Hello, hello. All right, everybody's getting in.
Wonderful, wonderful. People popping up. Hello, Coach Karen. How are you? Hey, Susan.
Carol, Coach Jennifer. Good to see all of you. Coach Karen, I loved your live. Oh, my gosh.
Like, my wife and I were watching yours. I watched it alone first, and I called my wife and said,
you've got to watch this. Like, her analysis is so good. Like, it's amazing, just the
ambitiousness, how you're jumping into applying things immediately. That was wonderful. Yeah.
Yeah, the changes are already made on my site with the things I had said.
Wow. I had my assistant do that last night, and I sent all the files for all three of my,
three of the businesses, all the things to the graphic designer this morning,
you know, because I pull apart so much. We have one mark that is registered, you know, that I did
like 28 years ago and that kind of thing. But I use so many parts and pieces of it that I haven't
put the TM, you know, places in that. So I'm doing that on all of them. And in my own business,
I haven't. So it's interesting. Come on. I know. Thanks for that, because that's when I realized,
like, oh, I need to cancel others, move everybody around. I spent half my day yesterday moving my
schedule so that I could be here, you know, begging people to change their time. Thank you.
That is awesome. I love that. I love how you started applying things immediately. And
that's why I really love about this group is that these are people that are like practically
implementing things now. Like this isn't this isn't some fictitious or, you know, thing that
may happen sometimes in the future. This is like real life. I am going to admit Paula. So she's
here. Can you make me co-host? And I'll take care of that. I am making you do you want to
make a co-host? Yes. You are now co-host. And are you going to record a recording? We're good.
Yeah, I just turned it on so that everybody has it so that and for this discussion, I think
the gallery view is it's up to all of you, quite frankly, because I can record any way I want. Like
I'm actually doing very high end 4K video plus high end res audio as well. So it's it should be
good quality for all of you. So I have to process things afterwards and I do some video editing and
do a few modifications at the beginning, the ending and then, you know, and then make it up,
upload it for you. So I can do this all in like this gallery view if you want, or if you want the
speaker to be pinned, we can do anything you want. We can be as creative as you want. So during this
session, there's a lot of interaction. So I tend to use gallery more in this in this VIP environment
because it's different people that are speaking. If that's what you want, I can do that. But Larissa,
what are you thinking that we have Paula today? So I think. Yeah, that's a good point. So let's
pin her in the beginning. Right. Yeah. Can you make me host and I'll make you co-host back? Yeah,
let me do that. When I do that is let me make you host and then you can. All right. You are now
host. And now you can make me co-host and then we can go from there.
Paula's listening to this going, hold it. They're going to pin me. What does that mean?
Why are they pinning me? What did I do? I didn't do anything.
We're actually spotlighting her and I'm going to spotlight you. That's great. Love it.
All right. Right. Ready to jump in and get going? Yes. Yes. So just so people are aware,
this is what the game plan is. I figured I'd start off with like maybe 15 minutes of Paula being
available to interact, give you any feedback, questions with regard to Canada, just in general
with regard to how the laws work. I actually received a few questions from some ambitious
individuals who already emailed me Canadian questions. Wow. That's brilliant, which is good.
I'm going to go over those two questions for you, Paula. I'll read them out to you.
And so maybe we'll start out there. And then if individuals have a question for her,
everybody should know how to click that reaction button and then raise your hand.
Just do that. And that's going to bring you to the top left of our panel. So we'll see you,
although obviously Larissa will be looking through to see if there's anybody
there who has any questions. OK, so with that, Paula, let me ask you the first question.
All right. So it's one of the questions is if my company's name is already registered in Canada,
I assume I can't sell ship my products without violating laws.
Do I create an alternate brand if I want to sell in Canada?
Okay, so this is an individual who says
they may or may not have a registration already
in the United States, but in Canada,
it's already registered, the name that they wanna use.
So they're saying, if I have a registration already
or if I don't have a registration already in another place
and I try to go into Canada and there is a registration,
can I sell or ship my products within Canada
without violating the laws?
I mean, that seems pretty straightforward.
I'll let you answer that one
and then we can go into more complex one after.
I think we have to differentiate
between registering a trademark
and registering a business name or a trade name.
So a lot of people get confused between the two.
A trade name serves a different function than a trademark.
A trade name is the name under which you carry on business.
It may or may not function as a trademark.
Some clients or businesses have approached me and said,
look, I have my trade name registered
so I should be good to go,
but a trade name registration
doesn't give you the same rights that,
sorry, a trade name registration
doesn't give you the same rights, remedies,
or powers that a trademark registration gives you.
It's merely meant to serve as public notice
so that if someone had a product liability claim
or whatever, they would know who they could sue, right?
It's a public information record
so that companies can file their trade names,
register their trade names,
and then it gives public notice
that you're carrying on business under that name.
You can't pursue others for trademark infringement
with a trade name.
At best, maybe you could pursue another company
for passing off your trade name
or some sort of unfair competition,
but you don't get the same proactive rights
that a trademark registration does.
So I think we have to differentiate between the two.
So in answer to that question,
it sounded to me like this person
has registered the trade name.
That does not necessarily mean
that the trademark is available for use.
It may, most provincial ministries
that take on trade name registrations
take a hands-off approach.
They'll say, look, we can register your trade name,
but the onus is on you to clear it
and make sure you're not infringing
on anybody else's rights.
So the mere fact of having a trade name
registered in Canada
does not give you any protection necessarily.
It just serves as public notice
that you're carrying on business under that name.
Yeah, and just to elaborate,
yesterday, remember how we talked about,
this is amazing, Paula,
because you had no idea what we talked about yesterday.
And yesterday, we literally talked about
filing the business name with the Secretary of State
and how that's different
from filing either a state trademark application
or filing a USPTO federal registration application.
We literally just walked through that.
So that's a good confirmation from what you just said.
Yeah, it's the same in Canada.
It would be kind of the same concept in Canada.
I mean, having it out there is good
because it'll be pulled up in searches
when future people go and look for trade names
that are already in existence,
but it's not identical to a trademark registration at all.
Right, and John, this was your question.
So do you have a follow-up to that, John?
Yeah, I guess the only thing
I didn't want to run a foul on
is somebody that's in a, we're in 100X.
We have people from around the globe.
Somebody from Canada says, oh, I love your cookies.
They order them.
I ship from Kansas and somewhere into Canada,
and somebody goes, oh, I already have that name.
I'm gonna go after it.
Right.
What kind of legal waters have I entered?
And if I do find out that my name's already registered,
then do I put like a Canadian-only name
for our products and services?
Okay, so you mean you,
so if you have, let's say, a brand of cookies
that you sell in the US and you ship to Canada,
but a third party already has that registration
for cookies sold. In Canada.
Yeah, in Canada. Gotcha.
Yeah, at that point,
then you would want to rebrand for the Canadian market
and have a Canada brand that you could use.
By shipping, if the mark is affixed to the goods
at the time of sale in Canada,
that's use in Canada
for the purposes of an infringement claim.
So you could be at risk of, you know,
of a potential infringement claim
if the mark that you're talking about
is registered in Canada.
Keep in mind that infringement as a remedy
can only be pursued by the owners of registered trademarks.
So if the mark is not a registered trademark in Canada,
there would not be an infringement.
fringement cause of action. It would only be passing off or some sort of unfair competition
at common law. But yes, if you know that the mark already has been registered in Canada,
proceed with caution and probably best to not sell into Canada and choose a different brand
for the Canadian market. Okay. Never even thought about looking until you came on and I'm like,
okay, I'm gonna go do my SIPO search. That's it. That's perfect. That's why we're doing this,
John. That's fantastic. And that's a really good example of, you know, one of the things
we have to remember is a lot of the businesses, a lot of the products and services that we're
providing on eBay, Amazon, Alibaba, all these other different forums, they're going into foreign
countries, they're going into other places. And so you have to look into these issues. If your
big market is Germany, for a specific thing, you need to go and do a trademark search and follow,
find out whether or not you're potentially infringing the trademark rights in that
country. I've had a number of clients that I represent that are international clients,
and they have certain trademarks that they're fine with, but there's one or two countries where they
can't use it. And so they intentionally will have on their marketing material, you know,
trademark, and then they'll mention the countries where they do have rights. And then when they sell
product into that other country, they either remove the product name, or they have another brand,
specifically where you're talking about, John, and so they sell it under a different label.
And then they don't run into any violation of trademark issues. And so you just you have to
be careful. And so our hope was to make sure you at least aware of these things. Now, as you start
doing, you know, sales in other jurisdictions, you have a good idea of what you need to do.
All right. So let me if anybody has a specific question for Paula, just go ahead and raise your
hand virtually. Jennifer Flannery. You're up my friend. Hello. Hi, Peter. Hi, Paula. Thank you for
your time today. Super helpful. I have a question, which I think applies to both countries. And my
question is about this idea of goods and services, and future use. So if I in what you're talking
about sort of hedging your bet for what you might do in the future, right? So I understand if I'm
coaching and I have whatever things, those are copyright, I would have my trade name and my
trademark for those things, right? But let's and let's say I'm just doing one to one and group
coaching just with people nearby, right? But in the future, I decide, you know, I think down the road,
I might run an event of some sort. And there's a name associated with that, or maybe don't even
know what the name of that is. Or I'm going to use the same name that I have, right? I don't know
where events falls on the chart, Peter, in terms of like, calling that the same name, and how would
I possibly know that? Also, let me answer that first. Okay, before you jump into the next one.
That's a great question, Jennifer. So events, those are like services, when you're running an event,
that's actually a service you're providing, right? Because it doesn't fall into a product. So
as an example, like 100x, the 100x conference, right? That's a conference, that's an event.
So putting on events actually falls into a specific recitation of services into a specific
international classification. So today, when I demonstrate how to file a trademark application,
and we're going to go through how do you select your international classifications, I'll show you
how to figure out what class that is. Okay, great. And similar question that is also, I ran across
something over the weekend, I was thinking about doing like white labeling something, you know,
where I could take my label, put it on someone's whatever their jar, their chocolate, their
backpack, right? Even the jacket that you had, right? Peter, like, would we have to know that
in advance? And especially Paula, what you're saying about how long it could potentially take
in Canada to get approved? If I file, should I just like, put down all the things, right? Because
what if I do run an event in the future in Canada, and everybody who comes gets my backpack, they get
a jacket, they whatever that has my label on it? That's, that's another great question, Jennifer.
And there's a couple of issues embedded in that question. Number one, promotional materials and
swags, that kind of stuff, sometimes doesn't qualify as trademark use, because in Canada,
there has to be a commercial transaction or a sale, unless you can show that it's common practice
in that specific sector to give away, you know, baseball caps and whatever, you know, normally,
if it's a promotional giveaway, then it wouldn't be considered trademark use. If you're actually
hosting an event, and you're selling hats with your trademark and selling water bottles and mugs
and backpacks and whatever, that's a different story. And that would qualify as trademark use.
So yes. Now, how do you know what to claim? I guess in Canada, it
is a bit of a wild west now because you could potentially claim everything under the sun.
I don't often recommend that because it's a red flag. You know, if you start claiming
automotive parts and you know you're never going to be selling automotive parts in association
with your mark, it kind of, it invites a potential cancellation action because,
you know, other third parties who are, first of all, you've expanded the scope so you're
more likely to have other third parties bump up against your mark, but also they're going
to look at it and say, really, you know, this person does coaching and automotive parts?
I don't think so. You know what I mean? So it's best to keep it within the realm of reason.
Now, that's not to say you can't be aggressive and be thinking forward, you know, in the future,
say, okay, you know, if I might be organizing conferences and seminars and selling,
you know, typical promotional goods, I'm going to, I'm going to add those to my Canadian.
You couldn't do that in the U.S., but I mean, well, you could as an ITU, but you'd have to
show specimens of use in order to get through to registration. But in Canada, you could be
a little bit more aggressive and then expand the scope of your registration, keeping in mind that
if after three years post-registration, your mark isn't being used for those goods, you could face
a challenge. But, you know, when you weigh the odds, it's probably better to have them in there
than not. In terms of how do you know, it's just a question of, you know, actually thinking it
through and thinking, you know, what potential lies, and you may not be able to guess everything
right now, which means you may have to file a new application down the line to incorporate
some additional, you know, directions that your business took you in, which is not the end of
the world. It's just that you have the option in Canada to be a little bit broader. So might as
well take advantage of it. Makes sense. Thank you. Super helpful. Yeah, just came up over the weekend,
right? I mean, what if John goes, well, sure, you know, other people could sell my cookies, right?
And I can put my brand, my label, my all my things, and I sell cookies at my events or the website.
Like what I'm understanding from you is then I need to really think about that before I just decide
to brand water bottles and sell them from my website, even if it's related to if I'm a health
coach, right? Well, of course you would want to be selling water bottles, right? So you have to
really think about that. You know, another important issue that you raised is
licensing, okay? Because let's say you have a brand, you mentioned white labels, so that kind of got me
thinking about licensing. If you have a brand and you are okay with licensing your mark
to a third party to use, let's say you don't, you know, do water bottles, but you're okay with,
you know, licensing the mark out for the purposes of, you know, creating these water bottles and
having a third party distribute your water bottles or whatever, that's an important aspect of trademark
protection. Because if you have third parties using your brand without a license agreement in place,
you could lose trademark rights. So it's super important to keep in mind that anytime a third
party uses your brand or, you know, if they offer white label, like, you know, these swag
companies often allow you to put your own brand on, in which case it's your brand, so you don't
have to worry about it. But if you're allowing another entity to use your brand, you do need to
have that under the umbrella of a license agreement to preserve your trademark rights.
Good point. Great. Thank you so much. Libby, let's move on to you. Go right ahead, my friend.
Thank you for that. Hi, Paula. Thank you so much. Yeah, no, this was great because I did
spent two hours on the Australian government trademarking last night. And everything you've
said today has confirmed they've got that in there about broadening your search. And so my
name of my company's three words, and there's nothing like it. But when I put each individual
word in, there's comes up a lot. But what I noticed was there quite a few international companies like,
and particularly with the word relate, and connect, not the first word attune, which
had to do with hearing services, but every company that came up was nothing like what I do.
So they were things like telecommunications, they were hearing services, they were,
and there were quite a few deregistered or hadn't renewed and, and, you know, but it showed these
international. So I'm really curious about, and how you get this, like, if companies, say,
for instance, I think one of them that came up was AT&T. So they're obviously a global,
globally recognised. So how do you get that global recognition? Or, you know, because I'm aware that
I get a lot of inquiries from the US and I'm a service. And I noticed the classifications were
the same across between what Peter was showing earlier. So it's really good to see, I mean,
this is fantastic, you know, what I'm learning.
because it's all dovetailing my end. So it's great. So thank you so much. So yeah,
that's where I've kind of got, okay, if I register here, then
how does that work? And how come I can see international companies? And yeah.
Yeah, I'll jump in, Peter, but you cut me off whenever you want to.
So trademark rights are national in scope. So that's why, you know, if you file an application
in the U.S., it protects you in the U.S. And those global brands have these extensive
worldwide portfolios. So they go into Australia, New Zealand, Canada, China, Japan, and they
protect their brands in those countries. And that's how they expand their scope of protection.
Now, in terms of your question about having found some references for completely different goods and
services, that's where a trademark professional can help you. Generally speaking, if the fields
of trade and the goods are completely different, like you can have Apple for computers and Apple
for auto glass. I don't know if Apple auto glass exists in the U.S., but it's pretty popular auto
glass shop in Canada. There's very little risk of confusion. So the office ultimately looks at,
is a consumer going to be confused as to the source of these goods or services? And that's
what they're trying to determine. So it's not a perfect science. It is a bit subjective to kind
of look at all the factors. You know, how long have these two entities been using these respective
marks? Are there any other word or design elements that help you differentiate the marks? Are the
goods and services so different that they're never going to travel in the same channels of trade?
There's so many factors that go into a confusion analysis. Just one quick second, Paula.
Remember, literally today, I dropped that document for you with the list of all the factors for
likelihood of confusion. Everything Paula just said is on that list. So you literally have a
checklist of exactly what's going to be considered to determine. And I had, again, no, Paul and I did
not talk about this. This is just God is so good. Things are lining up very well for all of you. So
somebody is taking care of you. But the situation is that literally all she said was every one of
the things that are right on that list. If you look at that list, you'll see everything she's
saying is there. So the one thing I would add, and I'm sure Paula was going to say this, but I just
want to mention this just in case it gets missed. The fame of the mark can be something that will
give a broader scope to a trademark. If it's a very well-known trademark, it's not going to go
from like pharmaceutical products to like car engines, but it may go from pharmaceutical
products to like coats for doctors. Or it may go from pharmaceutical products to like
vitamins and like pharmaceutical stores or other things. It'll get broader
than just what they have because of the level of fame of the mark. So when you hear McDonald's,
Mc almost anything, those guys are going after you. I mean, the Golden Arches, I don't know
I don't know if you guys ever saw that. What is it called? Back to America, way back in the day
with McDowell's. Do you guys remember that? They had, oh, we don't have the Golden Arches. We have
the, what do you say? The Golden Arcs. So it's like, that's a perfect example of trademark
rights. So your homework assignment is to watch Coming to America. No, I'm just kidding.
But so that's it. That's a good example of what Paula is talking about is
all those considerations, you know, do they look the same? Do they sound the same?
But one of the things to consider is how famous is that trademark? If it's very famous,
it gets broader, it gets more strength than the typical mom and pop shop. Go ahead, Paula. I just
want to jump in with that. No, that's perfect. And actually that's another area where Canada
and the U.S. is a little bit different because in the U.S. there's a very broad scope of protection
for famous marks. And there was the Victoria's Secret case. And that's where they, in Canada,
were a little more conservative. And there was a Supreme Court of Canada case where there was
Veuve Clicquot, very famous, you know, type of champagne. And they objected to a line of
clothing stores called Clicquot. In the U.S., they would not have been able to continue with
the clothing stores because it's too close to an extremely famous mark. The Supreme Court of
Canada said, well, it's just, you know, it's just Clicquot and it's for completely different goods.
And they said coexistence was possible. Now, having said that, it is a bit of a nuanced
difference between U.S. and Canada. But you really should be aware that if you try to do Rolex for
a bicycle part, you're going to have trouble. You know, you're going to it's you.
You it's too famous when you especially if it's a shiny bicycle park
So if it's a very well-known famous mark
You know proceed with caution proceed with caution. Yeah makes sense
All right. Let's go to i'm going to go to jennifer next and then we'll go to coach karen
Uh jennifer go right ahead
Hi, so my question is with being a ministry
Do I need to register my
Name and logo in canada as well. I don't know that i'm going to expand into canada yet
But do I is that something that I need to be thinking about?
Um, I would say that
It really depends where you plan on using your trademark
If
Realistically your ministry is very local and based in your city or your state or your region
and
You don't have
Realistic plans to ever expand into canada. It may not be necessary
The question is though
You know
as you grow
There could that could change and now with the internet and with ability to bring people together
Digitally and you know virtually
It's more likely that you may have an expansion into canada and people
You know using your services in canada in which case then it definitely makes sense to protect your trademark in canada
So it really is depending if john
Never plans on shipping cookies to canada, then it's very easy clear-cut with services. It's a little bit
trickier because
You know you can provide services
Virtually now to canadian consumers and canadian canadian residents
Okay, and then I have one more question, please
So peter yesterday on the intent to use and paula kind of brought this up with promotional
Materials, so if I in the future do promotional things like
You know pens water bottles cups bags, whatever those kind of things with the ministry name on it that we give to donors
Well, do I have to worry about filing an intent to use on those items
That's a great question. So it becomes used in interstate commerce
So you remember one of the things that paul paula mentioned was whether or not things are being sold
Right. So this this consideration as to whether or not something's being sold or given away. Um
There's some case law in this area paula
Maybe we should elaborate upon this area because this is uh, just so everybody's clear everybody here is in vip
We're touching like a fraction of the number of issues that actually exist
In this world, right? We have five days together
I'm i'm giving you a little bit to just keep you to get you on the right path
There's something that you're going to learn about
On day four which will bring you oddies. Okay, it's going to make your life a lot easier. I'm not going to go into that now
um, but at that point you'll you'll
You'll breathe a sigh of relief. Okay, but um with that being the case
When you're looking at
This consideration as to whether or not something's being sold or given away
one of the things that ends up getting considered and paula, maybe we should elaborate on this is
If somebody's paying a package price for something and whether or not that package price is intended to cover
The things that are quote unquote given away because they're not really being given away like somebody paid
You know a thousand bucks to go to this or 500 bucks to go to that. So
Maybe I don't have a separate ticket item to sell that one item
But when they paid for the conference it included a backpack
And when they paid for that conference, it wasn't, you know free that conference was 4.95 or whatever it is
So technically they paid for this thing. So there's case law in that area paula
Maybe you can elaborate with regard to canada how they look at that situation
Yeah in canada the older case law was more
um
Abrupt in the sense that if if there was no commercial transaction
It was deemed that there was no use in the trademark sense. So promotional giveaways
um before
You know the the advice was don't bother to include it unless you're selling it to the public
That changed a little bit more recently with a case
um where the it was maybe three-year-old case where the court said, you know in some industries it is
Uh, and and this is an example, this isn't the case but think about the cosmetics industry where you go to a
You know a nordstrom or a sax or a you know target and then you buy cosmetic and they'll give you a giveaway
With some promotional products in there
Arguably
Yes, it's not being given away
For a price. It's a free giveaway, but it's a form of marketing and advertising because then consumers can sample
the products and whatever. In the industry, that's become the norm. So in that context,
then yes, you could assert trademark usage and trademark rights for those goods.
I would argue that in the context of a ministry or like a conference where you give away a water
bottle or a backpack, as Peter said, it could be, it is the standard. I mean, that's kind of
the common in the industry. So that could be conceivably closer to a trademark use.
The case that I was going to reference is one where the federal court recently said in Canada
that you don't need to show a profit. You don't need to, even if a good is sold at zero profit,
like for cost, that could still qualify as trademark use. So I think Canada is loosening
up a little bit and understanding that promotional type usage of the trademark is very valuable to
the businesses in many sectors. So not a black and white answer.
This is a good example, Jennifer, of where an attorney is beneficial to look at your specific
situation and to analyze it and to let you know, you know, okay, this is what you should do in
your situation. Here's a case law that backs it up. So there's a way I would go. Okay.
Coach Karen, you are up my friend. I'm going to cover one more after this,
and then we're going to go into filing a trademark application. All right, together.
Okay. So I still am a little confused. So as a coach, as a consultant, as a person who does
one-on-one and challenges and group coaching and things, and I do one-on-one in many different
countries, like I have clients, you know, in many different countries, and I have clients
that come to the group coaching program or will come to a challenge. So now I'm thinking like,
okay, do I have to go to each country if I'm, I know about copywriting, like my words and my
things, but if I'm using my logo, if I'm using my mark, if I'm, you know, everybody in my group
coaching program typically gets something as a gift from me, like hardship to them. Now I haven't
shipped overseas, you know, but so now I'm wondering, okay, so in Canada, I have one-on-one
clients in Canada. I have people in Canada that come to my challenges and bought my group coaching.
So now do I need to be registering my trademark and my marks and then
possible use if I'm doing those? I'm like, now I'm confused. And if I do an event
and say it's a virtual, like a hybrid, it's in-person in virtual, and people from different
countries come to that event. And so now I'm like trying to sort all this out in my head.
That's great. You're in a great place, Karen, because I wouldn't say you're confused. I'd say
you're obtaining greater revelation, which is allowing you to ask greater questions to refine
what, you know, your path, which is phenomenal. It really is because before you didn't even see
the forest. Now the sun's come up and you realize you're in a forest. Now you just need to get the
pathway to get through, right? That's really it. And so with that being the case, I'm going to
start out and then Paul, I'm going to hand it over to you because I know you have a lot of knowledge
in this area. One of the things that I would look at is, think of it this way. If another party
started providing the exact same services that you provide in a specific other country, right,
where you have customers, would you be upset about it? Yes or no? That's the way I would look at it.
And if you look at that and you say, man, I've got a lot of, I've got a lot of clients that are
coming out of Canada and it's kind of getting a reputation there. And I know I'm providing a
really good service. I really care about my people, my who, I'm watching over them. And you know what?
This is not just about me. It's not just about me. And I know, I know you, so I know it's not,
you don't think that it's just about you. So you're thinking, I need to protect this brand
because I need to make sure that when the people purchase this service, they're getting the quality
that they need because I don't want them to be misled because if they get misled, they may get
guided the wrong path and it could hurt them as opposed to benefiting them. So it's not always
a situation that we're trying to make more money by protecting something. It's also, we're trying
to protect what the Lord has blessed us with or what we're called to. We're trying to make sure
that's protected so that the people are protected. That's really what trademark comes into as well,
right? Like, why do we call it Christianity? Why isn't it called, you know, Buddhism or,
or something else? Why? Because it has to do with Jesus Christ. Like there's a name for it.
It's called Christianity. When you hear that name, something should come to mind, Jesus.
If he doesn't come to mind when you hear Christianity, something's wrong. Same thing
with your business. When they hear your name, they should, a certain standard, a certain quality
should come up immediately. So now when you're looking and you're saying, hold it, I've got all
these international individuals. Okay.
Hey, which of those countries that are associated
with all those clients that you have,
are you thinking I need to protect my brand
so that people in that area, when they hear that name,
only come for this kind of service
and that's associated with me.
I'll start there and then I'll hand it over to Paula
to see what she wants to say.
I couldn't have said it better, Peter.
I think you hit it right on the head.
I think it really depends on,
ultimately it's a business decision,
not so much a legal decision.
It depends on which markets are of most interest
and where you're getting a lot of your work from.
And those should be priority markets.
And sometimes with clients, we do stages,
so you don't have to think of everything all at once,
but you say, okay, right now,
Mexico, Canada and the US are my primary markets
and targets.
That's where most of my clients come from.
I need to focus on those three jurisdictions.
The next round, maybe it spreads to Latin America or Europe
and you have a couple of countries that are kind of,
getting a little bit more active
and that'll be phase two of your kind of global strategy.
But I think Peter hit it on the head.
Ultimately, it's about your reputation
and how valuable the brand is in any given market.
Now, I mean, you don't have to protect
in every country in the world
because maybe you're not doing business
in every country in the world,
or maybe even if you are,
it's just such a small percentage of your business
that the cost benefit doesn't make sense.
But as you grow, that'll become clear.
And you'll say, okay, no, these countries,
I really need to lock this down
because I don't want unauthorized use of my brand
or confusion or tarnishment associated with that.
So I think that gives you a little bit of-
Yeah, and just to drive that home, Karen,
just so you understand, as you grow,
there will be individuals in other countries
that will file a trademark application
for your name intentionally.
That just happens.
It's just, as you become bigger,
as people start to know about you,
they file the applications as intent to use applications.
And especially in like a place like Canada,
where it's like three years before the thing gets examined,
or in China, China is a perfect example.
They'll file these applications
and then they'll hold you under extortion.
They'll say, hey, we see this application here,
we'll sell it to you for this,
or we'll sell you a license.
And you go, that's my trademark.
How are you doing that?
I'm manufacturing in China.
Well, maybe you're manufacturing in China,
but now you can't put the name of your product
on that product you manufactured.
You have to ship it to the U.S.
and then have packaging done in the U.S.
because you didn't own that trademark in China
where you had the manufacturing done.
It's a whole other world.
So let me get to Carol.
And then I want to answer a question that Lynn raised,
which is phenomenal.
And then I want to get into the trademark application thing,
which is going to take about 20 minutes.
I think it'll take about 20 minutes
for us to walk through that.
So Carol, you're up, my friend.
Okay, I have two quick questions.
So I'm just starting, and so I only have a few clients.
And so all of this is brand new thought process.
I was even processing through names,
trying to figure out what names
in the last couple of months.
And so one thing that came up
was I did just a specific event, not my challenge.
I had already done a challenge with another name
that I'm using more for my coaching and so forth,
but I was going to do just a one-hour event.
And I happened to pass it by our coaching group.
And I didn't know, but it's actually the name
that Karen uses for her academy,
but I used it, that name Tea Party.
And it was just for that one-hour event,
and I wouldn't use it as a name for a product.
But in that case, how do you do that
when we're in this community
where we're trying to figure out names?
We're just getting started.
We're just trying to, you know, pay directly.
You raised-
Get started.
Yeah, Carol, you raised an issue
that has been on my heart since I joined 100X.
Just to be clear, the reason why I started this
Protect Your Idea Challenge
is literally the words you just spoke.
Because we have brilliant, I mean, and I mean brilliant,
gifted individuals who are being ordained
with remarkable ideas, great concepts,
and they're not just thinking about themselves.
They're thinking about entire groups of people.
Like, these are people that are going to transform
the business world, literally.
Like, this isn't like something I'm making up.
It is happening, all right?
And it's growing very fast.
And so as, you know, as an example,
the God Idea Challenge was raised, right?
You know, which Pedro runs.
And being in 100X, the second I saw somebody
actually start using a name,
I would go online and I'd do a search for them.
And then I'd go, oh my gosh,
this is a federally registered trademark.
They can't use this.
But here's the issue I had.
Here's the dilemma.
I can't tell them because if I tell them,
they now have actual notice.
If they have actual notice and they're infringing,
they change from just infringement
about something they didn't know about,
which is a lower element of damages
than willful infringement.
Because now they're aware,
whatever you are made aware of, you're responsible for.
And so now if I go around in 100X
and start telling people,
hey, you're infringing this trademark,
hey, you're infringing that trademark,
which I wanna provide that guidance,
I'm now placing them on notice,
which actually can hurt them
if they continue doing something
that I'm trying to tell them not to do.
That's why I created this.
So that people, before they actually start creating
their coaching programs, their products, their businesses,
whatever they're doing, their solo ventures
or their multi-billion dollar corporations,
they have the basic tools to do a trademark search,
to be able to find out, hold it,
does somebody else have this federally registered
or how do I do a common law search?
Well, the thing I'm gonna put into Facebook group
using Thompson Reuters will help you
to do a common law search to see business names.
You can search business names.
You can search the business registrations
in every state of literally the United States.
And you can search in other countries as well.
There's ways to do that, but nobody knew these things.
So I'm thinking, how do I help to protect something
that clearly is a remarkable blessing to many people?
Because all these people are gifted
and they're helping others, but at the same time,
not make them in a worse position.
That's why we are where we are right now.
That's literally why we're doing this.
So in your situation, if you're thinking,
okay, I'm going to start a new business,
I'm gonna provide a new service.
Now you know how to do a trademark search.
You can do a basic search online.
If there's a federal registration, it'll pop up
and you can go, I think this is an issue.
I better speak to a lawyer.
I think something's, I'm not sure.
I think this is an issue.
This is for Canada.
Let me call up Paula, or this is something else.
Let me call up somebody else, right?
But at least you know, now that you know, you can go forward.
Now, what about a different situation
where there is no federal registration?
Like, how do I know?
Like, there's common law searches,
but it may not even come up in a common law search.
This is where it gets a little,
it becomes a little less solid.
Now it becomes a situation of,
I start using this name in this group
and somebody else says,
I've been using that name before you.
Now it falls into what realm?
Somebody type in the chat,
what are the two words that describe
when you don't have a federal registration
and you're comparing to see who used it first,
what is that called?
What is the realm that we are talking about?
What kind of law is that?
Common law, common law, common law, that's it.
So now it becomes, well, what exactly are you using it for
and your services?
And what am I gonna use it for in my services?
And now we compare and we see whether or not
there's a likelihood of confusion.
Hopefully the two people can work together
and figure it out.
Sometimes they can't, sometimes it leads to animosity.
And that's when a mediator is very helpful
to bring in a third party to try to calm people down
and make things work.
I had a woman call me up,
a CEO of a corporation, practically crying.
Because, and this is like grown woman runs a big business.
And she says, I'm getting sued.
And I said, about what?
She says, we've been using this name for many years,
like four years.
Now we got to change the name of the services,
the name of the goods, the name of the company.
And we might have to cut a check.
I said, all right, hold on, calm down.
The other company has something similar, right?
But they're in a different country, right?
She said, yes.
I said, okay, this has happened more than once.
So this is an exceptional situation.
I said, have you spoken to them?
Like, did you pick up the phone and say,
hey, this is who I am, this is what I do.
Did you do that?
Or did you just kind of like freak out?
Like, what did you do?
And she says, well, I got this nasty gram
and it's from an individual within the company
and they're suing me.
Like they give me a copy of a complaint
that they're filing in federal district court.
I said, okay, so it's not from a lawyer.
No, no, I said, okay, okay.
So they got the copy of the complaint
but they're handling it personally.
Calm down.
If they handled it personally,
that's because they want a little bit of interaction.
They could have just had a lawyer go after you.
That's very different.
It's very different when you're in the ocean
and a shark's coming after you and there's bloodshed.
That's very different from being in a boat
and knowing there's sharks in the water.
Very different, okay?
So now what do you do?
I said, reach out to the other party.
Say, look, I'm in Brazil.
You're in the United States.
Like, I understand that you're providing
some of your services here, but can we work together
so I actually provide some of these services
for you in this country?
And what do they do?
It worked out.
Like they work together now.
Like, it doesn't always have to be.
Boom, explosion.
So I guess what I'm saying in all of that
is you're now aware of what the issues are.
What you raised is exactly why I put together this challenge
for especially 100x community and all the people
that you're taking care of.
And what I would say is if you start using something,
somebody makes you aware of it, calm down,
and then just figure it out.
Just say, OK, well, let's look at common law first.
Who used it first?
What specific geographical regions?
Now that I know where specific geographical regions,
is there a way for us to work separate
and there not be a likelihood of confusion?
When you start using words like likelihood of confusion,
common law, specific geographical regions,
when you start talking like that,
it changes the conversation from you're using my name,
I want you to stop to, hold it, there's a legal issue here.
Let's see if we can figure it out.
It's just a different tone.
So that's what I would suggest.
I don't know if that's helpful for you, Carol,
but it was a really good opportunity to share that.
Yeah, it is.
But right now, I mean, I'm not even advertising mine.
I'm just doing it to people that I know might be interested.
So it's not really a big deal right now.
But because we all are, many of us
have a similar type product that we're offering in coaching,
and there are only so many names.
And sometimes it's a combination of names.
That's the thing.
It's the combination.
And there's no way to know what everybody's name,
what names everybody's using in their exclusive bonus
that they have named a certain way.
And you might be using two of those names,
or you might be using two extra names other than what they are.
And there's no way to know that.
So that's just the thing that's confusing in that.
One of the things I would say that will help you out, Carol,
is come up with an original name.
And when you file a trademark application,
you can post it in 100 Acts and say, oh my gosh,
I'm so excited.
I've decided to pursue with my coaching program.
I've got a brand new name.
Just file a trademark application.
What do you guys think?
You just placed everybody on notice.
Everybody there now knows that's the name
that you're thinking of using.
Yeah, and Peter mentioned a really good point,
which is trademark selection.
Try to come up with something unique, preferably
a coined word.
Those are far easier to register and protect,
because it's unlikely that someone will come up
with something very unique.
If you're using very common words,
arguably, they may not even qualify
for trademark protection.
They may be descriptive.
If they're descriptive, you cannot get a registration
for something that's descriptive.
Exactly.
And then filing the application is a good way
to give being public notice.
And if there's other forums or advertisements
you can do on whatever forums you're on,
like social media, websites, that sort of thing,
you're giving public notice that you've
adopted that trademark.
So that's another good tip that Peter gave you.
And quite frankly, the people in our community
are going to celebrate that you came up with your own name,
because we all celebrate each other.
We just don't know what everybody's doing.
We're all backing each other up.
I mean, we're all here.
I'm here because I want to back you guys up.
I want you guys all to succeed.
When you succeed, it makes me so happy.
And so for your situation, you come up
with an original name.
File the application first, though.
File the application.
And what's the second thing you should do?
Somebody type in the chat.
What's the second thing you should do immediately
after you file the application?
Somebody tell me what you should do immediately after.
Get the domain.
Domain name.
There it is.
Domain name, domain name, domain name.
First, I will search in for the domain name.
And if the domain name is available,
Yeah, and don't do that.
Remember, don't search for the domain name first.
Well, I mean, I would go ahead and buy it.
I mean, I could have a bunch of them.
Exactly.
Well, I might use that.
I did actually have kind of figured out
that they might do that.
So I went ahead and bought things
just in case I used it.
So what you do is you do the trademark search.
You find out that, yeah, that name is available
or that I'm definitely going to proceed with that.
Now you go and do the domain name search, right?
And you say, OK, well, looks like it's available.
Buy it immediately.
Because if you do the domain name search first
and then you don't buy it, I'm telling you,
they have filters, they have spiders,
they know you're interested in it.
All of a sudden the price goes to like 595
and you're like, it was just 895.
How did it just go to $595?
Literally in 10 minutes.
There's no way it became that popular.
It's like, it's not possible.
So Coach Karen, last point.
And then I want to jump into the trademark application.
So Carol and I are very good friends.
Oh, we know, we all know.
And it's her and I in it.
So I think it's going to be a teachable moment
for this group as an opportunity about the discernment.
and what happens and who's done what,
because immediately, I mean,
I'm her coach in the small group.
So she passed it by me and I went, I love it.
Just to let you know,
I've been using this name and have the domain,
it's the name of my coaching program.
It's a little different.
So this is where I think it could be a teachable moment
for all of us here, you know, is,
cause I think Carol, you're on board with that, right?
Like, I'm happy to be used as an example with that.
Like, if we look at that,
like now I put the TM on it, on the site,
I'm gonna do the trademark today for it,
but I've been using it for since 2014
for my coaching programs.
It's been, you know, it's a name I've used
and put on water bottles.
So I have to figure that out now, you know,
and stuff like that.
So, but it's Peace Talks Academy.
She's doing Peace Talks something else.
And so this is where the discernment
of what's trademarkable, what's this, what's that,
that would be helpful, I think, for me,
as well as her and the group,
like what words put together count.
Yeah.
And this really goes towards,
there are many other things we can be talking about.
And this is why I think all of you
are gonna really be happy with day four.
Let's put it that way.
Because you're talking real life.
This is real life situations.
And it's amazing how this happened with two people
who are incredibly lovely people who serve others
on the same VIP who can provide this perfect example
of how it can work.
I mean, that's like,
I didn't know this situation was gonna happen.
I'm amazed.
You know, I guess I shouldn't be anymore
because the way God works.
But the whole point being that in your situation,
one thing that's gonna be important for both of you
is you wanna make sure that
if one person is providing a certain service
and another one is providing the other service,
you know what?
You don't wanna lead to like confusion
between who's providing what service.
Like you don't, and I know you guys are friends,
which is awesome.
And we all love you both.
So, you know, within the community,
but you also at the same time,
you wanna protect the people
so that if people were saying,
oh, I'm going into coach Karen's program
and it's actually Carol's program.
And they're like, hold it.
I thought this was Karen's program.
And the two of you are not gonna fight,
but the people are confused.
Confused, yeah.
And so that's where the issue is.
It's not always,
oh, corporation X is gonna get upset
that corporation Y is making money.
It's what about the people?
Like, you know, there may be something that coach,
you know, that Carol has that Karen doesn't have.
I guarantee you there is.
And there's certain things that Karen has
that Carol doesn't have.
I guarantee you that's the case.
So you wanna help the people.
So you don't want the marks to be so similar
that people are confused as to the goods.
Then they jump in and they're like,
I'm in the wrong one.
I want a refund.
This isn't what I was told.
And then it gets messy.
It could also lead to dilution of your mark.
You know, multiple parties using the same essential mark
and there could be all sorts of issues.
So I would stay away from that as much as you can, at least.
And with that, I wanna go to Lynn
because Lynn asked a question earlier
that I wanna address.
And Peter, I have a bit of a hard stop.
So I just wanna-
Oh, yeah, yeah.
I think, Lynn, do you have a question for Canada?
Okay, why don't we, Paula, why don't,
I just wanna thank you personally.
Can everybody just like type in the chat
your thoughts about, you know, Paula,
just light up the chat for this so that I can show her later
and Paula, I could not give you more thanks.
You're amazing.
Thank you so much.
Very grateful.
So fun, so great to be here.
I thank you, you know, for giving me the space
to talk to your group and exciting things.
I love the vibe and the energy of your group
and thank you so much for having me.
Absolutely.
I'll touch base with you later, okay?
You take care.
Bye-bye, my friend.
Bye.
Wonderful.
All right.
Isn't she amazing?
Like, I'm very blessed to have her as a colleague.
She is very talented.
So honestly, if you do work in Canada,
I don't get anything out of this
except for the fact that I know you'll be well taken care of.
Call her.
Like, she is phenomenal.
I send everything I have in Canada, I send to her.
By choice, just because I have a lot of agents in Canada,
but she's very good.
Lynn, my friend, unmute yourself, please.
And let's address your question earlier
and then please ask any other question that you may have.
I was just laughing because I was like,
I'm just like, all these ideas.
I don't remember my question earlier.
What was it?
Let me, I can probably find it.
Let me see if I can find it.
Lynn, Lynn, Lynn.
How's normal Illinois?
It's fabulous.
I was 55 degrees today.
I do have to say that I firmly believe, Peter,
that when the student is ready, the teacher will appear.
And when I started my business, yeah.
back in 2006, I needed this advice, but I wasn't ready.
So thank you for being here.
Absolutely.
Larissa, why don't you read it for me, please?
Well, after you get a registered trademark,
how would you know if someone else starts using it?
That's what you predicted well.
Okay, that is the perfect question
and everybody needs to hear this, okay?
And this is why I'm glad the recordings are available.
I know we're going over, but as I promised,
as you guys have questions, I'm gonna answer them for you.
You know, I'm invested in this for you,
so don't worry about it.
We'll get you the stuff you need.
So let's say you get a federal registration
and you want to find out if other people are using it.
You can actually use a searching service
that will monitor your federal registration.
And what I will do, Larissa,
can you remind me of this, please?
Or send me a text or a DM or something
to post in the Facebook group, the link for the service.
Okay, there's a company, it's called Thompson Royers.
They do what's called a Syrian search.
And for a few hundred bucks,
you can have your trademark monitored
in any country of the world.
And if anybody files a trademark application
for the same thing or gets an application that's pending,
that's kind of similar, it's not the same,
but it's kind of similar, you'll be notified.
So that's one of the services I actually provide
for my clients is, as an example,
Accelotas has registrations all over the world,
Skillsoft, Stonyfield, Constant Contact,
and there's others.
So we monitor their federally registered trademarks
everywhere in the world.
And if anybody uses something that's similar,
I let them know, and then they can,
before the registration goes through,
they can oppose it if they want.
They couldn't oppose it otherwise.
Linda, do you have another question?
I do, but again, I don't want to take up too much time.
One of the questions,
the big ones I have is,
so I have been using phrases with my business for years
and I have searched before and people are using,
there's some variation of them,
but I just did the search and the test and system,
and they're not there.
So with the different phrases I've associated
with my business, do I trademark those phrases?
Each one?
You have to use them together as a trademark.
So let's say like, life is good, right?
That's one slogan.
You would follow it as one application, life is good.
You wouldn't follow one for life and one for good.
Right, but see, I've got two sentences, two slogans.
Okay, two slogans, yep.
So each one is separate.
Yeah, are you going to use them separate
or are you always using them together?
I don't know.
I was looking back at things I've done
and some of my documents.
I would figure that out first.
Whatever the answer is to that,
that'll dictate how you file,
because you're going to have to provide a specimen
to the trademark office.
And that specimen has to show use in interstate commerce.
And if you're always using it together,
then quite frankly, you may not be able to support
following them as separate applications.
It depends on how you're using it.
So I would look at that first
and then bring that question up again
after you figure that out tomorrow in VIP.
We can go into that in more detail.
John, I'm going to address your stuff either tomorrow,
because I want to get into the trademark application
because we're running a little late
because I want to make sure Paula
answered everybody's questions.
So I'm going to jump into the trademark application
for everybody just to respect your time.
But at the same time, I also wanted to make sure
that all your questions were answered.
All right, so let me do this.
On the sheet, here we go.
Okay, I'm going to drop a link here for all of you.
It says following a federal trademark application.
That's the first link I'm dropping for you.
Whoops.
Yeah.
Paste, there's one, right?
Okay, now that's one.
And now let's see.
So that is following a trademark application
describes the steps for you.
And then I'm going to drop one more link for you.
This one here.
If you click on this one,
it gives you the basic steps like piece by piece,
step one, step two.
It's very helpful.
Those two links, okay?
You're going to see them in a chat,
but let's jump into following a trademark application
right now.
Dun-dun.
I'm going to.
take you from the very basic.
It's probably gonna take about 15 minutes about that.
Share my screen.
There we go.
Okay, let's make this bigger.
Pow.
Okay, can everybody see my screen?
Yes, I think, yes.
Okay, good.
All right, so this is a USPTO website, USPTO.gov, okay?
Now, if you click on trademarks, you'll see apply online.
See that?
You click on that, you get this screen here.
Log in to access forms and all this other stuff.
You click on log in to TEAS and TEAS page.
All right, and you see this button says
apply online for a trademark, okay?
Now, the stuff that I'm showing you,
I just wanna give you a little overview real quickly first,
I guess, before we jump into detail.
The two other links that I sent you
kind of talk about the process piece by piece.
Let me log into my account first.
Set up a USPTO.gov account.
Log in, all right.
Some of you may not have set up
your own USPTO account already,
so you can watch this and then watch the video later,
but you're gonna have to have your own USPTO account.
So when you click, you click create a USPTO.gov account.
That's what you'll have to fill in.
Let me just log into mine.
I just dropped another link, Peter.
People are saying the two you dropped are exactly the same
and it does look that way.
So I dropped the trademark search.
Was that the second one you were saying, trying to drop?
Hold on, hold on one second.
Let me get into this first.
Or someone help me out.
Hey, what just happened?
Amanda just locked me out,
which actually would be good
because then I'll be able to walk you through
from the beginning.
Let's find out.
Let me do this.
I have like four accounts as a patent attorney.
Okay.
Okay, that's one account.
Let's see if that one works.
Oh, that one does work.
Okay.
Let me check my email.
USPTO.
Here's my code.
Okay, after you put in your username and account,
you're gonna get this.
Then let me go back to the USPTO website.
It's so hard to see things when you have the bar at the top.
There we go.
Let me move that to the bottom.
Okay.
Sign in, right click, paste, apply, verify.
Remember the browser, 24 hours, verify.
See if we're in.
Okay, we're in.
Okay.
All right, so what I just went through
is basically just setting up your username
and password, that's all it is.
All right, so on your own side, when you click on,
I'll walk you through that one more time.
When you get to the screen here
that says log into Ts and Ts1,
set up your USPTO.gov account.
You just click on that.
Once you click on that, matter of fact,
what I'll do to make it easier for everybody
is I'll just drop that, paste, enter.
There's the link, okay?
That's a login screen.
So you can either go through USPTO.gov
or you can go through this login screen.
Either way, it takes you to,
if you go through this login screen,
you don't have to find the login screen.
All right?
So you can just use this link here.
So once you're in,
you're gonna have to set up your username and account.
So now I'm not sure what screen you're looking at,
so I'm gonna stop and then share again
so I can make sure you're looking at the right screen.
You're doing good.
Okay, good.
So everybody can see right now,
this is my USPTO.
Okay, great.
All right, so I don't need to see this
because I know the system already.
All right, so on the left-hand side,
you're gonna see file and application, right?
File a TEAS application.
So now what we're doing
is we're filing a trademark application.
You don't have to worry about this first screen.
Just say skip for now and continue to forms.
And this here is the screen that you're gonna get
for filing a trademark application, okay?
Now, again, I would not suggest that you do this
unless you know what you're doing, all right?
All the things that we've been going through
should teach you enough.
have to get everything to a final form
and then go to an attorney to make sure
that they're doing it for you properly
and minimizing their costs.
If you understand everything that we're talking about,
then you can proceed with going the next steps
and following your own trademark application
because you know what you're doing.
But you want to be able to figure out
what your recitation of goods are,
what your services are, right?
You want to figure out what your international class is.
If you still don't know what those things are,
you shouldn't be following a trademark application
because you can't change what you filed, okay?
So now, in this situation, there are two options.
You can select what's called a TEAS Plus application.
If you do a TEAS Plus application,
what will happen is, and I'll walk you through it,
you'll type in the word associated
with your goods or service,
and then all the international classes
associated with that will pop up, okay?
And it just occurred to me,
some people may not be familiar
with a certain term that I'm using.
So I'm going to give you one example real quickly.
Give me one second.
I'm going to show you a trademark.
Even though I know we did this earlier,
I'm going to show you again.
Can everybody see this application
for Challenge Whisperer on the screen?
Yes? Okay.
This right here, the IC41,
that's called an international classification, okay?
Every service or good that you provide
will fall into a international classification.
They all fall into something.
Shoes have their own international class.
Cars have their own international class.
Software has its own international class.
Every single one of them has their own international class.
And then there's this thing that says,
you see the GNS?
That's your goods and services.
And that's everything that's listed after that, all right?
All this information here,
I had to input in my trademark application
so it would show up here.
That's what I'm walking you through,
putting all this data into the application.
Then once you finalize it, you can file it, all right?
But all this data has to come from somewhere.
This is why I'm saying,
if you don't know what the international classification is,
you shouldn't be filing an application.
And if you don't know what goods or services to use,
you don't want to file yet.
You want to figure that out first.
Then you get to the phase
of filing a trademark application, okay?
Does that make sense?
Just want to make sure that you're not kind of like
trying to swim in the ocean
when you haven't swum in a kiddie pool yet, you know?
Just make sure that you're okay, all right?
All right, so let's assume
that you understand what your international class is.
And you know what I'll do tonight is I will provide,
yeah, I'm going to give you this too, why not?
I'm going to provide you a link
that's going to show you exactly where to go
to figure out what your international classification is.
All right?
You're literally going to be able to type in words
and boom, your international class will just pop up, okay?
That should make your life a lot easier.
So I'll do that as well.
Larissa, can you just send me that in a DM?
So I'll provide that to them as well.
Okay, I'll put that in the Facebook group tonight.
Okay, so let's assume you know your international class
and you know your recitation of goods and services.
I would select, you can either do this top one,
which is a T's plus,
that means you're typing in the word
and then the class will pop up
and you click each dot associated with your goods or service
or you can select this T's standard.
T's standard is basically where you don't want to go
by their way of saying what you do.
Okay, so as an example,
when you follow T's plus application,
it's going to say shoes,
or instead of just saying shoes,
it might say shoe wear for sporting events
or for certain activities.
Like it'll be very specific.
If you don't want to go that route,
you can select T's standard to use your own words
instead of using the USPTO's words, okay?
So instead of selecting dots
and saying I want one of these, one of these, one of these,
you can type in anything that you want.
That's the difference.
But they charge you $100 more to do that.
So if you're going to just go by a checklist,
which I'm going to show you an example of,
then you just select T's plus, that's it.
Okay, and right here,
this is kind of a funny category for me
because I am a lawyer,
but if I select that a lawyer's applying,
then it makes the whole thing backfire
because I am a lawyer.
So I actually have to say that a lawyer is not following it.
It's kind of weird.
It's a glitch if you're actually a lawyer
and you do your own work.
But in any case, for you.
you also let know because you're not attorneys and then you just click continue.
All right, now you're up to the first screen. This is the main screen.
Okay, so now you type in who's the owner of the mark. All right, so you're it's either it's either
going to be an entity, which I would suggest. Right, so I would put your intellectual property
in the name of your entity, especially if you're a an individual. If you in fact have
like an LLC or something like that and there's other individuals that will have control over
the company then you want to think about whether or not you want to assign all right title interest
to the company because if you do and you don't have the voting shares associated with
ownership of the IP you may lose your IP.
I'll say that slower. If you are part of a corporation
and you want to assign all right title and interest to your intellectual property such
as your trademark to that corporation so as to limit the potential for liability your own
personal liability but you do not have ownership rights or you have less than 51 of the voting
shares of the company that company can essentially take your IP because you assigned it to the
company. Just something to keep in mind. All right, so make sure you know what you're doing
before you assign everything to your own company. All right, so now in here let's say it was a
company so then what I would do is my company is A to E challenges.
Right, it's called average to elite challenges basically showing going from average bringing
it to an elite level. So A to E challenges right and it's an LLC so LLC. So now if you have a DBA
if you're doing business as something else you would know if you filed something with your state
and you have a DBA you would fill in your DBA here. If you don't know what a DBA is chances are you
don't have one. Okay, so then you want to select exactly what kind of entity type there is.
In my situation it's an LLC so I select LLC. When I select LLC it asks me what state was
incorporated in. Right, so then I go over and I select where it was incorporated. Delaware,
New Hampshire. In my case I put it in New Hampshire for specific reasons so it's now in New Hampshire.
Now what if you're in a foreign country? If you're in a foreign country it's different. You may not
have one of these things and you're gonna you know you may have a corporation but it may not
be in the United States. You may have to select on the bottom here non-U.S. corporation. You might
have to select let's say it's Canada. So yeah, whoop, there's Canada. Got it. See how simple that was?
That's it. Then you go down, you provide your mailing address, you know, cut,
paste, your mailing address, the state you put in your state. Mine is New Hampshire.
Come on, New Hampshire. There you are. Okay, and then your postal code 03046.
All right, your phone number you don't have to do. You don't have to worry about that. Fax number
you don't have to do. Email address you do have to do. I'm gonna use someone that I'm not using
I'm gonna use someone that I'm not using right now.
And then you can put down your website address if you want. Just keep in mind if you're putting
down your phone number, your fax number, your email address, these things people can look up.
All right, so for that reason you might want to put down your company's email address.
Just remember the USPTO is going to communicate with you based on what you list here.
So you got to be careful what you list here. If you don't list the right email address here,
you're not going to get the information that you're that like the office action or the allowance,
you're not going to get it. Okay, see they want a phone number. I'm not going to give it to them.
That's the error message they got. Telephone number has not been added. Although optional,
please enter it so we can harass you and the public will know how to reach you so that they can
ask you whether or not you want to renew your car warranty, you know, that kind of stuff. Yeah,
that you can add it if you want. I choose not to continue. All right, now we get to this screen.
This is really simple. Standard character. So if it's a wordmark, you just type in your wordmark,
right? Challenge. Whisper, whisper. That's it. That's all you do. Very simple. Very simple.
Now, what if it's not a wordmark? What if it's a logo? You click right here where it says special
form stylized design. Click on that.
Nah, it takes you this to this other screen instead.
Very different.
On this, you'll choose your file.
Basically, whatever your logo is,
it's a JPEG or it's a GIF file.
You'll click on this button here
and you'll find the file and you'll attach it.
That's all you do.
Okay, so you're attaching the image.
If there are any words in your logo,
you have to type out the words that are in the logo.
So, you know, the Nike Swoosh,
let's say that Nike was inside the Swoosh.
They would have to type in here, N-I-K-E, Nike, okay?
If there's color, that's important.
You would type in the colors
that are used associated with the trademark.
A little perk or an extra perk that I'm throwing in for you,
if you have colors that are associated with your trademarks,
it's nice to file your trademark application
in black and white
because then your registration will color any,
it will cover any color that anybody uses ever.
If you file it just for gold and purple,
then if somebody uses it in red and green,
you're gonna have to prove likelihood of confusion,
which you'll probably win on.
It'll just make your life a little more difficult.
If you filed it as black and white,
just a line drawing black and white,
it's very easy to win
because you own every color if you file black and white.
All right, that's just an extra golden nugget for you.
And then you have to describe it down here.
So you might say a curved line
where the beginning of the line is larger.
The beginning of the line, let's say, is pointed
and becomes larger immediately with a curve
and where the distal portion of the line is thinner
and progresses upward horizontally and vertically.
Something like that.
I mean, basically you gotta describe the image.
That's basically what you're doing, okay?
And that's it.
And then you just,
you're not gonna need an additional statement.
You don't have to worry about that.
And then you click continue.
We're not doing that.
So I'm just going back to standard characters
and I'm just typing in challenge whisperer.
Pow, continue.
All right, now we, this is the most important part.
Well, I'd say this is the most difficult part.
So I'm gonna take a moment with you.
You have to add your goods and services.
We've already talked about that there's ads,
there's goods and services for a trademark.
You click on that button.
That's all you do.
Now, since you filed a TEAS application,
remember how I told you you'd have to type in the word
that's related to your goods, right?
So over here, I would type in, let's say, sneakers, enter.
Look what pops up.
International class 25, sneakers, basketball sneakers,
wedge sneakers.
You see that?
So now all I have to do is just check.
Yep, I want sneakers.
Yep, I want basketball sneakers.
Yep, I want wedge sneakers.
Insert to check the entries.
Boom, done.
See how simple that was?
So whatever your goods and services are,
you just type it on that line.
And then you're gonna see a bunch of things come up.
You figure out which ones pertain to your goods and services.
You click on those,
and then they just populate on your screen immediately.
That's it.
Is anybody confused about that part?
I can't see the whole screen.
You have to let me know, Larissa,
if anybody's confused about that part.
Karen had a quick question
about when you started talking about the colors.
Yeah. Is there a place
you delineate that black and white form?
The entry of colors.
Can you unmute her?
Did you go to the special form?
Or what did you do?
You have standard characters and you typed it in,
but where did you start putting like the swish?
What did you click to do that?
Okay, so when I go, this is the form that we were at.
I clicked on special form.
Okay.
Yeah, because you see the words right next to us
is stylized or design.
Okay, got it.
That's what you want to click.
So you click on stylized or design.
Now it all pops up.
You choose the file.
So that would be if I have a special font,
if I have-
a special color, if I have those things.
The logos, right.
So anything that's a logo, like an image,
or if you're using a stylized way that the text shows up
with certain colors, those are all logos.
Okay, got it.
Okay.
All right, so let me go back to standard characters,
put in my challenge whisperer.
Peter, under goods and services,
then does everything go in the one application?
Like how you found shoes.
Like we were saying, what if you were in the future,
you're like, well, I might make jackets
or I might make t-shirts.
Great question, Jennifer.
And I also offer coaching.
Okay.
Come on, Jennifer.
Come on, Jennifer, that's so good.
Funny, you should ask that question.
We are literally gonna be talking about that right now.
So you see underneath here,
you see where it says section 1A, section 1B?
You guys don't have to worry about 44 D's and E's.
So section 1A and 1B.
1A is actual use, 1B is intent to use, right?
Okay.
So 1B is I'm not using it yet.
And you'll see right underneath it,
it says no use of mark yet, intending to use.
It says it right there.
Okay.
And over here it says actually using mark in commerce now.
All right.
So what you do is if I'm going to assign
the ones I'm using now,
let's say I'm not doing wedge sneakers.
I don't even know what a wedge sneaker is.
So let's say I don't, I'm not using wedge sneakers yet.
So I want to file for sneakers, basketball,
and sneakers, basketball, sneakers, and sneakers.
So I select section 1A for those two.
Now I have to attach a specimen,
which actually is an image of my use, right?
And so that trademark on sneakers
or that trademark on the packaging,
I take a picture of it.
I attach that as a specimen, right?
That's what a specimen is.
Okay.
So let's say it's Western Digital, Western Digital.
This is their, this is their drive, right?
You see on there, the WD, you see that?
So let's say they're filing for that logo.
That's already on these things,
but let's say they're going to start making laptops.
So then they would select actual use for the hard drives.
And then laptops, they're not using it.
So they wouldn't select that button yet.
So it'd only be a section 1A.
Let me go back again.
Oh, I can't go back yet.
Let me see, remove 1A.
Yes.
Okay.
So we're back on the screen again.
So nothing's been checked off yet.
I'm trying to show you things
that the system won't let me show you,
but so these two that I'm listing right here,
I'm selecting 1A because I'm actually doing it
with these two now, right?
So I select section 1A.
Now I take a picture of the product with the name on it
or the packaging with the product in the packaging.
I use that as a specimen.
I describe it, you know,
box for holding sneakers with trademark on it,
something like that.
And then I just come over here
and I put down my data first use anywhere.
The first time I started using that trademark
for those goods, I just type in the date.
Let's say it was January 12th, 2021.
I'll put that there.
And then the first date of use in commerce,
that's when my first sale or my first, you know, trade show.
Now I may have started using it internally
within the company before I started using it publicly.
So that's where it says data first use of mark anywhere
by applicant or the applicants related company.
Then I can put down the date
that we started using internally there.
That's where I would put this.
But then the date that I started selling the product,
that would be here.
So I may not have started selling a product
until like March, let's say March 25th, 2021.
Okay?
So now these here, I'm assigning as section 1A.
They're actually being used.
I haven't done wet sneakers yet.
You see, it's still not checked.
So I click assign filing basis.
Okay?
And it's giving me an error
because I haven't attached the specimen.
So you'll be able to attach the specimen
because I'm making this up.
So it's going to give me an error
because I don't have anything attached to it.
Actually, I could.
I could.
It'll help you out.
Let me do this.
Choose a file.
I don't want to give them my good stuff.
Pictures.
Hey, Jesus.
Let's put Jesus in there.
I'm going to attach Jesus in my application.
Attach.
Here we go.
That's not black and white.
Yeah, it doesn't matter.
They can't tell.
It's black and white and whatnot.
All right.
So now it's attached.
Wonderful.
Return to form.
So I've attached it.
Now I go back to the form.
Okay.
Jesus is supporting my application.
Awesome.
This is definitely going through.
All right.
So now I put a description, you know,
image with Jesus.
And then those are my dates of first use, right?
So then I go assign following basis.
There you go.
So already it's been, let me move this down
because I'm seeing all of you there.
You see on the right side here, this 1A and 1B here.
You see that?
It's telling you that the following basis has been accepted.
So that begs the question of what about this last one?
Wedge sneakers.
Well, you just click on that and say,
I haven't used that yet.
So I select section 1B for that one alone, right?
And that's it.
And then you're going to have to check this box.
And the reason why this box is telling you
that you're not going to get a registration
until you change it from intent to use to actual use.
That's what it's telling you.
So you just click that box to say, yep, I understand.
Then you click your assignment following basis.
Now somebody unmute themselves
and tell me why I didn't have to attach a specimen.
Because you're not using it.
Because you're not using it yet.
Exactly.
And that's it.
That's really it.
So now you see on the right hand side,
there's my actual use ones
for sneakers and basketball sneakers.
I'm not using it for wedge sneakers
as my intent to use there, right?
And then I click continue.
But Peter, didn't you say yesterday
that we shouldn't put them together
with intent to use and actual use?
I'm trying to give an example from everybody
and I'm not going to do two brand new spanking applications
one after the other.
So I'm showing them how to do it all at once
if they so choose to do it.
Okay.
So obviously-
Are you saying you can do it all at once?
Are you saying those should actually be separate?
You absolutely can.
But remember what I told you yesterday,
if you file them all as one,
you're not going to get one registration at one time.
You're going to get some that are allowed
and some that aren't.
And then you're going to have to file a petition
to separate your applications to get an allowance.
And then you're going to have two applications anyway.
So it's up to you, which way you want to do it.
So if we're just getting started,
everything at this point then would be a 1B
because name, name, unless like for right now,
like I'm actually using my company name, my trade name.
So that would be, I would file that as a 1A
because I've actually been using that.
I got an email.
I use that on stuff.
Everything else, I'm going to have an event.
I'm going to give away backpacks
and whatever else, all the things would file under 1B.
You got it.
Got it.
Come on.
You got it.
Oh my gosh.
Do you need an assistant, Peter?
I'm available.
That's really good.
No, you nailed it.
I'm glad that's on your part.
Yeah.
No, that's literally how you do it.
You literally just broke it down.
It's some of them you're actually going to be using already.
Some of you may not.
I just showed you how to do it on the same application.
I tend to do them on separate applications.
So I have something really clean
and I don't have to file some kind of
separating of application petition later
just to keep things simple.
So for that reason, I file them separate
but you don't have to do that.
So Peter, when we do a 1B
and we think we're going to do certain things
and we get around to like, I'm ready to go to a 1A
but I'm not going to do some of the things
I thought I was.
Can we remove some of those things?
Like I'm not going to do jackets or handkerchiefs.
That's a great question.
The answer is yes, but it's more work.
So yes, you can.
You would have to pull certain goods out.
It's more complex, costs more money,
but it is possible, yeah.
All right, so put some thought in again
to what you're going to do and then work towards that.
Yeah, that's why I'm saying
to file separate applications, honestly,
because if you know, like this year
I am definitely going to do X, Y, and Z.
Those are being sold zeroed out.
File one application for that
even though it's intent to use.
And then you're thinking, you know,
maybe sometime in the next three years
I'll add backpacks and I'll add sneakers.
File that separate, you know.
Now, could you file them all together?
Yeah, you could all, absolutely.
But you're adding an extra step
of where you're going to have to,
you're going to have to make a decision
as to do I file a petition to separate them?
Do I go after these for now or not?
And it makes it more complex
as opposed to just saying,
I'm going to let my first application get registered.
Now my name's getting acknowledged by the public
with a federal registration.
So people are going to stay away from my property
as opposed to using a TM, you're using a Circle R.
It's way more powerful in the industry.
All right, let me conclude this.
So, cause I'm sure some people need to jump off.
And then I can stay on for a few more minutes
for people who have additional questions.
A docket number is really just internally
if you have like multiple trademark applications
that you file.
And so you just want to identify them separately.
You might call this like, you know, 101
and then your next application might call 102
or you might call it 101.
And then the next one might be 201.
It's up to you.
It's an internal thing.
And then your email address,
that gives you the option to put a courtesy email,
a second one.
So I'll just list that, continue.
And now you get to your declaration page,
which means you're done.
This is essentially the end.
There's your cost.
You're signing directly your basis here.
You have to make sure that all of this is accurate
in your declaration.
If the applicant is filing the application based on use,
you say, yep, for the ones that are used
or if the application is filing based on intent to use,
you have to make sure all these statements are accurate.
You can read them on your own.
But basically what they're saying is you believe yourself
to be the first person to use it.
You haven't stolen it from somebody else
and you believe yourself to be the owner.
That's basically what it breaks down to.
Then you're clicking these three over here
because you have to click all of these to go forward.
And you can read all of these on your own.
It's basically saying that you're aware that if you lie,
it's a federal offense.
So let's say, you know, I really like Patricia,
but man, that trademark she just came up with,
I saw her use it on the services.
I'm gonna file a trademark application right now.
I'm gonna beat her to the punch.
Here I go.
I can't click these buttons
because that would be a federal offense.
That's actually her trademark that I stole.
Then you sign this.
When you sign, you use a slash, then your name.
That's how signatures are done electronically.
It tells you right under here.
Example, signatures include slash John Doe.
John, they misspelled your name.
That's weird.
So now you actually have all that.
You click the button there
and there's your 222.22 is today's date.
Then you type in your normal name here,
your position, like owner of the company.
There's a date.
Owner of the company.
There's the phone number.
And then you click validate.
Once you click validate, it brings you to this screen
and this is where you submit, all right?
So now you can review everything.
If you click on the input button,
here's all the information you just entered.
You can look it over, make sure everything's right.
Is everything, is that the name?
Yep.
Is that my company?
Yep.
Is that the right address?
Yep.
That's the email address.
Yep.
Is that the registration of goods
and services that I want?
Correct.
Yeah, literally you can go through it,
just make sure everything's right.
Once you've done all that,
you have to go through the whole thing.
Just make sure it's all correct.
Then, oh, and then the specimen that you entered,
you just click on specimen and you can see it
where you submitted.
And then go back.
And then you just submit it.
The XM file is just showing you the same thing
and more like a HTML format.
It's not really doing much of anything for you.
And then text form is basically the same thing,
but in text format.
So if you want to print out proof of what you're doing,
you can click those buttons and print them.
And then you just click on, yep, I've read everything.
Paste, submit.
That's it.
That's literally everything.
Okay, questions.
Let's start out with Lynn.
Go right ahead.
Okay, so if the phrases I have been using
since I started my business
have not been trademarked by anyone yet,
can I trademark them?
That's my- Oh, absolutely.
Okay, but didn't you just say a moment ago
that if someone else was using them,
but they haven't-
I thought you just said nobody was using them.
No, they were using similar,
they were using some of the similar phrases,
but for example, like a two line, a two word thing,
but it's not trademarked.
So you're asking if somebody is using a specific phrase
that you're interested in,
but they haven't filed a federally registered trademark,
they haven't filed a trademark application,
you're asking, can you use it?
Yes.
So it breaks down to
what is specifically the recitation of goods and services
that they're going after or that they have
and that you have, okay?
So let's say that you're looking at Apple,
let's go back to Apple again, right?
So now
Obviously, Apple is owned by the company Apple, right?
Well, you want to use Apple for, let's say, detergent, okay?
So there's an example where somebody actually owns it,
uses it, but the way you're using it
is completely different,
not the same recitation of goods and services,
totally different international class.
So there shouldn't be a problem with something like that.
But if it is related, what was that?
But they, Apple's got that trademarked.
What I'm saying is that this is what, like, okay,
so when someone calls himself a career coach,
I'm using a description of what I'm calling myself,
this phrase, but that phrase has not been trademarked.
All right, so you're saying you're using something
that has not been trademarked.
I understand that,
but are you saying that somebody else is using it?
That's the important part.
They've used the phrase in general, but not-
So it always comes down to how have they used it.
So let's say the phrase is just do it, right?
And you're going to use just do it for coaching, okay?
So let's say you're doing coaching associated
with, like, weight loss or something like that,
or weight maintenance.
Let's just say it's weight maintenance, okay?
So now just do it.
Let's say you're just, you're going to try to use that.
Somebody else has been using just do it for,
let's say exercise programs, training programs,
and you want to use just do it associated
with weight loss programs or weight maintenance programs.
They're kind of related.
So because they used it before you,
they would have rights under common law,
and you'd be seeking to use something that's similar to them.
So therefore, chances are there might be a likelihood
of confusion, so I would not use it.
But if it's completely different,
like just do it is for sneakers, right?
But you want to do, let's say, a weight maintenance program.
Now, it's owned by Nike, so chances are,
since it's so well-known and so famous,
the chance that there's a higher chance
that there's a likelihood of confusion,
so you should stay away from it,
even though they're sneakers,
and you're like weight maintenance.
A court might say, well, first of all, it's a famous mark.
Second of all, sneakers are kind of used to make sure
that you're maintaining your weight at a certain level,
so they might be related.
It's very mushy.
When it comes to trademark law, it's very mushy.
It's likelihood of confusion.
So you got to look at those factors
that we have listed one by one and see if there's an issue,
and I would speak to an attorney just to make sure.
But the fact of the matter is,
if somebody else is using a slogan,
and you want to use that slogan, and they predate you,
you got to look at exactly how they're using it,
and then you want to look at how you want to use it,
and do that analysis of,
is there a likelihood of confusion or not?
That's where you need a lawyer.
That's why they get paid the big bucks,
so they can do the analysis and say,
Lynn, love your heart, know where you're going with this.
I think there's a likelihood of confusion
because of the following elements of those nine steps.
These seven here are an issue.
So they can tell you that, and they can say why.
Does that make sense?
Because you're in the common law
versus common law situation.
They don't have a federal registration,
you don't have a federal registration,
but the marks are very similar.
So if they're similar, you got to do that analysis,
which is, it's mushy.
There's certain things you can grab on and go,
there is no, McDonald's has a registration for like burgers.
I'm putting out a new drug,
and I want to call it McLife, something like that.
If they sue me, really pharmaceutical products,
like I've never seen them do anything
with pharmaceutical products.
They may try, but chances are, they're not going to win.
So you got to do this analysis,
and that's where the lawyers become very valuable.
Because if you do that analysis wrong,
you can get in trouble, okay?
Thank you.
You're so welcome, Lynn, you're so welcome.
Patricia, how are you, my friend?
Hey, and by the way, I know we're going over,
I'm just giving you some extra time.
I'm just being available for you.
I'm going to stop at three, but if anybody has to go,
obviously you can go, but I nailed down
basically from 12 to three for all of you.
So I'm here for you.
So go ahead, Patricia, go right ahead.
Thank you.
Okay, I'm fabulous, in the chat,
I actually got notification just a while ago
that I got first place in that writing contest.
Nice, very nice.
Yeah, so I was crying in the chat.
Yeah, so really well, thank you.
And now I've got to, I'm going to send you the short.
story that I did, I'm going to email it to you, because I want
to know how I protect all of that. You know, her name, right?
Yeah, that's something we have to go through here in the VIP,
like kind of break it down. But so are you talking so you have
a story? Yes. And are there images in there? Is there a
title? Yes, it all has to do with Kingdom Warriors. It was
the Kingdom Warriors and FTS. Oh, yeah. What Eric? Yes. I won
first place in the writing contest. No way. Yes. Did you
get a free NFT? I don't know what I'm gonna get yet. Ask him
if he's giving you a free NFT or if he's giving you a kingdom
key. Okay, yeah, he still has to he still owes me an airdrop.
So okay, cool. Ask him if he's going to give you an NFT. Say I
won the prize. I want a free NFT like do that. Oh, by the way,
tomorrow, we're going to start giving away the prizes tomorrow
in the next in the next three days. Oh, we're gonna be giving
away the prizes. We're starting. Now we can go to the question
that I actually asked earlier before I got that notification.
Yeah, go ahead. Okay. And it was okay, when you said file in the
name of your entity. Now I have a 508 ministry as you know, you
know, yes, with Todd and Tamra. Yes. Yeah. And so do I file
under the name of my ministry under Patricia Dilley?
That's a phenomenal question. And I hate to say it, but it
depends. I mean, you need to figure out what are the benefits
of having it owned by the ministry itself, right? Or
having it in your own name, if I had a trademark, which I do
challenge whispers, I own, but I'm also going to sign all
right, I don't interest to a to e challenges. The reason why is
if there's ever a lawsuit associated with that name, they
can't come after me and my assets, they're going after the
company. And that's it. And whatever assets are associated
with the company, not not me personally, right? That's why I
have an LLC. Now separate from that, I'm also a sole proprietor.
Right now, I'm going to be hiring very shortly employees.
But as of right now, it's just me. So I don't have to worry
about when I sign all right title, I'm interested in
trademark to the company, somebody in the company selling
the trademark, or licensing the trademark to somebody, I don't
want them to license it to because I own it, I own the
company and I own the trademark. So by my assigning it over to
the corporation, I don't have any problems. When you actually
have to start worrying about this is when you have more than
one person who owns the company. So if you have a partnership, or
if you have an institution where there's a board, and the board
makes the decision with regard to the intellectual property,
like who's it going to get licensed to who, who renews the
trademarks, who actually can sell the trademarks. So it
depends upon your your entity, who actually has the rights to
the intellectual property, meaning who can sell it, who can
license it, who can, you know, renew it, all those things you
have to determine now before you assign all right title and
interest to the entity, because there's certain benefits to
assigning it to the entity, namely liability issues, right?
So it's the same
A&E your LLC?
A&E is my LLC.
I don't yet have an LLC. Tamara and I have talked about that.
But there's so much to know.
And I have a 508. You have a 508, right? So that's an entity.
So you can assign all right title and interest to whatever
kind of entity you have. Okay. So you you just have to figure
out in your entity. Are you the sole owner? Or are there
multiple people that are in it with you?
No, I'm the sole owner. I just have a board, you know,
so I would call Tamara and, and Todd and ask them because they
know more about the 508 that they set up, or they taught you
how to set up. They're amazing. Like they're so knowledgeable.
I'm their ambassador.
Oh, I don't blame you. Like, they asked me to be on for them
once and I was like, I was in awe of what they did with their
crew. Just amazing.
So to help people found their ministries. I love it.
Yeah. So what I would do is I would touch base with them and
ask them, can I in the entity that I created, can I sign all
right title and interest to the entity that I created, namely the
508? Okay. Um, so that's what I would do. Larissa is raising
your hand. Yes.
Right along those lines earlier, there's a question about what if
you're a 5050 owner of a company with products? Karen, was that
you bringing that up earlier? I feel like it was along the same
line.
Yeah, it's my hope.
It is. Thank you, Larissa.
Yeah, yeah, it is along the same line. So what that means is if
you're 5050, you both have equal shares, so you can make a full
decision on behalf of the company. So you better trust the
person that's your partner. Why do I mention this? I've had
situations where individuals have come to me and said, I want
to, I want to file
for this IP, right, this patent, okay.
And then they, I say, okay, are we gonna sign
our right title and interest over to the company?
And they say, oh no, we're all friends.
Like we're all buddies, there's no issues.
I said, okay guys, I've been doing this a long time,
a long time.
I make money based on you guys fighting.
So let's be clear, I don't want you fighting.
Like I have no desire for you to fight.
So are you saying that you're okay if Tim over here
or Mary, Mary over here owns the patent
and she decides one day to leave you guys?
Oh, that'll never happen.
I said, guys, it will, okay, trust me.
Like I'm in court all the time about this issue.
So what you need to do, you need to make a decision
as to whether or not you are okay
with a single individual having all right
to tell her interest to the IP
that you want the company to be able to use.
Because if that individual leaves and goes to a competitor
and gets a million dollar bonus to join that competition,
now your company can't use that IP.
It's gone, it's not theirs.
Are you okay with that?
And they said, oh yeah, we're fine with that.
I'm not worried about that.
You know, Mary's never gonna leave.
Okay, no problem.
Three years later, phone call.
Yeah, what's going on, John?
Yeah, well, Mary left.
We don't think we own the patents
because she owns the patents.
What can we do to stop her?
Nothing.
That's what you can do.
Nothing, because she owns all right to own interest.
So if you're 50-50, you know,
and just to be clear, partnerships work well all the time.
There's, you know, but just be clear
that you both have an equal right.
One of you can decide to sell it tomorrow
and the other one can stop them
because you own it 50-50.
That's why the 49-51 is what you typically see
in agreements because that person has a 51% share,
has the right to make the decision
with regard to who owns the IP, who can sell it,
who can do what, right, and the other person can't.
So Patricia, I'm going to move on to Susan.
Okay, God bless everyone.
Bless you, take care.
Susan, go right ahead
and you're gonna be our last one today.
Go right ahead, my friend.
Hopefully it's quick.
It's kind of along what you've been talking about, I think,
but on that application, there was the entity
and then there was the DBA.
Yes.
Would you put both of them?
If you had a DBA?
Yes.
Great question.
The answer is yes.
And then when-
You would list the entity and you would list the DBA.
You do both.
Okay.
I also-
I'm gonna go back in the document and show you.
See if I can do this.
Oh yeah, it's letting me.
That's awesome.
Share screen.
Yeah, let me go all the way back.
So you just do DBA and you type in,
awesome enterprises.
That's the DBA, right?
So there you go.
So you just type that in
and then you just click continue and you're fine.
Okay.
Because what happened is I have like three small companies
because they were doing different things.
And then I had my LLC that the lawyer said
the others could come under until they grew
and could go on their own.
So those three had DBAs, but then I have my LLC.
But if I wanna do something for...
So the LLC is I'm Not a Turkey Productions.
And then the company that I'm asking about
is called Inspired Actors
where I produce classes
and have a membership group and all that.
So if that's the one that I'm interested in,
would I put I'm Not a Turkey as the entity
and then Inspiring Actors as the DBA and then go forward?
You're asking a legal question.
This really falls in the legal advice.
So what I would say, let me do this.
I'll tell you generically what happens.
And then if you wanna pursue this further,
we can talk separate from this video
because I don't wanna put any legal advice on this.
And we really should have a relationship before you do that
because you don't wanna get in trouble.
So, all right.
So let's say I have a company A to E Challenges, right?
And underneath it, I have multiple...
You have to head out Larissa.
No, waving Karen's leaving.
Oh, okay.
Bye Karen.
Let's say that you have,
or I have A to E Challenges and underneath it,
I have Protection Portal, which is another.
the trademark application I have. And so my DBA, my DBA
technically could be that other that other company name, that
the situation I'm thinking of is more like you have a big company
and underneath your company, you have subsidiaries. Okay, that's
really what it breaks down to. It's like, here's, here's,
here's Microsoft underneath Microsoft, I have these three
subsidiaries, right? What would make sense is for you to
determine which subsidiary do you want to hold the IP? That's
really what you want to look at, you want to say, well, who do I
want the IP to be associated with? Okay. And in that
consideration, you want to look at things like taxes, you know,
like how much, like there's certain certain locations where
if you you have the IP in those countries, or in those states,
there's a lower tax bracket, right? There's certain things
you can do with your IP, because it's IP is an intangible
asset. And since it's since it's an intangible asset, it falls
underneath a corporate expense, right? It's like, like, when you
buy furniture or other things, it's actually it's not tangible,
but it's called intangible, but it's still an asset. So all the
expenses that you have fall under corporate expenses, like
you could literally, I know a number of people here that are
in this challenge that are writing this thing off, as like
educational purposes for their corporations, you know, and even
the thing that I'm going to be offering, like later, they're
doing the same thing, they're writing it off as a corporate
expense, because it's necessary for the company to continue,
you know, functioning. So what I would say is, this is your
entity, these are your three subsidiaries, figure out where
you want the IP to be held. That's what I would do. I
wouldn't say Microsoft and underneath Microsoft is company
A company B company C. So I'm going to follow it on the
company, Microsoft, but then use a DBA of company A, I
wouldn't do that. I would file it underneath the company name
itself. A DBA is really more of, you know, I made a challenges
but or like, I'm I'm average to elite challenges, but I go by 80
challenges. You know, that's more of a DBA. It's not like, I'm
average to elite challenges. And I go by, you know, protection
portal that those are those are that's not really a DBA. That's
that's, that's different. And when you file with your state,
you'll see you'll actually use a DBA. You like usually when you
file your application, it gives you an option for DBA, john,
go ahead.
Yeah, we had to do that. So like my, my business name is the
smart cookie company LLC. So if you search me out in the IRS
database, that's what it is. My DBA is yummy, delicious cookie
company. So that's the difference. I started off, I
filed my paperwork. And when it all came back and got rejected,
I was already filed in the IRS as the smart cookie company, LLC.
So that's how I operate. That's, that's my legal name and all my
documents. Yummy, delicious is the DBA.
Yeah, so Susan, what you want to do in that situation, it'd be
good for you to speak to a corporate lawyer to find out for
your corporate formation, you know, the original entity name,
and then what is your DBA? As far as the as far as the use
PTO goes, they don't care about any of that. They just say, tell
me what your name is your entity and what your DBA is.
That's it. They don't care. They're not going to investigate.
They're not going to look into stuff that the government they're
not going to spend a lot of time on much of anything. I'll leave
it at that. So So with that being the case, you know, they
just take your fee and then they go through the investigation
process. But what I would say is, speak to your corporate
attorney, make sure your corporate formation is done
properly. You know, if this is the name of the company, this is
my DBA, then when you go into use PTO, you're just copying
what you already have in your corporate documents. That's all
you're doing. Separate from that, I would just if you have
like a main entity and subsidiaries, figure out where
you want the assets to be held. I know people that will hold
assets in the United Kingdom because there's a specific tax
bracket there, you know, or they'll hold it in Florida
because of something or DC for a reason, like there's specific
strategic reasons to hold IP assets in specific regions,
learn them. That's where you should speak to an attorney to
figure those things out. Mary's gone crackers. What are you
telling me, Mary? What are you telling me, Coach Mary? What
are you telling me? Is it what is this about this issue? Oh,
okay. All right. All right. I thought you had an example or
something. I was like, you're getting me hungry here, Mary.
Um, alright, so that's, that's, I think the end of our share
today. I want to end there. Hopefully, this extra time that
I spent with you helps you all. I have to start doing my work
for the law firm now. So if you have any questions, obviously,
you can put them, you can email them to me. Feel free to go
live again with with
the points that you think are really good takeaways, you know,
and what you think about them.
And the reason why is because people are watching those and
they're learning a lot from what you're seeing, you know, your,
your own filters are actually helping people see things.
So, um, feel free to do that. Okay. And with that,
bless you all. It's been a pleasure and I will see you all tomorrow.
Thank you. You're so welcome. Take care.