Welcome, everybody, as you come in.
I know folks are just coming into the room.
Peter's just about ready to join us.
Anyone else want to join?
Hey, everybody.
How's it going?
How is everyone?
You guys awake?
How is everybody?
I just jumped in.
I just finished looking over some stuff over here.
Some of you have actually been emailing me, which is amazing.
This is so awesome.
You guys are so interactive.
When I heard that word, pioneer, it definitely was not a joke.
So I just wanted to jump in.
I know I'm probably a minute early on you.
So I just want to start jumping in because we
want to start covering things.
And I just finished looking over the last email
that was sent over to me, which is wonderful.
How's everybody doing?
Everybody good?
Yeah?
You ready for day two?
Can you believe this is day two?
Yesterday, you probably learned enough for five days.
So we're trying to take it piece by piece.
Larissa, I'm seeing you're pinned up.
Is there a way to give me a gallery view or something like that?
Or I guess I can just change it on my side.
There we go.
I'll change it on my side.
All right.
So I'm pinned up right now?
Just checking.
No?
Yes?
The reason why I'm asking that is because on the recordings,
I want to make sure that people can see the person who's
speaking, not just the gallery view.
So if you can pin just me as the speaker,
or just pin the speaker, that'd be awesome.
All right, thanks.
Because we're getting larger.
I don't know if you guys have noticed, you guys and gals.
By the way, predominantly gals, all right?
That was raised to me by John.
John, what's going on, man?
Why are all the women brilliant?
Where are we?
What's going on, bro?
I don't know.
Hey, it is what it is.
I'm OK with this.
It's the spirit of entrepreneurship, right?
I'm OK with this.
This is amazing.
These are the minds.
It's awesome.
I love it.
So yeah, there's a number of things
we're going to cover today, which is phenomenal.
Just to give you kind of a layout,
today we're covering trademarks.
Paula Clancy is going to be joining us from Canada.
Awesome.
She's like one of the lead partners
at Galling Law Firm in Canada.
Guys, she's no joke.
Like, she's big money.
She's an incredible attorney.
She represents like billion-dollar corporations
and solo inventors.
Like, she's the real deal.
So you can literally ask her when, in the VIP group,
you can ask her anything.
She will answer any question.
And here's the best part.
You won't have to pay her billing rate.
That's the best part.
Bring your questions.
No billing rates.
You're not getting a 0.2 or a 0.3 or a 0.1.
None of that.
No flat fees.
No nothing.
It's all covered, OK?
So bring any of your questions.
She's going to cover any of that.
Thank you so much for being interactive in the Facebook
group.
It's so important.
I'm getting feedback from some people
who are saying they're actually learning even more
from your interaction in the Facebook group, which
is amazing, because you're giving your real-life
situations.
Like, a lot of people here are entrepreneurs
who have actually run businesses,
who have run into situations.
And as you're sharing what you have gone through yourself,
other people are learning.
So please continue to do that.
Please continue to share.
It's amazing how much the Lord is really involved in this.
For those, I think most of the people who are Christian,
but for anybody who's not, I love you, too.
I love everybody.
But every once in a while, you're
going to hear me sharing a word, because that's
just how my life is, OK?
So today, I'm over there juicing.
Yeah, this concoction here is cucumber, carrot,
beets, all sorts of incredible stuff
to get me going in the days, which
I do practically every day.
But I received a word as I'm sitting there,
because a number of you went live and said,
I can't believe that the cost for this is only $95.
How is that even possible?
And just to be clear, I've had calls
from lawyers at big law firms, Fish and Richardson,
like King and Spaulding, Wolf Greenfield,
others that say, what are you doing?
Like, $95, that doesn't make sense, right?
And what I heard, as I was watching your videos,
I heard, I literally heard in the spirit,
they're worth my investment.
And I was like, whoa.
When I heard that, I was like, I'm getting goosebumps now
even saying that.
You need to hear this.
You are worth God investing in.
You've heard over and over that you're
worth yourself investing in.
But you are worth God's investment.
He paid the top price for you, His one and only beloved son.
That shows you that you are worth God's investment.
who are important. Okay, that word pioneer was important, you
are important. There are certain gift things that you have, and
the majority of you in this room are coaches, you're going to be
teaching and training and guiding other people, you are
very important. I want you to understand that. Okay. So when I
want you to change from this, and this is the only spiritual
part, I believe that's going to be in this today. Then we're
jumping into trademarks, I promise. But I want you to
change your, I want you to start having a reverential
expectations of blessings to fall upon you. I want you to
have that expectation, go through your day with that
expectation, don't go through an expectation of, well, if I pay a
dollar, I'm going to get $1. No, I want you to have an
expectation of when I pay $1, I'm going to get $1,000 back. I
want you to have and this is not just about finances, it's in
everything. You're an ambassador of the kingdom of heaven, you
represent the kingdom of heaven, why would you be walking around
with the bare minimum? I'm going to stop there. I'm going to
keep going. So I'm going to jump into trademarks. Now I'm going
to stop there. But I just want you to understand that. So when
you look at like the VIP, and you say, how am I getting all of
this information for only 195? Or like this course for only 95?
Because you are worth the investment. And I honestly
believe that. And that's why I'm doing this for you. Okay, now
some people have asked this question of, hey, can I get into
VIP? You can Larissa, can you just drop the link? I'm going to
let people get into that. I did shut it off already. I'm going
to reopen it because people are hearing from you what that's
really about. And they want in. And so if you could drop that
link, it's still there. It's still the 195. The recordings
are there. Access to the challenge you'll have for 90
days if you're in the VIP. Plus, you'll have access to the videos
for the VIP as well for 90 days. If you're in the challenge, you
have access to the videos for 30 days. All right. And with
that stuff, I am going to jump in because we've got a good
amount to cover before Paula gets here. But I'm not going to
go too fast. I just want you to get familiar with a few things.
Before we start jumping into things like trademark searches
and trademark applications. Okay, let's go into the first
thing. If you get a federal registration for a trademark,
all right. Oh, I should actually explain why I'm wearing this. I
don't usually wear these kind of things. All right. So you see
the thing I'm wearing here? Let me bring the camera down a
little bit. Okay. This here, this is the jacket that Pedro
gave out for the masterminds, the people in the master's mind.
All right. Why am I wearing this? Because you see the icon,
the logo here? Do you see a TM anywhere? No. All right. Now,
why am I doing that? I'm not doing that to criticize
anything. The reason why I'm doing that is because I'm
teaching you what the law says. But you need to make a business
decision in everything you do. You need to determine whether
or not you want to use a circle R or if you want to use a TM or
if you believe that using the circle or the TM actually
changes the public impression of that logo. All right. What do I
mean by that? When you look at Denon and Moran's high end audio
equipment, you're never going to see a TM or a circle are next
to their names ever. They will not do it. I represent them
both. They sell things like receivers from $500 to like
$50,000. Plus, you will never see a TM on their stuff. They
won't do it. Now, they're still following trademark
applications. I'm still getting them registrations. But they've
made a business decision that they like how clean it looks
just the word Denon. They love that look. And so you have to
make while I'm teaching you what the law says, you have to make a
business decision. Sometimes you're going to say you know
what, this looks good just the way it is. I don't want a TM on
it. I don't want to circle are on it. So I'm going to leave it
just the way it is. And that is a good business decision at
times. Other times, you know, there's going to be a lot of
competition that is going to copy what you have. So
therefore, what are you going to do, you're going to use the
circle are to make sure people understand and they back off.
So that's I'm teaching you what the law is. Now you go forward
and you make up your own mind as to what you want to do with
that. Okay, just understand if you don't use the circle or the
TM, you're going to have trouble getting damages. And that might
not be an issue for you. That's just that's up to you and your
own companies. Okay. I just wanted to cover that because
when I saw this in my in my closet, I thought what a perfect
example of understanding the law, but making a business
decision. Understanding the law does not necessarily mean that
you're going to follow it all the time. All right, I'm
teaching you the tools to make that decision. It's up to you if
you follow that decision. Okay, let's go into the first thing
that I think is going to be
be really, really helpful for you.
If you get a federal registration on a trademark,
oh, and by the way, we're covering copyrights tomorrow.
So that's when we're gonna go into things like artwork,
books, website protection, your copy,
you know, those kinds of things.
So if you're in any of those fields,
you're definitely gonna wanna be there tomorrow
because we're gonna go very deep into that.
I'm gonna give you real life examples
and I'm gonna show you how to file
a copyright application online as well, okay?
So let's go back to trademarks for a second.
And if you get a federal registration,
what is one of the most annoying things that will happen?
You get the registration,
all of a sudden somebody gets the domain name
for the exact same name.
That is so frustrating.
Like you come out with this incredible name
for your company or your product.
And you think this is great.
And then you try to get the domain name
and it's not available.
Now, I'm gonna teach you a little something.
Do not go to these domain name selling points
and type in the name of the domain
that you're interested in
unless you're gonna buy it immediately, all right?
Why am I saying that?
A lot of them actually have what are called spiders.
They have software in there
and they detect how interested people are
in a specific domain name.
So if you type it in,
and by the way, I would suggest that you use,
what is it, Namecheap?
I think that's the one I use a lot.
Love them.
Oh my gosh, everybody, 8.95, 8.95 a year.
I mean, ridiculous.
Go to Namecheap, you know?
And I'm not affiliate or anything.
Like I'm serious, like they're so cheap.
Namecheap, there you go.
So I would use them because it's only 8.95.
You can get your registration.
But this is what happens.
If you go online and you type in
the name that you're interested in,
but you don't buy it at that moment,
what a lot of them use is a filter or a software program
that determines the interest in it
and the price goes up immediately if you don't buy it.
So something that you searched yesterday
may in fact go up by $100
because they now know that there's an interest
behind the name.
So go out there, do your trademark searches,
which I'm gonna show you today,
how to do a trademark search.
You all know how to do a trademark search after today.
But after you do your trademark search,
when you go on that domain name site,
make sure the second you look it up,
if you're interested, you buy that immediately.
My gosh, it's 10 bucks for the year, you know?
And some of these have a package where you buy five,
10 years and it only costs you like 50 bucks, 60 bucks.
I mean, that's pretty incredible.
So that's one hint I wanted to share with you.
So if you get the domain name,
I mean, if you get the federal registered trademark,
go get the domain name immediately, right?
But here's the thing.
What if you go and you have a federal registration
and then three weeks later,
somebody says, oh, I know that Susan,
Susan has this really cool name for her products
and she talked about it.
So I'm gonna go buy the domain name, all right?
Now here's the thing.
Susan, because she was here
in the Protect Your Idea Challenge,
now realizes that she could actually file
what's called a domain name dispute with ICANN, okay?
And I'm gonna show you how to do that, okay?
I'm gonna show you actually how to walk through this.
I'm gonna give you the link.
You can do some reading, some extra reading later,
but I'm dropping in the, let me copy and paste it now.
Here's a link for it.
What this policy says,
what this company does, ICANN,
is it says that if you have a federal registration
for a trademark and somebody else uses that exact same name
in their domain name,
you can actually file a domain name dispute
against them under ICANN.
And when you win,
because they're using the exact same domain name,
they have to release it to you.
So how do you use this in business?
It's pretty cool.
This is what you do.
If somebody actually buys up your domain name
that's associated with your federally registered trademark,
you send them a letter,
and I will actually use a lawyer for this,
but now you understand what to do.
You send them a letter,
and the letter says if they're actually using
that trademark for the same goods or services
that you have associated with your trademark,
then what you say in that letter is
you're committing trademark infringement,
but separate from that,
you can say you're also in violation.
of the ICANN rules and I'm going to file a domain name dispute against you.
All right, you add that as well.
And at the end of that, I will own your domain name.
So your option is, A, surrender the domain name to me.
I see April smiling. Surrender.
You will surrender and give me your domain name.
I'm teaching you how you're changing from a position of defense to offense very quickly.
So you send them a notice letter and you let them know,
hey, I actually own this federally registered trademark.
It's mine. Your domain name's for the same thing.
You need to stop immediately.
And what do they do?
If they actually look this thing up, they should go, oh, wow.
Okay, that's a big deal.
Now, 50% of the time, that'll work.
Just to be clear, that doesn't work all the time.
Sometimes you have these people in foreign countries that are just buying up tons of domain names
and trying to sell them and they're very hard to catch.
It's kind of like that annoying mosquito where it's dark and you're like, ah,
and you can't get them and they just keep biting you and it's so annoying.
That's what they're like because you can't kind of grab them to stop them.
And if you run into that in VIP, I can tell you how to get after those people.
You can actually go after the domain name registrar themselves,
and you can go a back way to stop them from using your domain name.
I do that for a number of clients.
So I just wanted to share that with you.
Is that helpful?
Type in the chat if that's helpful.
So if somebody actually has a domain name that's the same thing as your federal registration,
that's how you take care of that.
Just follow that link.
All right, awesome.
I'm glad this is helping.
And it's not legal advice.
That's awesome, John.
Thank you, John.
John's my attorney.
So that's the first part I wanted to share with you.
Now, I'm going to walk you through how do you determine whether or not there is trademark infringement?
Why is this important?
Because the very next thing I'm going to teach you after this is specifically how to do a trademark search.
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
that there would be a likelihood of confusion in the public's eye regarding the goods or services associated with the trademark.
What in the world did I just say?
Okay, so this is a phone, right?
There's a phone.
Now, this is by Samsung.
Don't be mad at me.
It's a Samsung.
I see some of you are offended.
It's okay.
It's going to be okay.
So this is a Samsung.
Now, what if I decided to call this iPhone, right?
That's a problem.
Obviously, it's not an iPhone, right?
That's a trademark of another party.
But if I put that name on here, there's a confusion as to the source of goods.
People believe all of a sudden that this belongs to Apple, right?
That's called trademark infringement.
Why?
You have to do an analysis.
You have to figure out what are the things that people look at when they look at this phone and they see that trademark.
What are the things that they look at that could lead to confusion?
I'm going to walk you through each of those pieces one by one.
Why is this important?
Because the trademark searches that you're going to do, you're doing a search to determine if you can use that trademark.
So if I come up with a brand-new name, nobody's ever used it.
Fashir.
Pretty sure nobody here has ever used that name, like ever.
Okay?
Okay, somebody has.
All right, maybe somebody has.
But Fashir, let's say I come up with that name, and it's for cell phones.
Now, I want to see if I can use that name.
So I want to do what's called a trademark search.
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.
Does that make sense?
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.
So I'm going to walk you through the elements that are looked at to determine trademark infringement.
Then I'm going to show you how to do a trademark search.
Okay?
We're going to do that very slowly, but it's really important for you to understand this part in particular.
So with that, Larissa, can you drop – actually, I can drop it.
It's so fast.
I already got it.
Right-click, paste.
I'm going to ask you to drop link number three, but I've got it already.
Right-click, paste, enter.
Okay.
What I've provided you with right here is a list of the likelihood of confusion factors.
All right?
This is a breakdown of each one of them one by one.
This is what you actually look at to determine whether or not there is trademark infringement.
Okay?
So what I'm going to do with you is I'm going to walk through each of these factors one by one.
Why do you consider these things? You consider these things so as to determine whether or not
you potentially could be sued for trademark infringement. So I'm sharing my screen right now.
I'm going to make this larger. Can everybody see this? Okay. Whoa, that got big real fast.
Minus, minus, minus. There we go. Can everybody see that okay? Okay, great. All right. So
you have this in an attachment right now. I just gave you the Google Doc. You can look it up.
I'm also going to post it in the Facebook group. So you'll have it later. Okay. So you can just
watch for now. So these are the things that you look at to determine whether or not you are
potentially going to be sued for trademark infringement. This is the analysis that I do as
a litigator. All right. So this is the analysis that you want to do before you use a trademark.
Why? Because if you use a specific trademark and somebody sends you a cease and desist letter,
this is the analysis that's going to be used to determine whether or not they'd win in court.
All right. So the first thing you look at is the similarity or dissimilarity of the
marks in their entirety, such as appearance, sound, commercial impression. What does that mean?
Do the words sound the same? So iPhone, iPhone. If I file a trademark application for iPhone,
and Apple already owns the trademark iPhone, do they look the same? Yes. Do they sound the same?
Yes. So those are two things that you look at right off the bat. And then what's the public
impression with regard to that word? So if it's, if it has a negative connotation, like, let's say,
let's say, like, thief, let's just say that, let's say the trademark was intellectual thief,
that has a kind of a connotation. It's kind of like a negative connotation behind it. So it's
also the commercial impression. How do people feel when they see that word? If people feel
really negative about one word, but then the other one, they feel really positive,
then there's a different commercial impression. So there's a lower likelihood of confusion.
All right. So in this analysis for likelihood of confusion, and I'm getting very technical with
you. So I just want to make sure I'm taking this slow with you. In the analysis for likelihood of
confusion, you're determining how many, how many of these factors are yes. And if there's a lot
of yeses, there's a high chance that you're going to lose in a trademark lawsuit. So you're
If there's a lot of yeses, there's a high chance that you're going to lose in a trademark lawsuit.
Why is this important? It's important because when you do a trademark search, and you find a
trademark that's similar to the one that you're thinking about, you're going to look at these
factors, you're going to say, Oh, my gosh, thank goodness, Peter gave me this sheet.
Let me pull out the sheet. Now let me compare the trademark that I just found on the USPTO website.
And let me look at each of these factors one by one. Does it look the same? Are the words the
same? Does it sound the same? Do you see what I mean? That's how you're going to use this in a
trademark search, which we're going to do in literally two minutes. All right. The next thing
you look at is are the goods and services similar? Three minutes. Thank you. Are the goods and
services similar? Okay. When you file a trademark application, you have what's called a recitation
of goods and services. That's where you describe what exactly it is that the trademark is covering.
So for a trademark application for an iPhone, it would say cellular phones, right? Or it wouldn't
say laptops, because iPhone is not provided for covering of laptops. It's used for cell phones.
For that reason, the recitation of goods would say cell phones. That simple. It would be a class
nine filing likely and it would say cell phones. All right. And I'm going to show you how to
determine your international classes as well. Okay. The next thing, is there a similarity
or dissimilarity with regard to the trade channels? What does that mean? Are they both
sold at target? Would your product be sold at target and the product that is already covered
by that trademark both be sold at target? Or can people only order what you're selling if they know
you personally or order it from your website only? That's a different trade channel. Okay.
Would the products that are covered by that trademark, iPhone, iPhone, would they both be
sold side by side in the same store? That's what you want to look at. If the answer is yes, there's
a high likelihood of confusion because the public consumer would see two different products by two
different companies that have the same name. That would lead to a likelihood of confusion. Okay.
The next one is, is it an impulse product or is it something that you're very careful about purchasing?
So if the product is
$9.95, $9.95, that's an impulse product.
If it's $9,995, that is not an impulse product
unless you're filthy rich, okay?
Because most people don't just kind of walk into a store
and say, hey, you know what?
I'm going to drop 10 grand on that.
Yeah, sure, why not?
It's like, that's something you're going to focus on.
That's not an impulse product.
If it's an impulse product and the names are similar,
there's a high likelihood of confusion
because people aren't spending a lot of time
analyzing the products to determine
who's actually creating them.
They're just seeing the name.
Oh, iPhone, boom, I'll take it.
That's it, all right?
But if that product is $20,000,
I guarantee you're going to spend more time.
Okay, I'm going to go into maybe two more of these.
Strength of the market.
There's a company out there that sues literally anybody.
Somebody type in the chat what the name of the company is.
They sue literally anybody that uses MC
with any other word.
And it's associated with food,
it's associated with clothing,
it's associated with all sorts of different goods.
That's just what they do.
It's McDonald's.
You start using Mc, like Mc,
Mc, McShip, McBurger, Mc anything,
you will get a cease and desist letter
from their lawyers immediately.
How do I know this?
I've represented many companies against McDonald's.
We've been very fortunate in being successful,
but the fact of the matter
is that they're very protective of their trademark.
Thank you, Larissa, I got you.
We're all set, thank you.
All right, and I'll go into one other of these,
and that's the number and nature of similar marks.
So if the trademark that you're going after,
if there are many, many, many other trademarks
that are listed with the same name,
so let's say that the name is,
let's say it's Nike,
but let's say that there's a Nike Globe,
there's a Nike Burger, Nike Rib,
boy, I must be hungry, I keep talking about food.
Nike, like all sorts of different Nike this,
Nike that, Nike that, right?
You know, it's probably
because I'm drinking this juice right now.
That's probably why I'm asking for food, right?
So there's all these Nike things out there,
and then you decide, you know what?
I'm gonna use Nike, I don't know,
Nike House or something like that.
And then Nike reaches out to you and says,
hey, you're committing trademark infringement.
One of the defenses you can use
is that their trademark has been what's called diluted.
What that means is everybody
is using their trademark already.
Why in the world are they going after you?
Now, that's not really a strong defense,
but it's something to use in your correspondence
with the other party.
It's showing that their trademark is not very strong, okay?
Now, if instead, is that right, Braylon?
Nike is to overcome, get out.
I didn't know that.
In Greek, means to overcome.
That must be why that example keeps coming up.
That's amazing.
Yeah, so what that really means to you
is that if you're looking to use a certain name
that's been used over and over and over
by a lot of different people,
it decreases the strength of their trademark.
I wouldn't suggest that you use it
because I don't want you to get in trouble,
but at the same time,
just understand that their strength is a lot lower, okay?
Now, secondarily, if it's a trademark that is used
like Microsoft, Microsoft Excel, Microsoft Word,
Microsoft this, Microsoft that,
that's a powerful trademark
because it's exclusively used by them.
So if you use the word Microsoft on anything,
I guarantee you, you're going to get sued
because it's a very powerful trademark.
And your chances of getting away with stating
that there is no likelihood of confusion is close to none
because it's such a strong trademark.
So when you're doing an analysis
for likelihood of confusion to determine
if you can use the trademark that you want to use,
you gotta be careful to make sure that the trademark
that you're comparing yourself to
is not a powerful trademark.
If it is, there's the standard
to determine likelihood of confusion
in that specific case goes lower, lower, lower.
It becomes easier to determine
that there's a likelihood of confusion
because their trademark is so strong.
The trademark is weak.
It takes more to prove
that there's a likelihood of confusion, okay?
I'm going to show you something for two minutes
and then Larissa, Paula's here.
Oh, that's wonderful.
That is wonderful.
Okay, great.
I see you.
Hi, Paula.
We're going to take two more minutes
and then we're going to jump in, okay?
your time. Thank you, my friend. All right. So let me share something with you.
I'm going to share something with you because I think this is going to make your lives a lot easier.
Okay, let me share my screen with you.
Share. Okay, can everyone see my screen right now?
Okay, this is the United States Patent and Trademark Office website. Larissa,
can you drop the link? It's the USPTO.gov site. In here, you'll see right up here,
you see the word trademarks? You click that button, or you can go right down underneath
the application process and go right to searching trademarks. You see that?
You click on searching trademarks. Right at the top here, under search trademark database,
there's a link. It says trademark electronic search system. You can click that, or you can
click this button underneath it that says search our trademark database. Either one.
When you click that, you come to this screen. Select the search option. Okay, I'm going to
walk you through this quickly now, and then in VIP, we're going into it again in more detail.
I want to walk you through this. You see there's three options. I would only choose one of these
two here. The basic word search, which I'm going to show you right now. It opens this screen here,
and all you have to do is type in the word that you're interested in, whatever it is.
I own Protection Portal, right? I have an application out there on that.
But if you so chose to look up... Actually, here's one. Challenge
Whisperer. I actually own the trademark Challenge Whisperer. That's actually my
trademark application. I filed it about nine months ago, which is being federally registered.
Now, if I search for that name, under the field, you see the option combined word
or registration number. You're not going to use that. Or the owner. Let's say there's a
certain person that you're interested in, and you want to know if they have a trademark. You
can type in their name and then search for a trademark. But in here, you're just going to do
a combined wordmark. So that's it. Challenge Whisperer. I submit a query, and what do you
know? There it is right there. There's my trademark application. It pops right up.
There's the wordmark. There are the services right here.
Registration of goods and services. All broken down for you. So it says that it's class 41,
which is associated with services for educational services, namely conducting online courses,
classes, seminars, workshops, and conferences, and providing mentoring, all in the field of
business, marketing, advertising. If any of you are doing coaching, and you're filing your own
trademark applications, you have my permission to use my recitation of services. I'm giving you
my permission right now, and it's recorded. You can go in and copy mine. This is very good. This
is a really good summary. If you're dealing with doing challenges, and you're coaching,
you're going to want to look at my recitation of goods and services. I've done this for many years,
25 at least, and so you have my permission to just copy it and file it in class 41.
So with that being the case, you'll see, what did I do here? I filed it as a 1B. Remember yesterday
how we talked about an intent to use application? It's a section 1B application, okay? Because I had
not been using it yet nine months ago. I'm already using it now, so now I can file to change it from
a 1B to a 1A, okay? And so this is how you do a trademark search. Very simple, very simple.
This is how you change from giving your attorney 10 names to search to giving them three,
because you'll knock out a bunch of them by just typing in the name real quick,
all right? Now I'll show you real briefly for one minute this link over here, the second one.
This is called a structured search, okay? Here you have different options. You can select
the trademark itself as the full mark, but you can also select the goods and services
associated with it. So remember how we mentioned Nike, N-I-K-E. The operator over here you want
to change over to N, because you want to search both the word and you want to search the recitation
of goods or services associated with it, okay? So now I come down here and I say,
well, it's Nike associated with what? Shoes. And I submit a query. And there you go. Nike.
Athletic shoes. See how it popped up right around
Right away, last listed owner, Nike.
Now, what if instead I said Doors?
Nothing comes up because the name Nike
is not associated with anything associated with Doors.
It's associated with shoes, foot apparel.
So if I just type like maybe foot,
maybe it'd even come up there.
Nothing came up there.
Now, this is why it's important to make sure
that the trademark that is most important to you,
and this is what I'm going to close on
before I pull in Paula,
the trademark that is most important to you,
you do want to speak to an attorney about, okay?
So if you start out with like 10
and you break it down through this site,
you break it down to like three that are most important,
give those three to the attorney to look at
because had you used the word foot instead of shoe,
like if I type in foot apparel,
now it comes up.
See, now I can see Nike.
I can see registrations for Nike, right?
But before, when I typed up just foot
because I chose a search term
that wasn't perfect for the database,
I came up with nothing.
So all of a sudden I thought, well, Nike's free.
I can do whatever I want.
No, you can't because the second you make shoes,
you are going to get sued.
So this is why I'm saying that the USPTO website
is phenomenal for doing basic searches, very basic.
Meaning if you have 10 trademarks,
you want to break it down to three
that are most important to you.
You can do that.
You can knock out things very quick.
So what you give to your attorney
are the most important things.
And that's how you maintain a strong relationship
with your attorneys.
And you only use them for things that are most important
because they charge a lot of money.
I know because I know a lawyer, right?
And I know at least another one who's on the line here,
which is fantastic
and who I'm going to introduce you to right now, okay?
So did that help?
Does everybody understand the basics of a trademark search?
Now, what I'm going to do for you tonight,
just because I love you guys, you guys are amazing.
I love the interaction that I'm having with you.
What I'm going to do tonight
is I'm going to do a live in the Facebook group.
And I'm going to do us,
I'm going to do different types of trademark searches
for you.
And I'm going to save the video in there for you as well.
Okay, just because I know you are coaches,
the majority of you are coaches.
So chances are,
you're going to be talking to your people about this.
And so I really want to make sure that you really get this.
So while I showed you the basics,
there's some really neat nuances that you can do.
I'm going to throw that in and just give you that info.
Now in VIP, we're going to go really into deep dives,
but at least in the Facebook group,
I'm going to give you a little more.
All right, so tonight you can look out for that.
And hopefully that'll just bless all of you, okay?
Do you guys like that?
Will that help you out?
Yeah, okay, great.
And with that, Paula Clancy, my gosh.
So I have the incredible privilege of introducing you
to somebody who is a, gosh, been a friend, colleague,
a remarkable attorney.
She has run her own law firm.
She's with Galling,
one of the largest and most powerful IP firms out in Canada.
She's a partner there because they actually reached out
to her and said, will you please come back?
So, and she's very humble,
so she won't tell you any of this.
So I have to give you all the intro
before I actually introduce you to her
because I'm embarrassing her right now.
So with that, Paula Clancy, welcome.
Thank you so much for being here.
She's going to help us kind of talk a little bit
about Canadian trademark law,
differences between US and Canadian trademark law.
And the main reason why I'm doing this is because
a large number of you are doing business in Canada,
and there's a good number of you
that actually live in Canada.
And so when I sent out that survey,
which I always do for a challenge,
I asked what countries are you most interested in?
Number one was Canada.
And for that reason, I asked my friend, Paula,
to come on live with us and she volunteered to do that.
So Paula, I hand the mic over to you.
Thank you for being here.
Can't hear you yet.
Larissa, we could hear her before, right?
We could, right when she started, Paula?
There we go.
It's registering.
Try that again, Paula.
We might have to do is have you dial in by phone if it doesn't work.
Yeah.
Oh, yeah.
We got you.
There it is.
Praise God.
That's awesome.
Yeah.
Thanks.
Sorry about that.
I mean, if it was in this pandemic, we'd have figured out Zoom, but it happens every time
where there's a glitch.
So my apologies for that.
I'm glad we're live and direct and you can hear me.
So thank you so much, Peter.
Thank you for your kind words.
So sweet.
And I'm so delighted to be here and hopefully give you a little bit of useful information
on the Canadian trademark process.
So for those of you who are becoming familiar with the US trademark process, Canada's process
is very similar.
So there's going to be a lot of things that are identical in terms of the stages of prosecution
through to registration, the term of registration, the types of things that the office will object
to, just like Peter showed you in terms of preliminary searches that can be done on the
Canadian trademark office database.
And if you Google SIPO trademark database, SIPO standing for Canadian Intellectual Property
Office, and Larissa, maybe you want to just put that in the chat, SIPO trademark database.
If you Google that, you will land on the Canadian trademark database and you can run some preliminary
searches.
Now, as Peter mentioned, the search functionality of these publicly facing databases is very
limited.
So it's fantastic for ruling out obvious obstacles, but once you've narrowed it down to your top
one to three marks, it's a good idea to have a trademark professional help you just determine
that there's not going to be any issues with your trademark.
So I'm going to just tell you a little bit more in detail about the Canadian system.
One thing that's important to keep in mind is that Canada and the US are each other's
largest trading partners.
So many of the channels of trade that you have in the United States are similar if not
identical in Canada.
So if you're thinking of protecting your trademark in Canada or in the US, it makes sense to
protect it in both jurisdictions.
And that way you have all of North America locked down, so to speak, once you eventually
get the registration.
Oftentimes companies in Canada will think only of their Canadian trademark application
and will forget the US.
And then what happens is three, four, five years later, as they grow in Canada and wish
to expand, they find out that the mark is no longer available in the US and vice versa.
The same thing can happen for American companies.
So it's a really good idea to be thinking of both jurisdictions.
And that way you get a good geographic coverage throughout all of North America with the exclusion
of Mexico, but really good coverage in jurisdictions that tend to do huge amounts of business together.
So it's something to keep in mind.
Canada is also a relatively inexpensive jurisdiction vis-a-vis the United States.
So the USPTO charges, I believe, and Peter, correct me if I'm wrong, I think it's 275
US per class of goods and services.
In Canada, each additional class is 101.
It's a very odd number, 101.80, very Canadian number.
I don't know why we took it down to the cents, but we did.
And that's the official fee for additional classes.
So the first class is 335.
And then any additional class is $100 Canadian, which in US dollars is about $80.
So it's far less expensive.
There's no registration fee on top of that.
So in terms of official fees, that's about it.
So if you're an American company, it absolutely makes sense to think of Canada, especially
because it's not prohibitive from a cost perspective.
One thing you should keep in mind is that Canada, like the US, is also a common law
jurisdiction, which means that trademark rights derive from use.
So even if a mark does not appear on that SEPO trademark database, there could be someone
out there with better rights to a trademark by virtue of having used the trademark first.
So that's what a trademark professional can help you with, is in conducting searches,
we normally do run some common law searches just to see what trade names.
they're in use out there, what domain names are active,
what internet references for the mark are found
and that sort of thing.
So, yeah, that won't be an unfamiliar concept
in terms of the common law rights.
Some other jurisdictions like France, for example,
they don't have this concept of common law rights.
In France, your rights to a trademark
derived from registration of the mark.
So if you've used it and never bothered to protect it,
you may lose your rights in the mark.
But Canada and the US, the trademark right itself
derives from use and so that you could encounter
prior unregistered users that could be problematic.
And we've seen that a few times in the US as well
for some Canadian clients where someone, you know,
crept up out of the woodwork and said,
hey, I've been using this mark in California
and I'm gonna oppose your application
because I have better rights.
So keep that in mind.
Canada is very similar to the US on that front.
Just for a minute, I just wanna jump in here.
So yesterday, remember yesterday,
how much time we spent on this very issue?
This is exactly why.
Canada is very similar to the United States in this area.
So just like we went through with the example
with John yesterday,
if there are certain trademarks that you've been using
and a person sends you a cease and desist letter,
don't freak out, get the analysis done.
It may be that you can continue using it.
I just posted this morning in the Facebook group,
a specific example of a company that makes burgers
that was allowed to continue using the trademark
that is being used by a monstrous conglomerate corporation
that we all know about.
I'm not gonna say who it is.
So everybody go in the Facebook group
and watch the video, all right?
It's an actual case, federal district court case,
and they won against this monster that we all know about.
It's a very important issue.
The other part I wanted to just raise,
Paula, just thank you so much for mentioning this.
You can actually have professional trademark searches done.
Okay, so in those professional searches,
they'll actually search for common law usages as well.
So when you're searching on the USPTO website,
when you're searching on the SEPA website,
what you're actually gonna be looking at
are federally registered trademarks,
but also trademark applications.
Well, what about things that kind of sound similar,
like if they're fanatic equivalents?
Sometimes they get picked up in searches
and sometimes they don't.
But one of the things that you consider
in determining if there's a likelihood of confusion
is does it sound the same, right?
Does it look the same?
Those are two of the factors we just talked about
for likelihood of confusion.
So if you're searching for the word,
let's say PAIR, P-E-A-R,
but somebody has a federal registration for PAIR, P-A-I-R,
will they sound the same even though they look different?
There may be a likelihood of confusion or there may not be.
You need to know.
And this is why a fanatic equivalent search is important.
But even further, you may not be aware of people,
a mom and dad, a mom and pop shop
that's using the name that you're interested in.
Those things may come up in an actual professional search
by, as an example, Thompson Reuters,
like a Syrian search that they do.
And I'll post that in the Facebook group tonight
for you as well.
So you can know who you can actually hire
to get a professional search done.
So what I've been teaching you
is how to do a quick knockout search
to bring it down to the things that are most important
so you're not spending $800 a pop
for an official search.
You're only spending nothing.
You're actually spending nothing
to knock it down from 10 to three.
Then you can do your official searches on the three
and pick the one or two that you're most interested in
and then go to your attorneys.
See, what I'm trying to do is not knock out the attorney.
What I'm trying to do is make you use the attorneys
the way they should be used.
You don't wanna go to attorneys to speculate.
Attorneys are great at speculation.
They will tell you everything
that is potentially related to your situation.
You wanna go with a specific issue.
This is what I want.
This is what I need.
This is the terminology.
Now they know what to focus on.
That makes them more effective for you
and decrease your cost and makes it so that quite frankly,
you're gonna do better in the long run.
So Paula, sorry for that.
I just wanted to share that.
No, that's absolutely right.
And the more due diligence you could do at your end
in advance, the better position
and the more you'll have a sense of the market.
And as Peter said, when you go to the lawyer to seek advice,
it'll be far less expensive and you will be better prepared
because you will have a good sense of what's out there.
And then you'll just need the lawyer to do
like the in-depth analysis.
The search houses that Peter talked about have.
really sophisticated algorithms that'll find,
I mean, there's always limitations.
They can't rule out all risks,
but they are very in-depth searches.
And so that you can eliminate a vast majority of the risks
by running these in-depth professional searches.
But again, you don't wanna do 10 of those.
If you can knock out some marks in advance,
better to do so with your own due diligence.
And then by searching, you kind of get a sense of,
there's a lot of usage out there of something.
Do you really wanna adopt it as a trademark?
Or is it almost to the point where it's become generic?
And those are things that you can learn
from you doing your due diligence.
Right.
So Paula, what would you say like,
when you're comparing US law and Canadian law,
what would you say if you wanted to say,
well, Canada has this, the US doesn't have that.
Is there anything in particular that you would say,
this is definitely different, you should know about?
I know the timeline issue is one thing that's major,
but is there, maybe you can talk about that
and if there's anything else there.
Oh, she got muted.
Has to unmute.
All right, try it now.
There we go.
For some reason I was muted.
Okay, yeah.
So definitely now I'm gonna let you know
about some of the differences.
So the first key difference,
and this is what Peter alluded to, is the timeframe.
In the United States,
you could probably get from application to registration
in what, about a year, maybe a little over a year?
Yeah, it's about a year.
Yeah, in Canada, it is taking three plus years,
maybe three and a half years to get to examination.
So it is a huge delay
before you will get your registered trademark.
So that's something to keep in mind.
And then that actually adds value to your searches
because you don't wanna find out three and a half years
from now that you have a problem with your trademark
after you've spent all kinds of money promoting your brand,
buying up social media handles and domain names
and this and that, and creating goodwill
only to find out you're gonna have a problem.
And that's one of the big issues for brand owners
with the Canadian delays right now.
And those are caused by a number of factors.
Of course, the pandemic was one of them.
SEPA was primarily a paper office,
unlike the USPTO, which was paperless.
So it was particularly hard hit by the pandemic
when everyone had to go and work remotely without paper.
I mean, it was just a bit of a gong show
at the SEPA offices.
On top of that, in 2019,
Canada went through a major change in its laws,
which required administrative changes
and retraining of examiners and that sort of thing.
So keep in mind that in Canada,
it's taking a long time
to obtain registered trademark rights.
The other thing, and this is not too different
from the United States,
but SEPA is even more particular than the USPTO
in terms of requiring specificity of goods and services.
So in the USPTO, the examiners will often raise issues
with the description of goods
if they're not narrowly defined or specifically defined.
If you think it's bad in the US,
it's 10 times worse in Canada.
That's the most common type of objection that is raised
that the goods are not in ordinary commercial terms
or that they're too vague.
And for this, I would suggest you can avoid this issue
by going to the SEPA database again,
and it's called the Canadian Goods and Services Manual.
I understand the USPTO
has a similar Goods and Services Manual.
If you Google SEPA Goods and Services Manual,
you will see the list of pre-approved goods and services
that have been accepted by SEPA as acceptable descriptions.
Now, caution when using the manual is that the description...
Sorry, it must be me.
I'm pressing a button that mutes me.
Caution when using the Goods and Services Manual
because there's a lot of duplication
and there's descriptions that are unduly narrow
just because it's such a long list of goods and services.
So when reviewing that,
always try to pick the broader description.
If you can get away with athletic clothing,
use that description as opposed to shorts and shirts.
Athletic clothing is broader than shorts and shirts.
It could include any kind of clothing used for athletics.
So keep in mind that it's a play between you and the office.
You want to keep the scope of the description
as broad as possible
because it expands the scope of your registration
and the office is going to try to narrow you in.
So even when you're looking through
the Goods and Services Manual,
think along the lines of,
if it's in the manual, it's acceptable.
why not choose a broader description if it's available?
Yeah, just to elaborate upon what Paul is saying,
remember yesterday how I mentioned
you can't add new things, right?
Once you file a trademark application,
you can't add something new.
So you can't file for, let's say, high-heeled shoes,
and then all of a sudden say,
well, I wanna add hiking boots.
Like, you can't do that.
But if you file the application for shoes,
then by all means, you can narrow it down
to hiking boots and to high-heeled shoes.
So that's why you have to be very careful
when you file your trademark applications,
which we're doing in the VIP very shortly.
You have to be careful
when you choose your recitation of goods and services.
If you make it so narrow in your initial filing,
you may have pigeonholed yourself so tightly
that something that's related you can't get.
So what happens is you end up having to file
a whole new trademark application.
Even though it's the same name and it's related goods,
those goods are not covered.
So therefore, you're filing another application
for the same name, same international classification,
but you have to add this one good.
Because you said handbags instead of backpacks.
Like, it's just, why not just say bags?
And then you can say, go ahead, Paula.
No, I was just gonna say,
one example that I always like to give clients is,
because in Canada,
summary cancellation proceedings are available.
And I'll get into that in a little bit, just very briefly.
But registered trademarks, if they're not in use,
they can be challenged and canceled.
So you have to make sure you continue to use your mark.
One case that came before the opposition board,
it was a cancellation action.
The applicant or the registrant in that case
had claimed roasted and raw sunflower seeds.
They could show use in relation to roasted sunflower seeds,
but not raw sunflower seeds.
So the trademark registration was partially canceled.
If they had claimed sunflower seeds or seeds,
they wouldn't have had this issue.
So keep in mind that you can be the author
of your own misfortune if you select goods
that are descriptions that are too narrow.
And as Peter said, once the application is filed,
you cannot expand the scope of goods.
So sure, you can file a fresh application,
additional costs.
Now you have two registrations to maintain,
to renew, to monitor.
So it's better to be as inclusive as possible.
Now, this leads me to an important difference in Canada
between the USPTO and SIPO.
In Canada, you do not need to file specimens of use.
You do not need to declare whether your mark has been used
or whether you have an intention to use.
In Canada, that is no longer necessary since 2019.
What does this mean?
This means that you should be forward thinking.
Even if you haven't started using your mark in Canada
in relation to certain goods or services,
you might as well include it in the application.
You're not gonna be required to show a specimen of use.
You're not gonna be required to file a declaration
or a sworn statement of use.
You can merely have an intention to use the mark
and that's sufficient for the purposes
of getting the mark registered.
Now, once it's registered,
if you're not using your trademark
in relation to those additional goods and services,
it could be challenged, like I mentioned,
with cancellation proceedings, which are summary in nature,
and you might lose those goods.
These challenges can only be raised
after the third anniversary from the date of registration.
So your registration could be challenged
if you're not using, but at the same time,
you're better to be forward thinking at the time of filing,
especially since it's taking so long
to get to registration in Canada,
and say, what kinds of goods and services
could I possibly expand into in the next,
call it five years,
and then include those in the application.
So try to be as broad and comprehensive as possible.
Okay, so this issue that Paula just raised,
and I think I'm gonna close on this,
and then we can go into the VIP after.
For those who are in VIP,
you can ask directly Paula specific questions
with regard to your companies
and whatever you're trying to understand.
But this one issue that she's talking about,
very different from the United States, very different.
In the United States, you don't get a registration
unless you're actually using every single good or service
that's listed within your recitation of goods and services.
That's the only way you can get a registration.
If you go and you say, well, I'm already using it,
but you're not,
you're actually committing a federal offense.
You're lying.
Because in your declaration that you filed
with the United States Patent and Trademark Office,
you're stating that you're using that trademark
for every single good.
it in every single service that is listed.
So if you follow section 1B, intent to use application,
which we talked about yesterday,
which we talked about a little bit today,
and Paula actually highlighted that as well,
you're seeing how important this is.
So if you follow an intent to use application
in the United States,
you cannot change that into an actual registration
or turn it into an actual use application under section 1A
until you actually start using it, right?
So that means you will have a pending,
allowed yet not registered section 1B
intent to use application
until you change that into an actual use application.
So you have to use it on every single good,
every single service.
When you do that, you get the registration in the US.
Canada, different.
Canada, you can get your registration to go through.
Now, you may not have used it yet on handbags.
So somebody who wants to use that trademark on handbags
may challenge it and say, hold it,
you're not using it on handbags.
And so once that's raised, Paula,
what happens if that actually happens?
If you're not using it on something
that's in your recitation of goods and it's challenged,
what would happen?
So you can either respond to the challenge
showing evidence of use or evidence
as to why the mark was not used in relation to handbags.
And it can't just be what we didn't get around to.
It has to be some extraordinary circumstances
to justify non-use,
or you can just agree to strike it from your registration
and then keep it simple and less costs.
So you can defend it, or you can just,
either way, even if you don't take action,
if you don't show evidence of use,
the office will strike those goods from your registration
if you have not made the effort to establish use.
So, I mean, use isn't,
I don't want you to get the impression
that use is not important in Canada.
It is important to maintain
and to give rise to trademark rights.
It's just no longer important
to get the registered trademark rights.
It used to be, but we eliminated that requirement in 2019
so that we no longer need to file a declaration.
So it wouldn't be a fraud on the register as it,
on the registrar as it would be in the US
because we don't have to file a declaration of use.
We don't have to attest to the fact
that the mark is in use in Canada
before we can proceed to registration.
So you might as well throw in everything
that you reasonably anticipate using
in relation to your mark,
and then, you know, you can withdraw,
you can delete it, you can always delete,
and you can always, you know,
wait and see if anyone challenges it.
But at least you end up with-
And again, the main reason for that, guys,
is it takes three years to get even examined.
So think about what you're going to be doing in the future.
Don't be skimpy on your Canadian trademark applications.
File for everything you think you're going to be doing
in the next three years or so.
And then if it gets to that point,
you're still going to get a registration.
And if somebody challenges it,
then you may have to withdraw that one good,
but chances are higher that within those three years,
you're going to be using it.
So you might as well get it in there upfront.
The United States,
that would be an intent to use application.
You're not going to get a registration
until you actually start using it.
Just remember that in the United States,
within one year, you can get a registration,
like within a year.
So for that reason,
if you're anticipating things three years out,
you might want to file that
in a separate intent to use application,
which is what we discussed yesterday.
These are my already used goods.
These are my intent to use goods.
As opposed to filing one
and then having to split them out
with a petition and all this other garbage,
you can file them in separate applications,
especially if it's a separate international classification.
Okay.
Does this make sense?
Is this helping you guys?
Is this, I see a lot of heads going up and down,
a lot of thumbs.
Fantastic.
All right.
Those are the major differences.
We're going to go into VIP now.
I know we went a little over here.
I just wanted to give you a little extra here.
Paula's going to answer your direct questions,
kind of give you some more feedback.
If you do not,
or if you're going to be doing business in Canada,
honestly, I would talk to her.
Just to be clear, I go to her first.
And I've been doing this a long time.
She's exceptional.
She's very good.
She doesn't bill you for absolutely nothing,
which is unfortunately something
that's characteristic of the legal field.
She's very much into kind of giving you a flat fee,
letting you know what's everything associated
with the project that you're working on,
which helps you to actually set up your business properly
as opposed to getting these miscellaneous,
I know John's going to agree with me,
0.2 here, 0.4 there, 0.7 there, 0.8 there, 1.2 there.
It can get annoying after a while.
It's better to have a good idea
of what you're going to pay beginning to end.
So I'm going to share her contact information.
Actually, I already did.
I put it in the Facebook group for you already, right?
Yeah, it's already there.
Awesome, thank you so much, Peter, really kind.
Absolutely, yeah, feel free to talk to her directly.
You don't even have to involve me.
Obviously you can if you want,
but that's just a free perk for all of you.
Hopefully it helps you out.
And with that, is this helping everybody?
Is everybody doing well?
Yeah, fantastic, that's awesome.
All right, so that's a close to day two of the challenge.
We are going into VIP in six minutes.
Go do whatever you do between then.
If you need to bring food with you into VIP,
you're welcome to bring the food into VIP.
Some of you have been asking, can I get into VIP?
Sure, we changed the rules so you can.
The recordings will be available for you as well
so you can see them later.
We dropped the link in here already
so you should be able to see the link here.
And with that, I'm gonna sign out.
Larissa, I can sign out and leave you here, right?
Because I want to prep for that group.
Okay.
Yep, absolutely.
Fantastic.
And Paula, I'll see you over there at 1.15, all right, Paul?
Sounds good.
All right, take care.
Bye, everybody, take care.
Bless all of you, take care.
See you, bye.