:36:19.260 I came up with nothing. 690 00:36:19.260 --> 00:36:21.100 So all of a sudden I thought, well, Nike's free. 691 00:36:21.100 --> 00:36:22.580 I can do whatever I want. 692 00:36:22.580 --> 00:36:24.700 No, you can't because the second you make shoes, 693 00:36:24.700 --> 00:36:25.980 you are going to get sued. 694 00:36:26.980 --> 00:36:30.440 So this is why I'm saying that the USPTO website 695 00:36:30.440 --> 00:36:33.880 is phenomenal for doing basic searches, very basic. 696 00:36:33.880 --> 00:36:35.580 Meaning if you have 10 trademarks, 697 00:36:35.580 --> 00:36:37.160 you want to break it down to three 698 00:36:37.160 --> 00:36:39.120 that are most important to you. 699 00:36:39.120 --> 00:36:39.960 You can do that. 700 00:36:39.960 --> 00:36:41.420 You can knock out things very quick. 701 00:36:41.420 --> 00:36:43.420 So what you give to your attorney 702 00:36:43.420 --> 00:36:45.160 are the most important things. 703 00:36:45.160 --> 00:36:49.940 And that's how you maintain a strong relationship 704 00:36:49.940 --> 00:36:51.260 with your attorneys. 705 00:36:51.260 --> 00:36:53.700 And you only use them for things that are most important 706 00:36:53.700 --> 00:36:55.880 because they charge a lot of money. 707 00:36:56.740 --> 00:36:59.120 I know because I know a lawyer, right? 708 00:36:59.120 --> 00:37:01.600 And I know at least another one who's on the line here, 709 00:37:01.600 --> 00:37:02.880 which is fantastic 710 00:37:02.880 --> 00:37:07.120 and who I'm going to introduce you to right now, okay? 711 00:37:07.120 --> 00:37:08.440 So did that help? 712 00:37:08.440 --> 00:37:11.040 Does everybody understand the basics of a trademark search? 713 00:37:11.040 --> 00:37:12.960 Now, what I'm going to do for you tonight, 714 00:37:12.960 --> 00:37:15.200 just because I love you guys, you guys are amazing. 715 00:37:15.200 --> 00:37:18.380 I love the interaction that I'm having with you. 716 00:37:18.380 --> 00:37:19.440 What I'm going to do tonight 717 00:37:19.440 --> 00:37:22.000 is I'm going to do a live in the Facebook group. 718 00:37:22.000 --> 00:37:22.960 And I'm going to do us, 719 00:37:22.960 --> 00:37:25.760 I'm going to do different types of trademark searches 720 00:37:26.600 --> 00:37:27.440 for you. 721 00:37:27.440 --> 00:37:29.000 And I'm going to save the video in there for you as well. 722 00:37:29.000 --> 00:37:32.240 Okay, just because I know you are coaches, 723 00:37:32.240 --> 00:37:34.240 the majority of you are coaches. 724 00:37:34.240 --> 00:37:35.080 So chances are, 725 00:37:35.080 --> 00:37:37.780 you're going to be talking to your people about this. 726 00:37:37.780 --> 00:37:41.000 And so I really want to make sure that you really get this. 727 00:37:41.000 --> 00:37:42.800 So while I showed you the basics, 728 00:37:42.800 --> 00:37:46.320 there's some really neat nuances that you can do. 729 00:37:46.320 --> 00:37:49.640 I'm going to throw that in and just give you that info. 730 00:37:49.640 --> 00:37:53.520 Now in VIP, we're going to go really into deep dives, 731 00:37:53.520 --> 00:37:55.040 but at least in the Facebook group, 732 00:37:55.040 --> 00:37:56.560 I'm going to give you a little more. 733 00:37:56.560 --> 00:37:59.560 All right, so tonight you can look out for that. 734 00:37:59.560 --> 00:38:02.720 And hopefully that'll just bless all of you, okay? 735 00:38:02.720 --> 00:38:03.560 Do you guys like that? 736 00:38:03.560 --> 00:38:04.680 Will that help you out? 737 00:38:04.680 --> 00:38:06.080 Yeah, okay, great. 738 00:38:06.080 --> 00:38:11.080 And with that, Paula Clancy, my gosh. 739 00:38:11.300 --> 00:38:14.120 So I have the incredible privilege of introducing you 740 00:38:14.120 --> 00:38:19.120 to somebody who is a, gosh, been a friend, colleague, 741 00:38:19.280 --> 00:38:21.100 a remarkable attorney. 742 00:38:21.100 --> 00:38:22.640 She has run her own law firm. 743 00:38:22.640 --> 00:38:23.720 She's with Galling, 744 00:38:23.720 --> 00:38:28.720 one of the largest and most powerful IP firms out in Canada. 745 00:38:28.840 --> 00:38:31.720 She's a partner there because they actually reached out 746 00:38:31.720 --> 00:38:33.920 to her and said, will you please come back? 747 00:38:33.920 --> 00:38:37.440 So, and she's very humble, 748 00:38:37.440 --> 00:38:38.880 so she won't tell you any of this. 749 00:38:38.880 --> 00:38:40.880 So I have to give you all the intro 750 00:38:40.880 --> 00:38:42.520 before I actually introduce you to her 751 00:38:42.520 --> 00:38:44.320 because I'm embarrassing her right now. 752 00:38:44.320 --> 00:38:47.220 So with that, Paula Clancy, welcome. 753 00:38:47.220 --> 00:38:49.880 Thank you so much for being here. 754 00:38:49.880 --> 00:38:52.240 She's going to help us kind of talk a little bit 755 00:38:52.240 --> 00:38:55.480 about Canadian trademark law, 756 00:38:55.480 --> 00:38:59.200 differences between US and Canadian trademark law. 757 00:39:00.160 --> 00:39:03.640 And the main reason why I'm doing this is because 758 00:39:03.640 --> 00:39:06.260 a large number of you are doing business in Canada, 759 00:39:06.260 --> 00:39:07.520 and there's a good number of you 760 00:39:07.520 --> 00:39:09.360 that actually live in Canada. 761 00:39:09.360 --> 00:39:11.160 And so when I sent out that survey, 762 00:39:11.160 --> 00:39:13.640 which I always do for a challenge, 763 00:39:13.640 --> 00:39:16.000 I asked what countries are you most interested in? 764 00:39:16.000 --> 00:39:17.660 Number one was Canada. 765 00:39:17.660 --> 00:39:20.160 And for that reason, I asked my friend, Paula, 766 00:39:20.160 --> 00:39:22.960 to come on live with us and she volunteered to do that. 767 00:39:22.960 --> 00:39:25.360 So Paula, I hand the mic over to you. 768 00:39:25.360 --> 00:39:26.600 Thank you for being here. 769 00:39:32.960 --> 00:39:33.960 Can't hear you yet. 770 00:39:46.400 --> 00:39:48.440 Larissa, we could hear her before, right? 771 00:39:51.160 --> 00:39:54.640 We could, right when she started, Paula? 772 00:39:54.640 --> 00:39:56.400 There we go. 773 00:39:56.400 --> 00:39:58.000 It's registering. 774 00:39:58.000 --> 00:39:59.100 Try that again, Paula. 775 00:40:00.000 --> 00:40:20.160 We might have to do is have you dial in by phone if it doesn't work. 776 00:40:20.160 --> 00:40:21.160 Yeah. 777 00:40:21.160 --> 00:40:22.160 Oh, yeah. 778 00:40:22.160 --> 00:40:23.160 We got you. 779 00:40:23.160 --> 00:40:24.160 There it is. 780 00:40:24.160 --> 00:40:25.160 Praise God. 781 00:40:25.160 --> 00:40:26.160 That's awesome. 782 00:40:26.160 --> 00:40:27.160 Yeah. 783 00:40:27.160 --> 00:40:28.160 Thanks. 784 00:40:28.160 --> 00:40:29.160 Sorry about that. 785 00:40:29.160 --> 00:40:33.160 I mean, if it was in this pandemic, we'd have figured out Zoom, but it happens every time 786 00:40:33.160 --> 00:40:34.160 where there's a glitch. 787 00:40:34.160 --> 00:40:35.880 So my apologies for that. 788 00:40:35.880 --> 00:40:39.520 I'm glad we're live and direct and you can hear me. 789 00:40:39.520 --> 00:40:41.120 So thank you so much, Peter. 790 00:40:41.120 --> 00:40:43.400 Thank you for your kind words. 791 00:40:43.400 --> 00:40:44.400 So sweet. 792 00:40:44.400 --> 00:40:49.200 And I'm so delighted to be here and hopefully give you a little bit of useful information 793 00:40:49.200 --> 00:40:52.600 on the Canadian trademark process. 794 00:40:52.600 --> 00:40:58.640 So for those of you who are becoming familiar with the US trademark process, Canada's process 795 00:40:58.640 --> 00:41:00.560 is very similar. 796 00:41:00.560 --> 00:41:07.680 So there's going to be a lot of things that are identical in terms of the stages of prosecution 797 00:41:07.680 --> 00:41:14.240 through to registration, the term of registration, the types of things that the office will object 798 00:41:14.240 --> 00:41:21.760 to, just like Peter showed you in terms of preliminary searches that can be done on the 799 00:41:21.760 --> 00:41:24.640 Canadian trademark office database. 800 00:41:24.640 --> 00:41:30.240 And if you Google SIPO trademark database, SIPO standing for Canadian Intellectual Property 801 00:41:30.240 --> 00:41:36.480 Office, and Larissa, maybe you want to just put that in the chat, SIPO trademark database. 802 00:41:36.480 --> 00:41:42.640 If you Google that, you will land on the Canadian trademark database and you can run some preliminary 803 00:41:42.640 --> 00:41:43.640 searches. 804 00:41:43.640 --> 00:41:51.240 Now, as Peter mentioned, the search functionality of these publicly facing databases is very 805 00:41:51.240 --> 00:41:52.240 limited. 806 00:41:52.240 --> 00:41:57.640 So it's fantastic for ruling out obvious obstacles, but once you've narrowed it down to your top 807 00:41:57.640 --> 00:42:04.440 one to three marks, it's a good idea to have a trademark professional help you just determine 808 00:42:04.440 --> 00:42:08.400 that there's not going to be any issues with your trademark. 809 00:42:08.400 --> 00:42:15.040 So I'm going to just tell you a little bit more in detail about the Canadian system. 810 00:42:15.040 --> 00:42:20.000 One thing that's important to keep in mind is that Canada and the US are each other's 811 00:42:20.000 --> 00:42:21.680 largest trading partners. 812 00:42:21.680 --> 00:42:26.800 So many of the channels of trade that you have in the United States are similar if not 813 00:42:26.800 --> 00:42:28.680 identical in Canada. 814 00:42:28.680 --> 00:42:34.040 So if you're thinking of protecting your trademark in Canada or in the US, it makes sense to 815 00:42:34.040 --> 00:42:36.600 protect it in both jurisdictions. 816 00:42:36.600 --> 00:42:41.440 And that way you have all of North America locked down, so to speak, once you eventually 817 00:42:41.440 --> 00:42:44.120 get the registration. 818 00:42:44.120 --> 00:42:50.720 Oftentimes companies in Canada will think only of their Canadian trademark application 819 00:42:50.760 --> 00:42:53.080 and will forget the US. 820 00:42:53.080 --> 00:42:57.440 And then what happens is three, four, five years later, as they grow in Canada and wish 821 00:42:57.440 --> 00:43:03.000 to expand, they find out that the mark is no longer available in the US and vice versa. 822 00:43:03.000 --> 00:43:05.200 The same thing can happen for American companies. 823 00:43:05.200 --> 00:43:10.240 So it's a really good idea to be thinking of both jurisdictions. 824 00:43:10.240 --> 00:43:16.200 And that way you get a good geographic coverage throughout all of North America with the exclusion 825 00:43:16.200 --> 00:43:25.080 of Mexico, but really good coverage in jurisdictions that tend to do huge amounts of business together. 826 00:43:25.080 --> 00:43:28.600 So it's something to keep in mind. 827 00:43:28.600 --> 00:43:34.080 Canada is also a relatively inexpensive jurisdiction vis-a-vis the United States. 828 00:43:34.080 --> 00:43:40.480 So the USPTO charges, I believe, and Peter, correct me if I'm wrong, I think it's 275 829 00:43:40.480 --> 00:43:43.840 US per class of goods and services. 830 00:43:43.840 --> 00:43:48.120 In Canada, each additional class is 101. 831 00:43:48.120 --> 00:43:53.240 It's a very odd number, 101.80, very Canadian number. 832 00:43:53.240 --> 00:43:56.240 I don't know why we took it down to the cents, but we did. 833 00:43:56.240 --> 00:43:58.400 And that's the official fee for additional classes. 834 00:43:58.400 --> 00:44:01.440 So the first class is 335. 835 00:44:01.440 --> 00:44:09.640 And then any additional class is $100 Canadian, which in US dollars is about $80. 836 00:44:09.640 --> 00:44:12.200 So it's far less expensive. 837 00:44:12.200 --> 00:44:14.400 There's no registration fee on top of that. 838 00:44:14.400 --> 00:44:16.520 So in terms of official fees, that's about it. 839 00:44:16.520 --> 00:44:21.880 So if you're an American company, it absolutely makes sense to think of Canada, especially 840 00:44:21.880 --> 00:44:26.480 because it's not prohibitive from a cost perspective. 841 00:44:26.480 --> 00:44:31.000 One thing you should keep in mind is that Canada, like the US, is also a common law 842 00:44:31.000 --> 00:44:36.240 jurisdiction, which means that trademark rights derive from use. 843 00:44:36.240 --> 00:44:42.480 So even if a mark does not appear on that SEPO trademark database, there could be someone 844 00:44:42.480 --> 00:44:50.000 out there with better rights to a trademark by virtue of having used the trademark first. 845 00:44:50.000 --> 00:44:55.840 So that's what a trademark professional can help you with, is in conducting searches, 846 00:44:55.840 --> 00:45:00.000 we normally do run some common law searches just to see what trade names. 847 00:45:00.000 --> 00:45:03.180 they're in use out there, what domain names are active, 848 00:45:03.180 --> 00:45:07.320 what internet references for the mark are found 849 00:45:07.320 --> 00:45:08.160 and that sort of thing. 850 00:45:08.160 --> 00:45:12.840 So, yeah, that won't be an unfamiliar concept 851 00:45:12.840 --> 00:45:15.420 in terms of the common law rights. 852 00:45:15.420 --> 00:45:18.740 Some other jurisdictions like France, for example, 853 00:45:18.740 --> 00:45:22.460 they don't have this concept of common law rights. 854 00:45:22.460 --> 00:45:24.720 In France, your rights to a trademark 855 00:45:24.720 --> 00:45:27.000 derived from registration of the mark. 856 00:45:27.000 --> 00:45:30.580 So if you've used it and never bothered to protect it, 857 00:45:30.580 --> 00:45:32.860 you may lose your rights in the mark. 858 00:45:32.860 --> 00:45:36.580 But Canada and the US, the trademark right itself 859 00:45:36.580 --> 00:45:41.580 derives from use and so that you could encounter 860 00:45:41.860 --> 00:45:45.020 prior unregistered users that could be problematic. 861 00:45:45.020 --> 00:45:47.620 And we've seen that a few times in the US as well 862 00:45:47.620 --> 00:45:51.100 for some Canadian clients where someone, you know, 863 00:45:51.100 --> 00:45:52.620 crept up out of the woodwork and said, 864 00:45:52.620 --> 00:45:56.080 hey, I've been using this mark in California 865 00:45:56.080 --> 00:45:58.400 and I'm gonna oppose your application 866 00:45:58.400 --> 00:45:59.560 because I have better rights. 867 00:45:59.560 --> 00:46:00.840 So keep that in mind. 868 00:46:00.840 --> 00:46:04.400 Canada is very similar to the US on that front. 869 00:46:04.400 --> 00:46:06.920 Just for a minute, I just wanna jump in here. 870 00:46:06.920 --> 00:46:08.960 So yesterday, remember yesterday, 871 00:46:08.960 --> 00:46:11.600 how much time we spent on this very issue? 872 00:46:11.600 --> 00:46:13.060 This is exactly why. 873 00:46:13.960 --> 00:46:17.160 Canada is very similar to the United States in this area. 874 00:46:17.160 --> 00:46:19.480 So just like we went through with the example 875 00:46:19.480 --> 00:46:21.200 with John yesterday, 876 00:46:21.260 --> 00:46:23.980 if there are certain trademarks that you've been using 877 00:46:23.980 --> 00:46:26.260 and a person sends you a cease and desist letter, 878 00:46:26.260 --> 00:46:28.900 don't freak out, get the analysis done. 879 00:46:28.900 --> 00:46:31.340 It may be that you can continue using it. 880 00:46:31.340 --> 00:46:34.940 I just posted this morning in the Facebook group, 881 00:46:34.940 --> 00:46:39.940 a specific example of a company that makes burgers 882 00:46:40.060 --> 00:46:44.540 that was allowed to continue using the trademark 883 00:46:44.540 --> 00:46:48.300 that is being used by a monstrous conglomerate corporation 884 00:46:48.300 --> 00:46:49.580 that we all know about. 885 00:46:49.580 --> 00:46:50.620 I'm not gonna say who it is. 886 00:46:51.040 --> 00:46:52.040 So everybody go in the Facebook group 887 00:46:52.040 --> 00:46:53.680 and watch the video, all right? 888 00:46:53.680 --> 00:46:56.420 It's an actual case, federal district court case, 889 00:46:56.420 --> 00:47:00.320 and they won against this monster that we all know about. 890 00:47:00.320 --> 00:47:02.300 It's a very important issue. 891 00:47:02.300 --> 00:47:03.720 The other part I wanted to just raise, 892 00:47:03.720 --> 00:47:06.220 Paula, just thank you so much for mentioning this. 893 00:47:07.520 --> 00:47:11.600 You can actually have professional trademark searches done. 894 00:47:11.600 --> 00:47:14.060 Okay, so in those professional searches, 895 00:47:14.060 --> 00:47:17.720 they'll actually search for common law usages as well. 896 00:47:17.720 --> 00:47:19.960 So when you're searching on the USPTO website, 897 00:47:19.980 --> 00:47:22.680 when you're searching on the SEPA website, 898 00:47:22.680 --> 00:47:24.780 what you're actually gonna be looking at 899 00:47:25.640 --> 00:47:28.460 are federally registered trademarks, 900 00:47:28.460 --> 00:47:30.640 but also trademark applications. 901 00:47:30.640 --> 00:47:33.460 Well, what about things that kind of sound similar, 902 00:47:33.460 --> 00:47:35.880 like if they're fanatic equivalents? 903 00:47:35.880 --> 00:47:38.060 Sometimes they get picked up in searches 904 00:47:38.060 --> 00:47:39.800 and sometimes they don't. 905 00:47:39.800 --> 00:47:41.480 But one of the things that you consider 906 00:47:41.480 --> 00:47:43.520 in determining if there's a likelihood of confusion 907 00:47:43.520 --> 00:47:46.700 is does it sound the same, right? 908 00:47:46.700 --> 00:47:47.860 Does it look the same? 909 00:47:47.860 --> 00:47:49.820 Those are two of the factors we just talked about 910 00:47:50.680 --> 00:47:51.640 for likelihood of confusion. 911 00:47:51.640 --> 00:47:53.800 So if you're searching for the word, 912 00:47:53.800 --> 00:47:57.220 let's say PAIR, P-E-A-R, 913 00:47:57.220 --> 00:48:01.280 but somebody has a federal registration for PAIR, P-A-I-R, 914 00:48:01.280 --> 00:48:03.720 will they sound the same even though they look different? 915 00:48:03.720 --> 00:48:06.300 There may be a likelihood of confusion or there may not be. 916 00:48:06.300 --> 00:48:07.920 You need to know. 917 00:48:07.920 --> 00:48:11.900 And this is why a fanatic equivalent search is important. 918 00:48:11.900 --> 00:48:15.280 But even further, you may not be aware of people, 919 00:48:15.280 --> 00:48:18.120 a mom and dad, a mom and pop shop 920 00:48:18.120 --> 00:48:20.620 that's using the name that you're interested in. 921 00:48:20.620 --> 00:48:25.620 Those things may come up in an actual professional search 922 00:48:25.820 --> 00:48:28.780 by, as an example, Thompson Reuters, 923 00:48:28.780 --> 00:48:31.020 like a Syrian search that they do. 924 00:48:31.020 --> 00:48:32.980 And I'll post that in the Facebook group tonight 925 00:48:32.980 --> 00:48:34.380 for you as well. 926 00:48:34.380 --> 00:48:36.340 So you can know who you can actually hire 927 00:48:36.340 --> 00:48:38.260 to get a professional search done. 928 00:48:38.260 --> 00:48:39.420 So what I've been teaching you 929 00:48:39.420 --> 00:48:41.700 is how to do a quick knockout search 930 00:48:41.700 --> 00:48:44.420 to bring it down to the things that are most important 931 00:48:44.420 --> 00:48:47.540 so you're not spending $800 a pop 932 00:48:47.540 --> 00:48:49.360 for an official search. 933 00:48:49.360 --> 00:48:51.960 You're only spending nothing. 934 00:48:51.960 --> 00:48:53.760 You're actually spending nothing 935 00:48:53.760 --> 00:48:56.040 to knock it down from 10 to three. 936 00:48:56.040 --> 00:48:58.840 Then you can do your official searches on the three 937 00:48:58.840 --> 00:49:01.120 and pick the one or two that you're most interested in 938 00:49:01.120 --> 00:49:02.840 and then go to your attorneys. 939 00:49:02.840 --> 00:49:05.640 See, what I'm trying to do is not knock out the attorney. 940 00:49:05.640 --> 00:49:07.640 What I'm trying to do is make you use the attorneys 941 00:49:07.640 --> 00:49:09.600 the way they should be used. 942 00:49:09.600 --> 00:49:12.600 You don't wanna go to attorneys to speculate. 943 00:49:12.600 --> 00:49:14.600 Attorneys are great at speculation. 944 00:49:14.600 --> 00:49:16.840 They will tell you everything 945 00:49:16.840 --> 00:49:19.160 that is potentially related to your situation. 946 00:49:19.160 --> 00:49:21.440 You wanna go with a specific issue. 947 00:49:21.440 --> 00:49:22.400 This is what I want. 948 00:49:22.400 --> 00:49:23.240 This is what I need. 949 00:49:23.240 --> 00:49:24.160 This is the terminology. 950 00:49:24.160 --> 00:49:26.140 Now they know what to focus on. 951 00:49:26.140 --> 00:49:28.200 That makes them more effective for you 952 00:49:28.200 --> 00:49:31.440 and decrease your cost and makes it so that quite frankly, 953 00:49:31.440 --> 00:49:33.000 you're gonna do better in the long run. 954 00:49:33.000 --> 00:49:34.180 So Paula, sorry for that. 955 00:49:34.180 --> 00:49:35.020 I just wanted to share that. 956 00:49:35.020 --> 00:49:36.160 No, that's absolutely right. 957 00:49:36.160 --> 00:49:39.060 And the more due diligence you could do at your end 958 00:49:39.060 --> 00:49:41.160 in advance, the better position 959 00:49:41.160 --> 00:49:43.400 and the more you'll have a sense of the market. 960 00:49:43.600 --> 00:49:47.760 And as Peter said, when you go to the lawyer to seek advice, 961 00:49:47.760 --> 00:49:51.200 it'll be far less expensive and you will be better prepared 962 00:49:51.200 --> 00:49:54.040 because you will have a good sense of what's out there. 963 00:49:54.040 --> 00:49:55.600 And then you'll just need the lawyer to do 964 00:49:55.600 --> 00:49:57.360 like the in-depth analysis. 965 00:49:57.360 --> 00:49:59.760 The search houses that Peter talked about have. 966 00:50:00.000 --> 00:50:04.440 really sophisticated algorithms that'll find, 967 00:50:04.440 --> 00:50:07.280 I mean, there's always limitations. 968 00:50:07.280 --> 00:50:09.400 They can't rule out all risks, 969 00:50:09.400 --> 00:50:12.440 but they are very in-depth searches. 970 00:50:12.440 --> 00:50:16.120 And so that you can eliminate a vast majority of the risks 971 00:50:16.120 --> 00:50:19.160 by running these in-depth professional searches. 972 00:50:19.160 --> 00:50:21.760 But again, you don't wanna do 10 of those. 973 00:50:21.760 --> 00:50:24.080 If you can knock out some marks in advance, 974 00:50:24.080 --> 00:50:26.800 better to do so with your own due diligence. 975 00:50:26.800 --> 00:50:29.120 And then by searching, you kind of get a sense of, 976 00:50:29.120 --> 00:50:31.720 there's a lot of usage out there of something. 977 00:50:31.720 --> 00:50:33.720 Do you really wanna adopt it as a trademark? 978 00:50:33.720 --> 00:50:36.120 Or is it almost to the point where it's become generic? 979 00:50:36.120 --> 00:50:39.440 And those are things that you can learn 980 00:50:39.440 --> 00:50:41.560 from you doing your due diligence. 981 00:50:41.560 --> 00:50:42.400 Right. 982 00:50:42.400 --> 00:50:44.440 So Paula, what would you say like, 983 00:50:44.440 --> 00:50:46.880 when you're comparing US law and Canadian law, 984 00:50:46.880 --> 00:50:49.520 what would you say if you wanted to say, 985 00:50:49.520 --> 00:50:52.160 well, Canada has this, the US doesn't have that. 986 00:50:52.160 --> 00:50:54.240 Is there anything in particular that you would say, 987 00:50:54.240 --> 00:50:56.600 this is definitely different, you should know about? 988 00:50:56.600 --> 00:50:59.720 I know the timeline issue is one thing that's major, 989 00:50:59.720 --> 00:51:01.680 but is there, maybe you can talk about that 990 00:51:01.680 --> 00:51:03.440 and if there's anything else there. 991 00:51:06.040 --> 00:51:07.200 Oh, she got muted. 992 00:51:11.320 --> 00:51:12.160 Has to unmute. 993 00:51:12.160 --> 00:51:13.960 All right, try it now. 994 00:51:13.960 --> 00:51:14.880 There we go. 995 00:51:14.880 --> 00:51:16.840 For some reason I was muted. 996 00:51:16.840 --> 00:51:17.680 Okay, yeah. 997 00:51:17.680 --> 00:51:19.600 So definitely now I'm gonna let you know 998 00:51:19.600 --> 00:51:20.880 about some of the differences. 999 00:51:20.880 --> 00:51:23.440 So the first key difference, 1000 00:51:23.440 --> 00:51:26.320 and this is what Peter alluded to, is the timeframe. 1001 00:51:27.040 --> 00:51:27.880 In the United States, 1002 00:51:27.880 --> 00:51:30.560 you could probably get from application to registration 1003 00:51:30.560 --> 00:51:33.000 in what, about a year, maybe a little over a year? 1004 00:51:33.000 --> 00:51:34.200 Yeah, it's about a year. 1005 00:51:34.200 --> 00:51:39.200 Yeah, in Canada, it is taking three plus years, 1006 00:51:39.200 --> 00:51:42.240 maybe three and a half years to get to examination. 1007 00:51:42.240 --> 00:51:44.720 So it is a huge delay 1008 00:51:44.720 --> 00:51:47.720 before you will get your registered trademark. 1009 00:51:47.720 --> 00:51:49.600 So that's something to keep in mind. 1010 00:51:49.600 --> 00:51:52.520 And then that actually adds value to your searches 1011 00:51:52.520 --> 00:51:54.680 because you don't wanna find out three and a half years 1012 00:51:54.680 --> 00:51:57.160 from now that you have a problem with your trademark 1013 00:51:57.160 --> 00:52:00.200 after you've spent all kinds of money promoting your brand, 1014 00:52:00.200 --> 00:52:03.000 buying up social media handles and domain names 1015 00:52:03.000 --> 00:52:05.800 and this and that, and creating goodwill 1016 00:52:05.800 --> 00:52:07.960 only to find out you're gonna have a problem. 1017 00:52:07.960 --> 00:52:10.720 And that's one of the big issues for brand owners 1018 00:52:10.720 --> 00:52:12.320 with the Canadian delays right now. 1019 00:52:12.320 --> 00:52:14.720 And those are caused by a number of factors. 1020 00:52:14.720 --> 00:52:16.680 Of course, the pandemic was one of them. 1021 00:52:16.680 --> 00:52:18.960 SEPA was primarily a paper office, 1022 00:52:18.960 --> 00:52:21.080 unlike the USPTO, which was paperless. 1023 00:52:21.080 --> 00:52:24.080 So it was particularly hard hit by the pandemic 1024 00:52:24.080 --> 00:52:28.400 when everyone had to go and work remotely without paper. 1025 00:52:28.400 --> 00:52:31.360 I mean, it was just a bit of a gong show 1026 00:52:31.360 --> 00:52:33.320 at the SEPA offices. 1027 00:52:33.320 --> 00:52:36.160 On top of that, in 2019, 1028 00:52:36.160 --> 00:52:40.560 Canada went through a major change in its laws, 1029 00:52:40.560 --> 00:52:43.360 which required administrative changes 1030 00:52:43.360 --> 00:52:45.520 and retraining of examiners and that sort of thing. 1031 00:52:45.520 --> 00:52:47.520 So keep in mind that in Canada, 1032 00:52:47.520 --> 00:52:48.800 it's taking a long time 1033 00:52:48.800 --> 00:52:51.560 to obtain registered trademark rights. 1034 00:52:52.520 --> 00:52:54.640 The other thing, and this is not too different 1035 00:52:54.640 --> 00:52:55.640 from the United States, 1036 00:52:55.640 --> 00:52:59.280 but SEPA is even more particular than the USPTO 1037 00:52:59.280 --> 00:53:02.640 in terms of requiring specificity of goods and services. 1038 00:53:02.640 --> 00:53:07.640 So in the USPTO, the examiners will often raise issues 1039 00:53:07.840 --> 00:53:09.040 with the description of goods 1040 00:53:09.040 --> 00:53:13.560 if they're not narrowly defined or specifically defined. 1041 00:53:13.560 --> 00:53:15.320 If you think it's bad in the US, 1042 00:53:15.320 --> 00:53:17.240 it's 10 times worse in Canada. 1043 00:53:17.240 --> 00:53:21.040 That's the most common type of objection that is raised 1044 00:53:22.000 --> 00:53:24.360 that the goods are not in ordinary commercial terms 1045 00:53:24.360 --> 00:53:25.840 or that they're too vague. 1046 00:53:25.840 --> 00:53:29.600 And for this, I would suggest you can avoid this issue 1047 00:53:29.600 --> 00:53:32.200 by going to the SEPA database again, 1048 00:53:32.200 --> 00:53:35.360 and it's called the Canadian Goods and Services Manual. 1049 00:53:35.360 --> 00:53:36.840 I understand the USPTO 1050 00:53:36.840 --> 00:53:40.680 has a similar Goods and Services Manual. 1051 00:53:40.680 --> 00:53:43.440 If you Google SEPA Goods and Services Manual, 1052 00:53:43.440 --> 00:53:47.640 you will see the list of pre-approved goods and services 1053 00:53:47.640 --> 00:53:52.280 that have been accepted by SEPA as acceptable descriptions. 1054 00:53:52.280 --> 00:53:56.080 Now, caution when using the manual is that the description... 1055 00:54:02.960 --> 00:54:05.000 Sorry, it must be me. 1056 00:54:05.000 --> 00:54:07.200 I'm pressing a button that mutes me. 1057 00:54:08.160 --> 00:54:10.520 Caution when using the Goods and Services Manual 1058 00:54:10.520 --> 00:54:12.800 because there's a lot of duplication 1059 00:54:13.440 --> 00:54:18.440 and there's descriptions that are unduly narrow 1060 00:54:18.440 --> 00:54:21.160 just because it's such a long list of goods and services. 1061 00:54:21.160 --> 00:54:22.720 So when reviewing that, 1062 00:54:22.720 --> 00:54:26.200 always try to pick the broader description. 1063 00:54:26.200 --> 00:54:29.680 If you can get away with athletic clothing, 1064 00:54:29.680 --> 00:54:33.960 use that description as opposed to shorts and shirts. 1065 00:54:33.960 --> 00:54:36.640 Athletic clothing is broader than shorts and shirts. 1066 00:54:36.640 --> 00:54:40.040 It could include any kind of clothing used for athletics. 1067 00:54:40.040 --> 00:54:44.840 So keep in mind that it's a play between you and the office. 1068 00:54:44.840 --> 00:54:47.280 You want to keep the scope of the description 1069 00:54:47.280 --> 00:54:48.880 as broad as possible 1070 00:54:48.880 --> 00:54:51.800 because it expands the scope of your registration 1071 00:54:51.800 --> 00:54:54.120 and the office is going to try to narrow you in. 1072 00:54:54.120 --> 00:54:55.400 So even when you're looking through 1073 00:54:55.400 --> 00:54:56.680 the Goods and Services Manual, 1074 00:54:56.680 --> 00:54:58.760 think along the lines of, 1075 00:54:58.760 --> 00:55:00.760 if it's in the manual, it's acceptable. 1076 00:55:00.000 --> 00:55:03.640 why not choose a broader description if it's available? 1077 00:55:04.820 --> 00:55:07.620 Yeah, just to elaborate upon what Paul is saying, 1078 00:55:07.620 --> 00:55:09.580 remember yesterday how I mentioned 1079 00:55:09.580 --> 00:55:12.960 you can't add new things, right? 1080 00:55:12.960 --> 00:55:14.500 Once you file a trademark application, 1081 00:55:14.500 --> 00:55:15.740 you can't add something new. 1082 00:55:15.740 --> 00:55:20.060 So you can't file for, let's say, high-heeled shoes, 1083 00:55:20.060 --> 00:55:21.180 and then all of a sudden say, 1084 00:55:21.180 --> 00:55:24.580 well, I wanna add hiking boots. 1085 00:55:24.580 --> 00:55:25.900 Like, you can't do that. 1086 00:55:25.900 --> 00:55:28.500 But if you file the application for shoes, 1087 00:55:28.500 --> 00:55:30.420 then by all means, you can narrow it down 1088 00:55:30.420 --> 00:55:33.300 to hiking boots and to high-heeled shoes. 1089 00:55:33.300 --> 00:55:35.740 So that's why you have to be very careful 1090 00:55:35.740 --> 00:55:37.500 when you file your trademark applications, 1091 00:55:37.500 --> 00:55:40.740 which we're doing in the VIP very shortly. 1092 00:55:40.740 --> 00:55:42.140 You have to be careful 1093 00:55:42.140 --> 00:55:44.960 when you choose your recitation of goods and services. 1094 00:55:44.960 --> 00:55:47.400 If you make it so narrow in your initial filing, 1095 00:55:47.400 --> 00:55:50.760 you may have pigeonholed yourself so tightly 1096 00:55:50.760 --> 00:55:53.540 that something that's related you can't get. 1097 00:55:53.540 --> 00:55:56.140 So what happens is you end up having to file 1098 00:55:56.140 --> 00:55:58.780 a whole new trademark application. 1099 00:55:58.780 --> 00:56:03.080 Even though it's the same name and it's related goods, 1100 00:56:03.080 --> 00:56:04.860 those goods are not covered. 1101 00:56:04.860 --> 00:56:06.980 So therefore, you're filing another application 1102 00:56:06.980 --> 00:56:10.620 for the same name, same international classification, 1103 00:56:10.620 --> 00:56:12.680 but you have to add this one good. 1104 00:56:12.680 --> 00:56:17.320 Because you said handbags instead of backpacks. 1105 00:56:17.320 --> 00:56:20.580 Like, it's just, why not just say bags? 1106 00:56:20.580 --> 00:56:23.140 And then you can say, go ahead, Paula. 1107 00:56:23.140 --> 00:56:23.980 No, I was just gonna say, 1108 00:56:23.980 --> 00:56:28.540 one example that I always like to give clients is, 1109 00:56:28.540 --> 00:56:29.380 because in Canada, 1110 00:56:29.380 --> 00:56:31.540 summary cancellation proceedings are available. 1111 00:56:31.540 --> 00:56:34.300 And I'll get into that in a little bit, just very briefly. 1112 00:56:34.300 --> 00:56:37.420 But registered trademarks, if they're not in use, 1113 00:56:37.420 --> 00:56:39.740 they can be challenged and canceled. 1114 00:56:39.740 --> 00:56:42.780 So you have to make sure you continue to use your mark. 1115 00:56:42.780 --> 00:56:45.400 One case that came before the opposition board, 1116 00:56:45.400 --> 00:56:46.940 it was a cancellation action. 1117 00:56:46.940 --> 00:56:49.360 The applicant or the registrant in that case 1118 00:56:49.360 --> 00:56:53.140 had claimed roasted and raw sunflower seeds. 1119 00:56:53.180 --> 00:56:56.260 They could show use in relation to roasted sunflower seeds, 1120 00:56:56.260 --> 00:56:58.220 but not raw sunflower seeds. 1121 00:56:58.220 --> 00:57:01.100 So the trademark registration was partially canceled. 1122 00:57:01.100 --> 00:57:04.780 If they had claimed sunflower seeds or seeds, 1123 00:57:04.780 --> 00:57:06.020 they wouldn't have had this issue. 1124 00:57:06.020 --> 00:57:09.500 So keep in mind that you can be the author 1125 00:57:09.500 --> 00:57:13.020 of your own misfortune if you select goods 1126 00:57:13.020 --> 00:57:14.820 that are descriptions that are too narrow. 1127 00:57:14.820 --> 00:57:17.740 And as Peter said, once the application is filed, 1128 00:57:17.740 --> 00:57:19.580 you cannot expand the scope of goods. 1129 00:57:19.580 --> 00:57:21.760 So sure, you can file a fresh application, 1130 00:57:21.760 --> 00:57:22.620 additional costs. 1131 00:57:22.620 --> 00:57:24.760 Now you have two registrations to maintain, 1132 00:57:24.760 --> 00:57:26.560 to renew, to monitor. 1133 00:57:26.560 --> 00:57:29.240 So it's better to be as inclusive as possible. 1134 00:57:29.240 --> 00:57:33.040 Now, this leads me to an important difference in Canada 1135 00:57:33.040 --> 00:57:35.640 between the USPTO and SIPO. 1136 00:57:35.640 --> 00:57:39.940 In Canada, you do not need to file specimens of use. 1137 00:57:39.940 --> 00:57:43.520 You do not need to declare whether your mark has been used 1138 00:57:43.520 --> 00:57:45.760 or whether you have an intention to use. 1139 00:57:45.760 --> 00:57:50.760 In Canada, that is no longer necessary since 2019. 1140 00:57:52.280 --> 00:57:53.360 What does this mean? 1141 00:57:53.360 --> 00:57:55.920 This means that you should be forward thinking. 1142 00:57:55.920 --> 00:57:59.640 Even if you haven't started using your mark in Canada 1143 00:57:59.640 --> 00:58:01.880 in relation to certain goods or services, 1144 00:58:01.880 --> 00:58:04.560 you might as well include it in the application. 1145 00:58:04.560 --> 00:58:07.760 You're not gonna be required to show a specimen of use. 1146 00:58:07.760 --> 00:58:10.620 You're not gonna be required to file a declaration 1147 00:58:10.620 --> 00:58:13.080 or a sworn statement of use. 1148 00:58:13.080 --> 00:58:15.940 You can merely have an intention to use the mark 1149 00:58:15.940 --> 00:58:17.640 and that's sufficient for the purposes 1150 00:58:17.640 --> 00:58:19.740 of getting the mark registered. 1151 00:58:19.740 --> 00:58:21.780 Now, once it's registered, 1152 00:58:21.780 --> 00:58:24.380 if you're not using your trademark 1153 00:58:24.380 --> 00:58:27.020 in relation to those additional goods and services, 1154 00:58:27.020 --> 00:58:29.020 it could be challenged, like I mentioned, 1155 00:58:29.020 --> 00:58:32.180 with cancellation proceedings, which are summary in nature, 1156 00:58:32.180 --> 00:58:34.500 and you might lose those goods. 1157 00:58:34.500 --> 00:58:36.780 These challenges can only be raised 1158 00:58:36.780 --> 00:58:39.900 after the third anniversary from the date of registration. 1159 00:58:39.900 --> 00:58:42.540 So your registration could be challenged 1160 00:58:42.540 --> 00:58:44.620 if you're not using, but at the same time, 1161 00:58:44.620 --> 00:58:47.900 you're better to be forward thinking at the time of filing, 1162 00:58:48.220 --> 00:58:49.860 especially since it's taking so long 1163 00:58:49.860 --> 00:58:51.420 to get to registration in Canada, 1164 00:58:51.420 --> 00:58:54.620 and say, what kinds of goods and services 1165 00:58:54.620 --> 00:58:58.140 could I possibly expand into in the next, 1166 00:58:58.140 --> 00:58:59.740 call it five years, 1167 00:58:59.740 --> 00:59:02.980 and then include those in the application. 1168 00:59:02.980 --> 00:59:06.420 So try to be as broad and comprehensive as possible. 1169 00:59:06.420 --> 00:59:10.020 Okay, so this issue that Paula just raised, 1170 00:59:10.020 --> 00:59:11.780 and I think I'm gonna close on this, 1171 00:59:11.780 --> 00:59:14.020 and then we can go into the VIP after. 1172 00:59:14.020 --> 00:59:15.300 For those who are in VIP, 1173 00:59:15.300 --> 00:59:18.300 you can ask directly Paula specific questions 1174 00:59:18.300 --> 00:59:19.620 with regard to your companies 1175 00:59:19.620 --> 00:59:24.100 and whatever you're trying to understand. 1176 00:59:24.100 --> 00:59:27.700 But this one issue that she's talking about, 1177 00:59:27.700 --> 00:59:31.540 very different from the United States, very different. 1178 00:59:31.540 --> 00:59:34.460 In the United States, you don't get a registration 1179 00:59:34.460 --> 00:59:39.460 unless you're actually using every single good or service 1180 00:59:39.700 --> 00:59:42.220 that's listed within your recitation of goods and services. 1181 00:59:42.220 --> 00:59:44.780 That's the only way you can get a registration. 1182 00:59:45.220 --> 00:59:47.300 If you go and you say, well, I'm already using it, 1183 00:59:47.300 --> 00:59:48.140 but you're not, 1184 00:59:48.140 --> 00:59:50.620 you're actually committing a federal offense. 1185 00:59:50.620 --> 00:59:51.740 You're lying. 1186 00:59:51.740 --> 00:59:53.580 Because in your declaration that you filed 1187 00:59:53.580 --> 00:59:55.340 with the United States Patent and Trademark Office, 1188 00:59:55.340 --> 00:59:58.460 you're stating that you're using that trademark 1189 00:59:58.460 --> 01:00:00.100 for every single good. 1190 01:00:00.000 --> 01:00:02.880 it in every single service that is listed. 1191 01:00:02.880 --> 01:00:06.320 So if you follow section 1B, intent to use application, 1192 01:00:06.320 --> 01:00:08.040 which we talked about yesterday, 1193 01:00:08.040 --> 01:00:09.840 which we talked about a little bit today, 1194 01:00:09.840 --> 01:00:12.720 and Paula actually highlighted that as well, 1195 01:00:12.720 --> 01:00:14.900 you're seeing how important this is. 1196 01:00:14.900 --> 01:00:16.760 So if you follow an intent to use application 1197 01:00:16.760 --> 01:00:17.700 in the United States, 1198 01:00:17.700 --> 01:00:21.800 you cannot change that into an actual registration 1199 01:00:21.800 --> 01:00:26.060 or turn it into an actual use application under section 1A 1200 01:00:26.060 --> 01:00:29.020 until you actually start using it, right? 1201 01:00:29.020 --> 01:00:32.740 So that means you will have a pending, 1202 01:00:32.740 --> 01:00:37.060 allowed yet not registered section 1B 1203 01:00:37.060 --> 01:00:39.420 intent to use application 1204 01:00:39.420 --> 01:00:42.460 until you change that into an actual use application. 1205 01:00:42.460 --> 01:00:44.580 So you have to use it on every single good, 1206 01:00:44.580 --> 01:00:45.940 every single service. 1207 01:00:45.940 --> 01:00:48.520 When you do that, you get the registration in the US. 1208 01:00:48.520 --> 01:00:50.420 Canada, different. 1209 01:00:50.420 --> 01:00:53.580 Canada, you can get your registration to go through. 1210 01:00:53.580 --> 01:00:57.600 Now, you may not have used it yet on handbags. 1211 01:00:57.600 --> 01:01:00.160 So somebody who wants to use that trademark on handbags 1212 01:01:00.160 --> 01:01:02.240 may challenge it and say, hold it, 1213 01:01:02.240 --> 01:01:04.420 you're not using it on handbags. 1214 01:01:04.420 --> 01:01:06.880 And so once that's raised, Paula, 1215 01:01:06.880 --> 01:01:08.920 what happens if that actually happens? 1216 01:01:08.920 --> 01:01:11.460 If you're not using it on something 1217 01:01:11.460 --> 01:01:13.720 that's in your recitation of goods and it's challenged, 1218 01:01:13.720 --> 01:01:15.120 what would happen? 1219 01:01:15.120 --> 01:01:17.560 So you can either respond to the challenge 1220 01:01:17.560 --> 01:01:19.820 showing evidence of use or evidence 1221 01:01:19.820 --> 01:01:22.840 as to why the mark was not used in relation to handbags. 1222 01:01:22.840 --> 01:01:24.640 And it can't just be what we didn't get around to. 1223 01:01:24.640 --> 01:01:27.680 It has to be some extraordinary circumstances 1224 01:01:27.680 --> 01:01:29.640 to justify non-use, 1225 01:01:29.640 --> 01:01:33.200 or you can just agree to strike it from your registration 1226 01:01:33.200 --> 01:01:36.520 and then keep it simple and less costs. 1227 01:01:36.520 --> 01:01:39.120 So you can defend it, or you can just, 1228 01:01:39.120 --> 01:01:41.560 either way, even if you don't take action, 1229 01:01:41.560 --> 01:01:43.640 if you don't show evidence of use, 1230 01:01:43.640 --> 01:01:46.460 the office will strike those goods from your registration 1231 01:01:46.460 --> 01:01:49.760 if you have not made the effort to establish use. 1232 01:01:49.760 --> 01:01:51.680 So, I mean, use isn't, 1233 01:01:51.680 --> 01:01:53.040 I don't want you to get the impression 1234 01:01:53.040 --> 01:01:55.600 that use is not important in Canada. 1235 01:01:55.600 --> 01:01:58.100 It is important to maintain 1236 01:01:58.100 --> 01:02:00.440 and to give rise to trademark rights. 1237 01:02:00.440 --> 01:02:02.360 It's just no longer important 1238 01:02:02.360 --> 01:02:04.520 to get the registered trademark rights. 1239 01:02:04.520 --> 01:02:08.640 It used to be, but we eliminated that requirement in 2019 1240 01:02:08.640 --> 01:02:11.280 so that we no longer need to file a declaration. 1241 01:02:11.280 --> 01:02:13.960 So it wouldn't be a fraud on the register as it, 1242 01:02:13.960 --> 01:02:16.520 on the registrar as it would be in the US 1243 01:02:16.520 --> 01:02:18.520 because we don't have to file a declaration of use. 1244 01:02:18.520 --> 01:02:20.400 We don't have to attest to the fact 1245 01:02:20.400 --> 01:02:22.000 that the mark is in use in Canada 1246 01:02:22.000 --> 01:02:24.000 before we can proceed to registration. 1247 01:02:24.000 --> 01:02:26.360 So you might as well throw in everything 1248 01:02:26.360 --> 01:02:29.140 that you reasonably anticipate using 1249 01:02:29.140 --> 01:02:30.600 in relation to your mark, 1250 01:02:30.600 --> 01:02:32.520 and then, you know, you can withdraw, 1251 01:02:32.520 --> 01:02:34.760 you can delete it, you can always delete, 1252 01:02:34.760 --> 01:02:36.520 and you can always, you know, 1253 01:02:36.520 --> 01:02:38.480 wait and see if anyone challenges it. 1254 01:02:38.480 --> 01:02:39.320 But at least you end up with- 1255 01:02:39.320 --> 01:02:42.400 And again, the main reason for that, guys, 1256 01:02:42.400 --> 01:02:46.640 is it takes three years to get even examined. 1257 01:02:46.640 --> 01:02:49.960 So think about what you're going to be doing in the future. 1258 01:02:49.960 --> 01:02:52.960 Don't be skimpy on your Canadian trademark applications. 1259 01:02:52.960 --> 01:02:54.920 File for everything you think you're going to be doing 1260 01:02:54.920 --> 01:02:56.720 in the next three years or so. 1261 01:02:56.720 --> 01:02:58.280 And then if it gets to that point, 1262 01:02:58.280 --> 01:02:59.800 you're still going to get a registration. 1263 01:02:59.800 --> 01:03:01.080 And if somebody challenges it, 1264 01:03:01.080 --> 01:03:03.660 then you may have to withdraw that one good, 1265 01:03:03.660 --> 01:03:07.080 but chances are higher that within those three years, 1266 01:03:07.080 --> 01:03:08.360 you're going to be using it. 1267 01:03:08.360 --> 01:03:10.520 So you might as well get it in there upfront. 1268 01:03:10.520 --> 01:03:12.380 The United States, 1269 01:03:12.380 --> 01:03:14.200 that would be an intent to use application. 1270 01:03:14.200 --> 01:03:16.800 You're not going to get a registration 1271 01:03:16.800 --> 01:03:18.480 until you actually start using it. 1272 01:03:18.480 --> 01:03:20.200 Just remember that in the United States, 1273 01:03:20.200 --> 01:03:23.120 within one year, you can get a registration, 1274 01:03:23.120 --> 01:03:24.600 like within a year. 1275 01:03:24.600 --> 01:03:25.960 So for that reason, 1276 01:03:25.960 --> 01:03:29.200 if you're anticipating things three years out, 1277 01:03:30.060 --> 01:03:31.200 you might want to file that 1278 01:03:31.200 --> 01:03:33.080 in a separate intent to use application, 1279 01:03:33.080 --> 01:03:35.120 which is what we discussed yesterday. 1280 01:03:35.120 --> 01:03:37.880 These are my already used goods. 1281 01:03:37.880 --> 01:03:39.940 These are my intent to use goods. 1282 01:03:39.940 --> 01:03:41.280 As opposed to filing one 1283 01:03:41.280 --> 01:03:42.700 and then having to split them out 1284 01:03:42.700 --> 01:03:44.840 with a petition and all this other garbage, 1285 01:03:44.840 --> 01:03:46.520 you can file them in separate applications, 1286 01:03:46.520 --> 01:03:51.520 especially if it's a separate international classification. 1287 01:03:51.800 --> 01:03:52.640 Okay. 1288 01:03:53.560 --> 01:03:54.400 Does this make sense? 1289 01:03:54.400 --> 01:03:55.760 Is this helping you guys? 1290 01:03:55.760 --> 01:03:57.840 Is this, I see a lot of heads going up and down, 1291 01:03:57.840 --> 01:03:58.680 a lot of thumbs. 1292 01:03:58.680 --> 01:03:59.500 Fantastic. 1293 01:03:59.500 --> 01:04:00.340 All right. 1294 01:04:00.340 --> 01:04:01.400 Those are the major differences. 1295 01:04:01.400 --> 01:04:03.160 We're going to go into VIP now. 1296 01:04:03.160 --> 01:04:04.360 I know we went a little over here. 1297 01:04:04.360 --> 01:04:07.280 I just wanted to give you a little extra here. 1298 01:04:07.280 --> 01:04:09.260 Paula's going to answer your direct questions, 1299 01:04:09.260 --> 01:04:11.800 kind of give you some more feedback. 1300 01:04:11.800 --> 01:04:13.680 If you do not, 1301 01:04:13.680 --> 01:04:16.720 or if you're going to be doing business in Canada, 1302 01:04:16.720 --> 01:04:18.640 honestly, I would talk to her. 1303 01:04:18.640 --> 01:04:21.600 Just to be clear, I go to her first. 1304 01:04:21.600 --> 01:04:23.540 And I've been doing this a long time. 1305 01:04:23.540 --> 01:04:24.720 She's exceptional. 1306 01:04:24.720 --> 01:04:25.880 She's very good. 1307 01:04:25.880 --> 01:04:27.720 She doesn't bill you for absolutely nothing, 1308 01:04:27.720 --> 01:04:29.040 which is unfortunately something 1309 01:04:29.040 --> 01:04:31.560 that's characteristic of the legal field. 1310 01:04:31.560 --> 01:04:34.280 She's very much into kind of giving you a flat fee, 1311 01:04:34.280 --> 01:04:35.960 letting you know what's everything associated 1312 01:04:35.960 --> 01:04:37.600 with the project that you're working on, 1313 01:04:37.600 --> 01:04:40.160 which helps you to actually set up your business properly 1314 01:04:40.160 --> 01:04:42.280 as opposed to getting these miscellaneous, 1315 01:04:42.280 --> 01:04:43.800 I know John's going to agree with me, 1316 01:04:43.800 --> 01:04:48.800 0.2 here, 0.4 there, 0.7 there, 0.8 there, 1.2 there. 1317 01:04:49.000 --> 01:04:50.320 It can get annoying after a while. 1318 01:04:50.320 --> 01:04:51.640 It's better to have a good idea 1319 01:04:51.640 --> 01:04:53.560 of what you're going to pay beginning to end. 1320 01:04:53.560 --> 01:04:57.160 So I'm going to share her contact information. 1321 01:04:57.160 --> 01:04:58.480 Actually, I already did. 1322 01:04:58.480 --> 01:05:01.080 I put it in the Facebook group for you already, right? 1323 01:05:00.000 --> 01:05:01.920 Yeah, it's already there. 1324 01:05:01.920 --> 01:05:04.800 Awesome, thank you so much, Peter, really kind. 1325 01:05:04.800 --> 01:05:07.520 Absolutely, yeah, feel free to talk to her directly. 1326 01:05:07.520 --> 01:05:08.920 You don't even have to involve me. 1327 01:05:08.920 --> 01:05:10.100 Obviously you can if you want, 1328 01:05:10.100 --> 01:05:12.480 but that's just a free perk for all of you. 1329 01:05:12.480 --> 01:05:14.200 Hopefully it helps you out. 1330 01:05:14.200 --> 01:05:16.480 And with that, is this helping everybody? 1331 01:05:16.480 --> 01:05:18.240 Is everybody doing well? 1332 01:05:18.240 --> 01:05:21.400 Yeah, fantastic, that's awesome. 1333 01:05:21.400 --> 01:05:24.140 All right, so that's a close to day two of the challenge. 1334 01:05:24.140 --> 01:05:28.280 We are going into VIP in six minutes. 1335 01:05:28.320 --> 01:05:31.320 Go do whatever you do between then. 1336 01:05:31.320 --> 01:05:33.600 If you need to bring food with you into VIP, 1337 01:05:33.600 --> 01:05:36.400 you're welcome to bring the food into VIP. 1338 01:05:36.400 --> 01:05:39.560 Some of you have been asking, can I get into VIP? 1339 01:05:40.480 --> 01:05:43.520 Sure, we changed the rules so you can. 1340 01:05:43.520 --> 01:05:45.680 The recordings will be available for you as well 1341 01:05:45.680 --> 01:05:47.280 so you can see them later. 1342 01:05:47.280 --> 01:05:49.120 We dropped the link in here already 1343 01:05:49.120 --> 01:05:51.280 so you should be able to see the link here. 1344 01:05:51.280 --> 01:05:53.760 And with that, I'm gonna sign out. 1345 01:05:53.760 --> 01:05:56.080 Larissa, I can sign out and leave you here, right? 1346 01:05:57.000 --> 01:05:58.560 Because I want to prep for that group. 1347 01:05:58.560 --> 01:05:59.400 Okay. 1348 01:05:59.400 --> 01:06:00.240 Yep, absolutely. 1349 01:06:00.240 --> 01:06:01.060 Fantastic. 1350 01:06:01.060 --> 01:06:03.560 And Paula, I'll see you over there at 1.15, all right, Paul? 1351 01:06:03.560 --> 01:06:04.400 Sounds good. 1352 01:06:04.400 --> 01:06:05.240 All right, take care. 1353 01:06:05.240 --> 01:06:06.060 Bye, everybody, take care. 1354 01:06:06.060 --> 01:06:07.160 Bless all of you, take care. 1355 01:06:07.160 --> 01:06:08.000 See you, bye.