Yeah, so VIPers, we kind of alluded to this at the end of the last thing, but we do want
to help you protect you.
So as we talk in generalities, but you ask your questions, please don't drop links or
logos, pictures, or any specifics about your ideas, whether they are out there yet or not.
Just how we protect each other, because you've got God ideas and inspirations that we want
to make sure that are properly protected.
So keep it in general.
We'll get there.
Yeah. And the other thing is, like we mentioned, we don't provide legal advice here.
I know I joke around about that, but ethically, I'm not allowed to do that.
And so when I'm speaking with you, I'm talking in scenario situations or if I'm talking
about things usually in generalities and speaking about where the law is on certain
things. Like if we're talking about, I'm going to start using a name here and you're
going to start using a name there.
OK, well, common law versus federal.
But what we're not doing is saying my trademark is such and such.
See here on this, we use this, this and this.
Is that OK? I'll never answer that question because that's legal advice.
If you're in that situation, by all means, you can talk to me separately.
We can figure that out. But I'll never do that here because it'll hurt you because other
people will figure out what's going on in your own businesses.
And separate from that, it would end up being a situation where you don't have attorney
client privilege because I'm not your attorney.
And I'm not actually doing this to try to make everybody my client, although it tends
to be a lot of people come on board, but that's just because, you know, they just want
to do things like that. But the whole point of this being, I'm telling you scenarios,
I'm giving you ideas of how things play out with the law so you can understand that.
Then you can take those and go to your attorneys and confirm things.
Right. Because what I find 90 percent of the time is that on these kind of these kind of
reviews, you never hear the full story.
Somebody tells you, like, the scenario is really 10 minutes long and they give you 20
seconds and they say, what should I do?
That's like that's what happens every time.
It's like, hey, doc.
Yeah, my elbow hurts.
What should I do? Well, don't use it.
Like, I mean, like, seriously.
So it's going to be very often that I'm going to know what you're supposed to do, but we
don't provide any legal advice here.
We give guidance as to where the law is, though.
And so you should be able to figure out your scenarios based on that.
OK.
All right, well, I'm going to give it 30 more seconds and I'm jumping in.
Tani, I saw you on conference.
It was so good. Did you have a great time out there in Dallas?
I'm so glad you got to go.
And for those of you who aren't affiliated or familiar with the 100X community, many
are. So you're welcome to the Protect Your Idea Challenge family.
Peter is a lawyer, a host like none other, a teacher who cares about you, a father, a
brother. He mentioned being very protective earlier today.
So there's nothing normal about the law that goes on here.
It's it should be very fun, familiar.
And we're here to put you at ease about what you're going to learn.
This is like the best movie ever.
I know you're getting all technical there, but man, this movie is good.
All right, let's jump in.
I want to talk about a few things and then towards the end, I'll answer a few questions
as well. That protects IP globally.
Actually, I'll jump into Jackie's question.
OK, it's actually a really good question.
Is there anything that protects your IP rights globally?
So there's multiple areas of law that we're dealing with here, right?
So there's patents, trademarks, copyrights.
Right. And there's some crossover between trademarks and copyrights, which you'll learn
as we get to copyrights.
But in general, there's no such thing as a universal patent.
There's no such thing as a universal trademark.
You file one application, then you seek foreign filing under the Madrid protocol or you
do like a CTM application.
You'll learn more about this tomorrow.
But you file this one foreign application to designate lots of countries.
And then the results is that you then go into specific countries, but you don't have one
application that's.
everywhere. You can't just get one application that's literally
in every single country. Larissa, I'm going to text
something to you. Hold on one second, just so you can see. Let
me just send you a message.
Okay.
It's gonna make you laugh, but I just had to send that to you.
All right.
Okay, I was intently typing. Okay, I can tell I can tell.
All right. So
you're gonna have this. I'll stick this in there. It's
resting joy face. Resting joy face that we're all glad that we
have.
My gosh. All right. So on copyright, you would file
copyright application in the United States, you can file
copyright applications in foreign countries. And wherever
you want to obtain rights under trademarks, you can do different
things. You can do one trademark application in the United States
for all of the United States. But then what you can do is you
can do like I said, within six months, you can file a mature
protocol application to designate lots of different
countries, right and then go individually into specific
countries or you can within those six months file in the
countries that you want. So I file in the United States and
then say, you know what, I need legal rights in Japan. So it's
gonna have to turn into here gotta in Katakana. So everybody
can understand it. And I also need rights in Canada. Well,
then you can just file in Japan and in Canada. Now you're in VIP
guys. First of all, congratulations, all you guys
that took VIP because you guys are like implementing this stuff
already and you're hungry and you have scenarios. So I just
want to congratulate you guys for being here. I'm throwing in
Ray, don't get upset with me is right here.
What are you putting?
What are you doing?
Alright, so this is what we're gonna do.
More work for me now, guys.
No, no, no, it's no more. It's no work. All right. I want to
give everybody in VIP the ebook. Okay. I like to give them the
ebook. Okay. Okay. The seven IP issues. Okay, just give it to
them as a gift. Okay. I know we charge separate for that. But
just just give it to them. Okay.
That's not so bad. I can deal with that.
Yeah, that's an easy I told you it was an easy.
Alright, so you guys are going to be receiving in in in by
email, an ebook. It kind of breaks down this what I find are
the seven biggest mistakes that entrepreneurs are making in IP.
So it'll hit some trademark issues. I think it hits some
copyright and patent issues too. But they're basically the seven
biggest mistakes. So you should be able to look at now this
again, this is for you. It's not for distribution. You don't give
it to others. There's a gift to you just like the the bonus
chart is a gift to you as well. Okay. Do you guys like that?
That help you guys out? Good. Okay, cool. Awesome. All right.
I'm gonna I'm gonna drop a link for him. Just let me go grab it
and retrieve it. And I'll drop it here in the chat so that they
can. Yeah, sure. Okay, so foreign rights. If you're
trying to obtain rights in let's say Japan, you can file directly
there. Canada, you can file directly there. How do you find
the right foreign agent? Let's talk about that for a second.
Okay. Please, please don't Google like trademark filing
Mexico and then select whoever's running an ad. Please don't do
that. There is so much corruption in foreign countries
so much corruption. I don't want anybody getting in trouble here.
On anybody like surrendering funds to entities that they've
never heard of, you know, it's really important to use a
reputable firm. So what you should do what I would advise
that you do is find an attorney who is in the United States who
has agents throughout the world, and then work through them. Okay,
you don't know what you're doing. I don't care how smart
you are. If you haven't filed in Malaysia, and you don't realize
that in Malaysia and Indonesia, you really need to know the
authorities on the ground. If you're going to enforce
anything, then you shouldn't be filing there. You need to be
speaking to an attorney who understands, like in my
situation, I have agents literally in every country of
the world. I don't care what country you have. I can send you
an agent. All right. And on day four, you'll find something that
allows you to take advantage of all that stuff. But the whole
point of it being find an attorney who has a either a
direct representative or an agent that is in the country
that you want to file. Do not use Google. Don't use Bing.
Don't use anything. Use your lawyer. Use a lawyer, okay? That's going to help you for
multiple reasons. Number one, you're going to have somebody to hold accountable.
Hey, Pete, I sent them $12,000. They didn't file anything. Who's this knucklehead you told me to
send the money to, right? I mean, be nice if you had somebody, a contact point. Number two,
that attorney is going to hold them accountable for you, all right? If I send Erica to my
contacts in Canada and my Canadian agents are doing a poor job, I'm going to call them up and
say, hey, I send you about 38 cases a year. Do you want that to stop? Like, literally,
that's the way that we communicate. So, you know, somebody will be held accountable for you. So,
just remember that. If you want to go into foreign rights, don't just explore on your own. It can be
dangerous. It can be very dangerous because there's also exchange rates and all sorts of
other things and fees that you really shouldn't be incurring that people just add for no reason.
So, make sure that you're using somebody who's reputable that you can trust and then have them
hold those people accountable for you, okay? That make sense? Go that route, all right? No 1-800
foreign law here. I wouldn't do that. Okay. All right. That being said, let me go into common
law one more time because this is a really, there's a tricky issue in trademark law.
If you get, if you see a situation where somebody is using your trademark,
okay, and you want to stop them, please don't send them a cease and desist letter without at
least talking to an attorney first. Let me explain to you why. You get a federal registration,
and now that you have a federal registration, you think, whoa, this is awesome. Like, I have
legal rights. Like, I can stop anybody. So, like, I'm like bull. Like, you know, you're big and bold
and you can knock everybody around, right? And so, you're all happy about it. You see ABC companies
using the same name. You send them a cease and desist letter. They send you a response back,
and a response back says, we've been using this name for 10 years prior to you.
You actually owe us money. I've seen this happen a lot, guys, because people, what happens is when
somebody gets a cease and desist letter, they hire a lawyer. If the lawyer knows what common
law rights are, they'll check and find out that the company they're representing actually had
certain legal rights before the other company, and then they'll countersuit, okay? I'm going
to show you something called the Wayback Machine. Does anybody know what the Wayback Machine is?
Have you guys heard of that? No? All right. Oh, Erica has. Okay.
Let me show this to you. This is really cool. I like the Wayback Machine.
All right. Let me open up the link.
There it is. All right. I'm going to drop the link in the chat so you guys can explore
with it yourself and have fun on your own. It costs you literally nothing to use this thing,
literally nothing to use this thing, which is awesome.
Here's the link. Okay. So you can use that. And then I'm going to open it up.
Okay. And I'm going to share my screen. Share screen. There you go. Let's make sure it opens
first. All right. This is the Wayback Machine, originally created by MIT. It's pretty impressive.
803 billion web pages saved over time. What you can do is you can type in the domain name
for something, whatever it is, and you can see different versions of that website, okay?
So if somebody give me a domain name that you want to check out,
like somebody's business or a public one, whatever you want, just give me a domain name.
You can unmute. Somebody wrote dominoes.
Dominoes. Dominoes. Dominoes is making me hungry. Somebody's hungry over here. All right. Let's see.
Let's check out dominoes. Dominoes.com. Okay. Oh, my gosh. Wow. Okay. Dominoes has been around
for a while.
Well, apparently in 1996,
that's when they started having an Internet presence.
Look at all these different versions of their website.
Oh my gosh, there's a lot of them.
Let's say I wanted to see what dominoes look like in 1998.
Is that when I graduated? No, I graduated in 95.
98 was law school.
Let's look at February 4th.
Let's see if they actually have it. That'd be impressive.
What is this? I don't think this is the original.
Oh, it is. Look at that.
Dominoes is down there.
It's the Sphinx and pyramids.
Look at this. Did you ever
notice how pyramids are shaped like pizza slices?
Maybe the pharaohs were signaling to
the gods for ultimate deep dish.
That was their media campaign back then.
In 1995, Domino's Pizza built a store in Madi,
Egypt, a residential area outskirts of Cairo.
Basically, this is what the Domino's website looked like in 1998.
That's pretty impressive. Why am I showing you this site?
Let me tell you why I'm showing you this.
If there is a competitor out there,
let me stop the share for a second.
If there's a competitor out there,
and you're trying to determine when they started using their trademark,
you can actually look at their website and then
look back at different versions of their website,
to try to get a decent idea of when the trademark first came out.
Especially if they typically use that trademark on their website.
Does that make sense? Dr. Coilette says,
she comes out with this really cool name.
It's PYMIR, P-Y-M-I-R, PYMIR.
She has the name and she sees this other party who's using it,
and she says, man,
I'm going to send a cease and desist letter to her.
But then she goes, oh man,
I was in the Protect Your Idea Challenge.
I better watch my back before I go firing at somebody,
because I can shoot at somebody with a .22 and get hit with a nuclear bomb.
That's a bad idea.
She goes and she says, let me look in the way back machine.
She looks in and she finds out that that company had been
using that name five years before she started using it.
She just saved herself a lawsuit.
Do you see what I'm saying? It's really important to do your homework
before you go out there ruffling feathers and trying to cause a war.
Bad idea to just go out there and cause a war.
I would do your homework.
The way back machine is phenomenal for that.
You can learn a lot about a company checking out their prior web pages.
So I want to drop that tool out there so you can learn about that.
Secondarily, if you do send a cease and desist letter out to somebody,
remember this, if they believe there's an imminent threat that they're going to be sued,
they can counter sue you and throw you in court.
It's called a DJ action.
So if you believe that somebody is infringing, make sure you talk to a lawyer,
make sure they send out a soft letter, not a letter that says,
if you don't stop, I'm going to sue you.
If you're going to send that kind of letter and the other party truly believes
that they don't infringe, they can file against you a declaratory judgment action.
It's called a DJ action and they can pull you into court in their location.
I did this to a Taiwanese corporation.
One of my clients was about a midsize company and there was this large Taiwanese corporation
that was making the same product.
Large Taiwanese corporation sends out a cease and desist letter,
aggressive one, claiming patent infringement to my client.
My client reaches out to me.
I said, isn't this the company that you've been saying sooner or later you're going to end
up in a lawsuit with them?
And he said, yep, absolutely.
I said, how would you feel if I made the president
of the Taiwanese corporation show up in New Hampshire in February?
He says, oh, that would be awesome.
That would be incredible.
I said, all right.
I said, this is what we're going to do.
We got a vicious cease and desist letter.
I filed a DJ action against them claiming that we don't infringe.
and we filed a countersuit against them with three patents.
They ended up having to come to New Hampshire,
made their lives miserable, all right,
to the point where they settled, okay?
So my whole point of this is,
if you believe somebody is infringing, do your homework,
check out the Wayback Machine,
see if they truly are using your trademark or not.
If they are, then obviously go and talk to an attorney.
Any questions on that, the Wayback Machine
and how to use that?
Because for trademarks,
it always comes down to who used it first, right?
If somebody used it first,
they get to keep that specific geographical region.
Even if you get a federal registration, you can't stop them.
They can't expand, but you can't stop them.
All right, let me walk into,
I'm gonna talk a little bit about
something that I'm gonna preview tomorrow,
but I wanna spend some time with you guys on this
because a lot of people do this wrong.
The Circle R and the TM, a lot of people do this wrong.
If you do not have a federal registration
and you're using the Circle R,
you can be sued for tortious interference
with business practice, an unfair business practice.
It's illegal.
It is against the law to use a Circle R
if you don't have a federal registration.
What you should be using instead is the TM.
Okay?
Until you get a federal registration, you use TM.
Now, the pathway of filing an application,
let me talk to you about how it works.
You file your application, you get a serial number,
you wait for examination.
If your case is allowed, then what's gonna happen
is your case is gonna be published for 30 days.
After it's published, you'll get a registration.
That's the pathway for getting your trademark
to registration, okay?
It usually takes nine months to a year
to go up that path in the United States.
Canada, three months.
Okay, that's the general process.
Now, in between there, if your case is not disallowed,
you might get a rejection.
That's called an office action, okay?
Get familiar with that because all of you
that file trademark applications,
there is a decent chance that you're gonna get
an office action, okay?
So don't panic.
Basically, it's a rejection by the Patent
and Trademark Office saying that your case
should not be registered because of one
of a few different things.
Either one, it's too similar to another trademark
and likely to confuse the public.
Number two, it's just descriptive of the goods or services.
Or it could be something else like they just want you
to modify your goods or services, okay?
Now, tomorrow, we're gonna talk,
you guys in VIP tomorrow are gonna see
the filing of a trademark application beginning to end.
I'm gonna walk you through it so you understand
every single part of the application.
And then I'll actually open it up for questions
so you can ask, what's this?
What's that?
What do I do with this?
I don't understand what that is.
We're gonna take plenty of time to walk through it, okay?
So we'll do all that tomorrow.
But what I want you to understand is that these,
the trademark applications, again, nine months to a year,
it gets published.
If it's rejected, you get an office action.
That's where you need a lawyer usually.
Now, something that most people don't know,
you can call the examiner.
Most people don't know this.
You don't have to respond in writing all the time.
If it's something simple,
you might wanna pick up the phone,
call the examiner and say,
hey, I agree with your suggestions.
Can you just do an examiner's amendment?
I probably just saved you about 600 to $1,000
just by saying that.
Because instead of getting a lawyer
to write everything out in writing,
you might be able to just call the examiner and say,
you know, everything that you suggested, I agree with.
Can you just do it by examiner amendment?
And if they say yes, you're done.
Like, you're done.
I mean, that's how, sometimes it can be that simple.
So you can call examiners, okay?
The examiner is the person who's responsible
for reviewing your application.
I wouldn't get in the habit of calling them over
with just anything though.
I'd be ready.
Because these are people that do this for a living, okay?
Any questions on that?
Any questions on the procedure at the patent office?
I'm happy to answer if you guys have a question on that.
Shawn, do you have a question?
Just that I still don't understand when you can use the TM.
Is it just when you start, like, I have a number of models.
Do I start using TM when I'm just intending to one of these days trademark it or when I have already applied?
At one point, you said 30 days.
I've done this enough to know what an office action is and stuff like that, but I didn't know what you meant by published and by 30 days versus can I just do it as an intent.
Okay.
Yeah, you mixed.
There's like five different things that you mixed into that.
So let me break it down piece by piece.
So first of all, circle are you use when you get a federal registration?
Not before TM.
You can use the second that you start using the trademark in interstate commerce or within your state.
Second, you start using it.
You slap a TM on it.
Moment that you start using it.
If you're using an interstate commerce like across state lines or even within state lines, but it's put a TM on it.
Right.
It's funny.
I just heard a song.
If you like it, then you better put a TM on it.
So yeah.
So just put your TM on it.
Oh, all right.
So that's the first thing.
Circle are versus TM.
Okay.
Separate from that.
Going on the blooper reel.
I know.
You know, I just thought that I just got lots of jokes.
No joke.
She's going to go a blooper reel.
I know it's coming.
All right.
So that's part one.
Circle are versus TM.
Separate from that, the 30 days.
Let me explain that in a little more detail so people understand.
You file your application.
It gets examined.
You're either going to get an office action saying that it's rejected for one reason or another, or you're not.
If you don't get one, it gets what's called allowed, but it needs to get published.
What publishing is, is that the United States Patent and Trademark Office wants to make the public aware of this new trademark before they allow it to be federally registered.
I'm going to do this.
I'm going to throw out an extra gift here.
If anybody can tell me why they do this, I'm going to give you a $50 Amazon gift card right now.
If anybody can tell me, tell us why the United States Patent and Trademark Office would allow publication of an application before registration.
So that they don't have conflicts when somebody has already applied first.
Close.
Let's see if anybody else has anything.
To put the public on notice in case someone has a case against it?
There it is.
That's it.
Yeah.
So it's, that's, all right, so think of it this way.
It's not just that somebody filed before.
It's even if people didn't file.
Right?
It's anybody.
Anybody who has a potential conflict.
So let's say that I file for 10X.
Right?
That's owned by Grant Cardone.
Okay.
Grant gets to this point where the trademark is about to register.
And so he publishes it.
And there's like some, there's some company out there, 10X.
And they're doing like marketing and sales and stuff like that.
They've been doing it for the last 20 years.
But they don't have a federal registration.
They, because it's been published,
they can now oppose that trademark and prevent it from being federally
registered because they have certain legal rights.
Now I've done this.
It's called a trademark opposition.
Okay.
That, so it's, it's not just like somebody filed earlier,
or there's a registration.
It's like anybody who believes that they have any potential legal rights
can come up against you right in that 30-day window.
It's a short window.
So here's my advice for you.
This is not legal advice, but it's advice anyway.
When your application has been allowed, calm down.
What I mean by that is don't go on Facebook and say,
my application was allowed.
This is great.
I'm so excited.
Oh my gosh.
The name of my company, it's getting registered.
Like no.
All right, Ray.
Yes, I know blooper reel.
I know I saw you smile.
I got it.
All right.
So no, don't do that.
Wait until it gets federally registered.
Wait until the 30 days have passed.
Now that the 30 days have passed,
you can do all your exciting things and like Facebook and Instagram and
whatever.
ever, because the window is closed. Nobody can oppose you
now. Now for them to stop you from a registration, they would
have to sue you. That costs exponentially more. Okay.
But you're not technically registered yet. Right? I mean,
when I did it, it did take about nine months.
You're registered after the opposition is over. There's a
30 day period and then the USPTO will send you a registration
number after that's over. So it takes it takes a few days, and
then you'll get
but there was like a long waiting period. There was like
six months where a lawyer went and looked at my website, and
then they gave us an office action and stuff like that. It
was a lot more than 30 days.
Yeah, I'm talking about remember, remember what I just
said. So I said, you file an application, you get an office
action, that's settled, the case is allowed. Now you have the 30
days. I'm not talking about the office action. I'm not talking
about prosecution. I'm not talking about
I'm talking about what what is it then you don't get to use the
R after that point, right? Because you haven't officially
been. They haven't done all their research.
You can only use a circle R after you get a federal
registration. Not before. You only get a registration after
you get a certificate that says you have a federal
registration, not before,
which is after that 30 days or after they do their big long
research thing after
well, that big long research that you're talking about.
That's called prosecution. Okay, that's that battle that's going
on with the attorney and with the United States Patent and
Trademark Office. So what happens is you get an office
action. United States Patent and Trademark Office says, I really
like you, Sean, I really want this to issue. But there's this
other trademark out there that's kind of similar to you.
And I think there's a likelihood of confusion. So here's a
rejection. Now your lawyers going back and forth and
arguing. No, it really should be allowed. It's not confusing. And
the patent office Patent Trademark Office is saying no,
it is confusing. So that back and forth there. That's called
prosecution. Okay, you can't use a circle R yet. When the
prosecution is over and your case is allowed. Now the 30 days
starts after the allowance. So once you're allowed, so you
hopefully your attorney wins, right? When your attorney wins,
we just applied ourselves and it took over six months to get an
office action. So you're saying, well, you're saying six months
to get an office action. So that's, you're waiting to get an
office action. And then you finally got your office action.
So now the legal arguments happen, the back and forth.
And so maybe there never was that 30 day.
30 days is after it's allowed. You don't get your case does not
get allowed until after you win the battle with the Patent and
Trademark Office. So 30 days does not happen until the case
is allowed. So application. So application here, right? Waiting,
waiting, waiting, waiting, office action, battle with the
USPTO. So the your your attorney battling with the examiner, you
know, I should get the case allowed. No, you shouldn't.
You're ugly. Oh, no, I'm not, you know, finally, the case gets
allowed. Once it's allowed. Now the 30 day period opens. So
that's called opposition. Now for 30 days, anybody could
oppose it. But if you get past those 30 days, now you get
registration. When you get the registration, that's when you
use the Circle R. Before then, even at the point of filing the
application, you can use a TM right at the beginning. So
always use a TM.
You can use a TM even if you haven't filed yet. Just right
from the start. Okay.
Yep. Yeah, as long as you're using it in interstate commerce
or in intrastate commerce, as long as you're using it, right,
you have to be using it to use a TM. Because the TM is telling
the public that you believe you have certain legal rights to
your trademark. Well, if you're not using it as a trademark,
then how could you have legal rights, right? You have to be
using it.
Thank you. And that wasn't my main question or hot seat thing.
That was just you when you said a clarification about R versus
TM. Thank you.
Let me move on. So, um, let's see. There we go. Did that help
you guys to understand the process and all? Okay. The
reason why I want you to understand the process because I
don't want you to get scared or freaked out. When you're going
through this back and forth with the United States Patent
Trademark Office. It's not it shouldn't be scary. trademarks
are not remarkably difficult. patents tend to be more
difficult. But trademarks don't tend to be remarkably difficult.
Now, what
been sometimes, and my really close and incredible friend
Marcelo is here, so I'm sure he has some level of knowledge
in this area, is that you can get overly ambitious lawyers.
So let me explain this to you.
When you file an application, what
you're going to see tomorrow is I'm
going to show you how to determine your description
of goods and services.
What should be in that list of your goods or your services?
What sometimes happens, it happens a lot
in foreign countries, sometimes it happens in the United States,
is that an attorney will file for everything
in an international class.
Don't do that.
Don't do that, all right?
Tomorrow I'm going to teach you what an international class is.
Every trademark application falls
under what's called an international class.
So it could be class 41, which is for teaching,
class 9, which is electrical devices.
There's a different class number for a different thing,
for a different good or service, OK?
What you don't want to do is file for everything
within the class.
Only file for what you're using a trademark on, that's it.
So if I'm selling sneakers, I file for sneakers, right?
I don't file for tap dancing shoes, ballerina shoes,
bowling shoes, and golf shoes.
Like, I file for sneakers.
Because if I file for all those other things,
before I get a registration allowed,
I have to prove that I'm using it for all those things.
So by filing for all sorts of things,
you may be thinking, man, you know what?
I got all this class.
This is so good.
Nobody's going to be able to do anything in this area
because I grabbed everything.
Well, if you're not using it for everything,
you're never going to get a registration.
You're going to have to cancel all of those things
that you're not using it for, OK?
So like I said, in VIP, we go deep.
Like, I'm giving you a lot of hints
to how to write your applications
and how to argue with the patent and trademark office
and what examiners do and the time periods and the costs,
all these things.
And actually, let me take two questions now.
Let me go back and see.
If anybody has a question, you can raise your virtual hand.
I think Marcelo has his hand up, right?
Marcelo!
Mi amigo!
What's up, bro?
Bro, so much content.
Oh my gosh, I love you guys.
You guys are amazing.
I've been texting you because you're so fabulous.
Oh my gosh, you guys are amazing.
Besties.
So that's totally, you nailed it on the head.
That's what happened with us
with all three of our trademarks.
Yeah.
Like, I did the unthinkable
and went to my big box store legal advice location
and they filed my trademarks and I was super excited.
But now when I get it, I got it back,
I realized like they put everything under the sun
under my trademark.
So can we drill down a little bit into this?
What's the next step for me as the business owner?
To clean up the mess that I made?
Great, great, great, great, great question.
So this actually is going to apply to everybody.
The question that was just asked
by my wonderful friend, Marcelo
and his incredible Summer.
Where is she?
There she is.
She's there somewhere.
There she is!
What's up, Summer?
All right, so let me break this down
because all of you are likely going to run into this, okay?
What they're talking about here is
what happens when you have a recitation of goods
or services or the description of goods and services,
but you need to take some stuff out
before you get a registration.
Now, let me start with the opposite question,
which is, can you add stuff in?
The answer is no, okay?
You can always take stuff out.
You can never add stuff in.
What do I mean by that?
I have a client who makes wallets.
He had a trademark application that covered wallets.
I think it was like luggage tags, RFID readers,
and that was everything that he had used it for, right?
But then as some time went by, he had cell phone holders.
Well, he said, well, can I just add cell phone holders?
Nope, you can't.
You can't add, when an application is pending,
you can't add anything.
What you can do is file a new application,
which means you're now going to incur the fees
for filing a brand new application.
Why am I telling you this?
Make sure when you're talking to your attorneys
or when you're working on filing these applications.
you think of everything you're gonna use this thing for.
Because if you miss something, you can't add it later.
But if you add something,
like Marcel was talking about here,
and you need to just take some stuff out, that's okay.
We just, we clean it up.
We just throw away the extra stuff, right?
Like we're trimming off the crust of the bread,
but you can't add a crust to the bread
after the bread is baked.
You can't add extra crust.
It don't work.
Does that make sense?
Okay, so with that being said,
let's talk about a theoretical,
incredibly wonderful and good looking person
who may have come up with a scenario
where they have too many things
in their recitation of goods and services, okay?
So that theoretical person,
this is what that theoretical person would do,
because none of this is legal advice, right?
We all know this is not legal advice.
But that random person
who lives in the stratosphere somewhere,
what they would do in that situation
is they would, if they got an office action,
so if they got a rejection on their original application,
what they would do is in responding to that office action,
they would also select,
there's a box you can select
to modify your recitation of goods and services.
So they would select that box,
and then what they would do is
they would just merely remove the stuff they're not using.
Be like, get out.
Not you, not you.
Nope, nope, not you.
And then they'd be left over
with what exactly is important.
And they'd file their response to the office action
with only what's important,
and address whatever else rejections
they have in the office action.
That's the way that theoretical individual
who none of us have ever met before
who's extremely good looking and a really nice person,
that's what that person would do.
Ciao, bro, or whatever else you say, bro.
All right, so that's what you would do
in those kinds of situations, all right?
Makes sense?
Yeah, that totally does.
It looks like that person probably might wanna go
look at the website a little more and figure that out.
It's important because this leads to the second question,
right, guys?
Which is, what if I file an intent-to-use application
for a bunch of stuff,
but I don't know what I'm gonna do with it?
I file an intent-to-use application for a bunch of stuff,
but I start using some of it, but not the rest of it.
Like, what do I do?
There's a thing called,
you can file a petition to split your application.
So you can take your things that you are using
and go, whoops, and put those over here.
Take the things that you're not using yet
and keep them over here, right?
And then you allow this one to register
and this one's still pending.
It's pretty neat.
You can do some really cool stuff, guys.
So this is why I tell people,
if you're not sure what you're gonna use something on,
you can file for a bunch of different things
that you believe you're gonna use
and then just remove the extra things later.
And then if you're starting to use things this year
and you know you're not gonna use the rest
for another two years, it's okay.
File a petition to split your application
so that the things you are using,
you get a registration for now,
and the things that you're not using yet,
you get a pending application on.
Good stuff.
No frills.
And Peter, just how long do they have
before they go from intent to use?
Wow, that's a great question.
Just came out of nowhere.
Amazing.
Wow.
I always thought God's voice was more boisterous,
like, Peter.
All right, so let me talk about that a little bit.
All right.
If you've got a pending application,
it's an intent to use application,
and what happens in your scenario is that,
let me just remove the pen here.
There we go.
And what happens in your scenario, or in a scenario,
is that you're not using it yet,
and your case is allowed.
What the United States Patent and Trademark Office
allows for is what's called an extension.
People can file an extension
to actual use of their application.
So the case is pending,
and you can file these six-month extensions.
You can file up to five of them, right?
So when your case gets allowed,
there's six months until you have to prove
that it's actually being used.
If you don't use it within those six months,
you can file what's called an extension.
Now you get another six months,
and you can write down the reason why
is we're doing manufacturing,
or we're doing marketing research,
or whatever the case may be.
But you can get up to three years of extensions,
up to three years.
That's a long time.
So if you're thinking, you know what?
I'm going to use my application
within the next three years.
No problem.
You can file an intent to use application now.
That's the beauty of an intent to use application.
Now, if you...
who instead believe it's gonna be like five years,
you may not be able to file an intent to use application
because it'll expire within three years,
within three years of the case being allowed.
Does that make sense?
Yeah, okay, good.
Sonia, you are up, my friend.
Oh my gosh, no, I'm big.
I don't, that came out of nowhere, okay.
So just to make sure that I understood that.
So when I file, cause I've never done that,
I'm just starting my own thing, right?
So I can pretty much put everything in the application.
So like logos, slogan, like a concept that I developed,
or is it all an extra application?
Like this is where I'm a little bit lost
as to how much can I put in one application
and where do I need more than one application?
Wonderful application.
And in fact, tomorrow,
this is why you guys are lucky you're in VIP
cause I can cover this slowly with you.
Tomorrow, I'm gonna touch base on this a little bit,
but think of it this way.
You know the Nike swoosh?
Above it, usually it says, just do it, right?
And usually next to it, it says Nike, right?
Those are three different trademarks.
You see that?
So that's pretty deep.
So you don't file one application
with all three things in it
because then to infringe upon it,
the person would have to do the majority of it, right?
For there to be likelihood of confusion, right?
So what you would do is you would file one application
for the logo, one application for the word mark,
and then one application for the slogan.
By doing that, you've got a powerhouse of IP
because now you own Nike, you own just do it,
and you own the swoosh.
So if anybody uses any of those on sneakers, they're toast.
You see that?
So it's, now there are some situations
where there's a word within the logo.
That does happen every once in a while, right?
There are some trademarks that are out there
where you'll see, you know, like there's this,
whatever logo and inside of it,
I have a friend of mine who actually has one like this.
We're filing on it.
It has the word, it has like a house
inside one of the letters, right?
So it's a word, but it's decorative,
and it has a house inside one of the letters
because he's in like the home business, right?
Home building business.
So we're filing one application for that logo,
which has the word,
but then we're separately filing for the word alone.
So if anybody uses that word separate from a logo,
they infringe,
and they would have to stop using that name immediately.
Does that help?
Yes, but so then what is it that you just explained prior?
Like if you have a bunch of stuff in there
and you park it over here,
so when would I cluster, I guess?
Right, right.
So that, the bunch of stuff that's in it
is called the recitation of goods or services, okay?
Okay.
So what a recitation of goods or services is,
it's a description of everywhere that you're using the mark.
So let's say that it's sneakers, right?
Let's say it's Nike.
You're using it for sneakers.
Sneakers are in a specific international class.
But what you would say in the recitation of goods
is sneakers, you use the word sneakers.
Now let's say you're also using it for jackets
and for shirts.
Then what you would write is jackets, shirts.
Like that's your recitation of goods.
It's a, recitation is just speaking, right?
This is my recitation.
I'm speaking, I'm putting words to a thought, right?
So the recitation of goods is basically the list of goods
that the trademark is being used for.
So if you are thinking to yourself, you know what?
I'm intending to use this name for the following things.
I'm not sure if I'm going to, but I'm pretty positive
I'm going to list them all, right?
Because then later you can say, you know what?
I used it on six of the seven.
I'm going to cancel that number seven
and I'll just get the registration on the six.
Awesome, thank you.
You got it, no problem.
Morgan, how are you brother?
You got on mute.
I'm doing fine, doing fine.
How are you Peter?
Thank you very much.
I'm doing well, I'm doing well.
Great information.
Thank you so much.
Oh, thank you so much.
I just want to be a little clear on this.
Earlier you were saying something about not filing
all at once or too many items and too many things
at one time.
You gave the example about the wallet
and you said, well, if you're doing wallets,
you're doing wallets.
So I guess I'm trying to ask the question.
I don't know if you answered it
in the young lady's previous question,
but so if I want to do wallets, they have a name.
I want to do key chains.
I want to do mugs.
I want to do all.
with the logo on a number of items.
So are you saying I can't do that when I register?
We lost you for a second there.
I heard you say wallets,
then you broke out for a second.
Sorry about that.
If it was a number of items,
I want to put the logo on for sure.
I guess my question is,
does that fall under the recitation of goods,
what you were just talking about?
Is that how I get around that?
Because earlier you were saying
that we shouldn't file so many at one time.
Yeah, so in Marcelo's case,
you've got a situation where he never intended
to use it on certain things,
but the attorney just listed everything within the class.
So it's like you intended to use it for sneakers,
but they go and they list it for sneakers,
tap-dashing shoes, bowling shoes,
golf shoes, ballerina shoes, water shoes, like everything.
You never intended to use it on that,
but the attorney filed it anyway.
In that case, you could just remove that stuff
because you never intended to use it on that, right?
But if you do intend to use it on stuff,
you just haven't done it yet,
then by all means list all the things
that you intend to use it on.
That's why it's called an intend to use application.
Okay, not a recitation of goods.
Am I confusing those two statements?
No, no, you're right.
So the application itself
is called an intend to use application, right?
So there are two types of trademark applications,
an actual use application and intend to use application.
Those are the two types, all right?
Guys, type that in the chat.
Just type in the chat
so I make sure you guys remember this.
Intend to use, actual use.
Just type those in the chat.
I'm actually gonna type it too.
Actual use,
intend to use.
Those are your two different applications, all right?
So you can file any one of those,
intend to use application or an actual use, okay?
Both of them have what's called
a recitation of goods or services.
So when you file an application,
you have to specify what you're gonna use it on.
So I got the name Nike.
The United States Patent and Trademark Office
wants to know what are you gonna use it on?
Are you gonna use it on cereal?
Are you gonna use it on sneakers?
Are you gonna use it on fish tanks?
Like, what are you gonna use it on?
That's called a recitation of goods.
It's a list of the goods.
That's listed whether you do an actual use application
or an intend to use application,
you will always have a recitation of goods or services.
Okay, thank you.
Appreciate it.
Absolutely, absolutely, good question.
All right, Shawn, let's jump into your question.
Go right ahead.
I'm not sure if it's question or coaching,
but I have looked at copyright and trademark
and not sure what this thing is,
but I have a number of models,
like psychological models that I use in my courses.
And this one that's really my main thing
is called the Wheel of Self-Love.
And I have been giving it away.
Now I'm gonna start selling it as a thing,
like a little book,
but it's also part of a bigger book.
And it's also been a method or a model
that I use in courses.
And we've been always putting copyright
at the bottom of it.
And yet it's the concept of it
that feels like it should be trademarked.
And then there's also a visual graphic
that goes with it,
but it's not a logo.
It's the model itself.
So I get a little confused about,
I really feel a need to protect it.
Some people have said they wanna use it in their classes.
So I don't know if I should license it.
So what's your question?
Is it a copyrighted thing?
You're just like, blah, give me the answer.
I love it, I love it.
Right, is it a copyrighted thing?
Is it a trademarked concept?
Yes.
Yeah, so guys, this is a perfect example.
Sean's situation.
First of all, Sean's brilliant
in case you guys haven't figured it out.
She has her own processes.
She's got her own artwork.
She's got books.
She's got like whole training.
She's brilliant, right?
And so this is a good example
of where an IP audit becomes really important, okay?
Perfect example.
She's got so many things that are going on here
that you need to break them into pieces.
Like, okay, what's the name of it?
Name is potentially protectable.
Is there a logo that's associated with it?
The logo is potentially protectable.
The copy, meaning any handouts that are provided,
those are protectable under copyright law.
if there's a specific functionality or a flow,
like you do step one and two,
then you add three and you do four,
that gets you to five, is that process protectable?
If it is, that would be potentially protectable
under patent law, right?
So there's so many different things
and under her brilliance and under her,
what she's bringing forth to the world
that this is a perfect example
of where IP audits become very important.
So thus far, Sean,
all we've really talked about is trademarks.
I'll cover copyrights in the future,
but I can tell you that any name that you're using,
any logo that you're using associated with this,
those things are potentially protectable
under trademark law.
If you're already using it, if it's already out there,
the good part is that you have a date of first use
that predates your filing of the application.
So you just wanna figure out when you started using it,
like what day did I start using it?
And just make sure you list the date,
and this is for everybody to understand.
Every trademark application,
which you'll find out tomorrow,
has a date of first use.
That date of first use is incredibly important.
Don't ignore it.
A lot of lawyers ignore it.
They just kind of like think, oh, who cares?
It was December.
It's like, yeah, if you can figure out the day,
write down the day and the year, okay?
The reason why is because that's placing the public
on notice, saying this was the date
that I started using this thing.
So if I tell you that this is the date
that Shawn started using something,
that should mean in your mind,
she had legal rights under common law,
the date that she started using it.
This is why-
And what if I didn't actually sell it though?
If I had some international clients and I had,
but I still wasn't selling it,
I was using it as a lead magnet first
and I was teaching it in my classes,
but, and now I want to say,
so I've been using it since probably 2016.
Sure, let me jump in here
because I want to get some others as well,
but let me add this to it for you as well.
It doesn't always have to be sale.
And remember guys, this is day one, okay?
This is day one.
We have four more days together.
So we're going to learn a lot of stuff together,
but it doesn't always have to be sale.
It's use in interstate commerce.
So even if I don't have a sale,
I may have certain legal rights.
You want to speak to some,
like an attorney to find out
whether what you've been doing
actually can be considered use.
Like you're talking about a lead magnet, right?
I use lead magnets.
So let me elaborate on lead magnets first, okay?
So what lead magnets do,
is lead magnets result in you obtaining an email address,
getting a phone number, getting contact information.
It's a way of marketing.
Lead magnets work as a way of marketing.
So that's actually use.
That's even though there's not a sale yet.
So I built my list to like 10,000 people downloaded it.
So that was a valuable.
Right, okay.
Yeah, yeah.
Right.
And, okay.
There's one more thing related to that,
but it might be a separate question.
So.
Yeah, let's jump in.
We got a few more days.
We'll come to other stuff, my friend.
Okay, thanks.
All right, absolutely, absolutely.
Thank you, Peter.
It's my true pleasure.
My true pleasure.
All right, let me go to.
And just in case anybody didn't catch it earlier,
I just dropped the link to that handout again
for that Peter shared
in the first part of the challenge today.
Yes.
All right, I'm gonna do one more question today
and then we're gonna jump into others afterwards.
Let me take Tony.
Tony, I didn't take you yet, right?
All right, Tony, let me grab you.
Grab your question here.
And then, guys, again,
we're gonna have four more days together.
I love, I love how hungry you guys are.
I love this.
This is awesome.
So go ahead, Tony.
So I'm just getting into the archer thing
of trying to publish books and stuff.
So many people said, let Amazon do it.
What kind of right does Amazon have
if they publish your book?
Oh, you had to open a can of worms, didn't you?
You had to start talking about third party
publishing and, oh, okay.
All right, we're gonna start,
we're gonna end on a hill.
Okay, that's good, that's good.
All right, let's do this.
I love Tony, so we're just gonna do this.
Let's jump in.
Okay, so here's the situation.
Please make sure you read all the legal garbage
or talk to somebody who understands the legal garbage
associated with anyone you're publishing with,
anyone you're using artwork from,
anyone who's producing logos for you or.
or slogans or whatever it is, please, please, please read.
Okay, there are certain groups that obtain legal rights
to your material if you use them.
One perfect example, Facebook.
If you go live streaming your content on Facebook,
Facebook has certain legal rights to your material.
Why do you think it is on your birthday?
You get this video card that has things
that you typed in the chat, people that you've DMed.
It has like pictures of your kids and your spouse
and like it has all sorts of stuff, why?
Because you gave them legal rights
the second you started putting stuff on their site.
So if you're running a challenge,
this is one of the reasons
why I don't live stream in the Facebook.
You're running a challenge
and you live stream in the Facebook,
guess who actually has a non-exclusive rights,
who actually has non-exclusive rights to your content?
Facebook.
Zuckerberg.
Zuckerberg, that's right.
So now all of a sudden, don't be surprised
if you see some of that content showing up in other places.
So you just gotta be careful, right?
So to answer your question, Tony,
like you're asking, well, if I publish through,
you said Amazon, is that what you're doing through?
That's what I keep hearing, Amazon just, you know,
or something.
Yeah, yeah.
So I don't know the exact,
cause I haven't published with Amazon before.
I hear it's kind of favorable.
I hear their terms are kind of favorable.
I haven't read their terms before,
but I would read their agreement
and see what exactly are you giving up
when you publish on their site?
I don't think it's a lot.
I think they're pretty favorable, but I can't,
I don't know.
I don't know the answer to that one.
So I would look at the agreement
before you go publishing anything with them
or selling anything with them,
find out what license are you giving to them, right?
Cause there's certain publishers, I'll tell you this much.
I know a number of authors,
like people who have written a number of books.
And when they started out, they go with a certain publisher
and then they found out that they gave our right title
and interest to their books to the publisher,
which means that any modification to the book,
the publisher also had rights
because that's considered a derivative work.
You'll learn about this on day three and four, right?
Derivative works are modifications to an original work, okay?
So that means, let's say you make book number one
and book number one is about a ranger.
He's a forest ranger and he finds some kind of portal.
He goes into portal, he goes back in time,
like 1800 years and he meets, you know,
he meets somebody there and they go on some kind of voyage
or something like that, right?
That's the book, okay?
That's book number one.
Well, book number two is that his sister
finds the same portal and steps in, right?
That might be argued to be a derivative work
off of the original work,
which means the legal rights for the second book
actually go to the same party as the first book.
And if that's the case,
if you gave those legal rights to a publisher,
you can't even write the book.
You see what I'm saying?
You need to figure out beforehand as a publisher,
hey, if you're, I mean, as an author,
hey, you're gonna be my publisher.
What are the legal rights that you have
to what I'm going to publish with you?
I need to know in writing everything
that you're gonna gain.
Yes, there's money.
Yes, there's royalties.
Yes, there's an amount that I'm going to, you know,
have to pay upfront,
but I'm gonna make X amount for, you know,
this number of books,
but who owns all right title and interest
to the original copyright?
You gotta figure that out.
And I would look for that,
look for the terms like the words like license.
I would look to see what is the license for with Amazon?
Any royalties?
I don't think they take royalties,
but I would double check that, you know?
So those are the big things like licenses,
royalties, who owns it?
You know, are you assigning
all right title and interest over?
I've heard that they're very favorable.
I just have never published with them.
So I don't know as a fact,
but I may be able to look around
and see if I know somebody who has, yeah.
Good.
All right.
Appreciate it.
My pleasure.
All right, my friends, we are gonna close there.
It is 9.36.
Is this helping you guys?
By a show of hands, is this helping you guys?
Awesome.
All right, good.
I'm inspired to do day two then.
Okay, good.
Awesome.
So this was day one on trademarks.
We're gonna cover, we're gonna do some repeat stuff.
tomorrow in the beginning, because I'm going to go over recitation of goods and services first,
but then we're going to jump into international classes. We're going to do a trademark search
together. I'm going to answer maybe one or two questions there and give you a few other things.
And on top of that, tomorrow we're going to start giving away some prizes too. Hey, Ray, who won
today? We didn't do Willa Names, but we did get Morgan who answered your question. It was Morgan.
Okay, cool. Morgan, don't worry, Morgan. I got you. We got you. We got you. We got you, bro.
That's awesome. I appreciate it. Amen. That's awesome. Hey, also, there were a few VIP members
whose emails, they didn't get the welcome email. I re-sent it out. There's about seven of you,
so check your inboxes. You should have all the links there. The replay links will be emailed
out tomorrow morning, so you guys can watch the sessions again back if you need them.
And if you didn't get the email, message me on Facebook Messenger. I'll make sure you get it.
And do me a favor, guys. If you feel inspired to do this, go live in the Facebook group and
let people know why you like VIP. The reason why is because what we tend to find is by day three,
there's about 15 or so people that all of a sudden say, I want to go into VIP. And
if those people come in really late, they end up monopolizing a lot of the time in the end. It's a
lot better if they get in early. So it's a lot better if they find out about what VIP is early
from you guys who are actually in VIP. So if you would go live in a Facebook group and just say,
hey, guys, I was in VIP. This was my experience. Let them know. So then they can make up their own
mind as to whether or not they should join, as opposed to being on day three or four, in which
case their hands never go down the last two days because they haven't been able to ask any questions
before then. So it's just helpful for everybody. And I'm trying to help as many as I can.
Make sure if you're going to miss any day, do not miss day four. I'm going to be presenting
something to all of you that I'd say at least half of you are going to want. So it's a surprise.
It's on day four. Don't forget it's on Thursday. I think that's it. I'm going to jump off. Larissa,
you can close off with everybody. And I will ping Ray, Jill and Larissa in about five minutes,
OK? Awesome. Bye, my friends. Have a wonderful evening. I'll talk to you guys later.