Ok get ready for the details. Yes it’s all in the details. Ann does a great job of working me through the particulars of each of the Intellectual property types. While there is always human interpretation, generally you can use these guidelines to decide when to get professional help. Hint… If you are building a brand, get help immediately and save yourself future headaches and likely issues.
Ann C. Palma
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Transcript: (note- this is a new tool I am trying out so it is not perfect- it does seem to be getting better)
Ann: 00:00:00 Here, which with the Internet, it’s much easier for people to infringe, um, and it’s sometimes easier to, to catch them doing so, but it can be difficult as well. I know that some major companies, when you think of a Time Warner and companies such as that have dedicated departments to monitoring their copyrighted materials.
Speaker 2: 00:00:34 Steven feeders in
Stephen: 00:00:39 hey wanting to jump in. A couple of things. First off, I got to put a disclaimer on this episode of four and then you’re going to hear in Palma talk through a lawyer who talks to a whole bunch of stuff. It gets very technical for me to. I can understand it because that’s the way I think is if I don’t understand it, there were other people that probably don’t understand it. So I asked her to go deep and I, I parsed, I pushed on a bunch of things and one I was asking about Google ad words and so her answer was it was, it was legal. Now she did qualify it and I want to make sure that her answer gets corrected for her. I’m really what she’s saying is that it’s still being disputed, so it’s really not perfectly conclusive that it’s legal in some cases it’s not.
Stephen: 00:01:26 And so it’s really being disputed. So really, you know, take that answer and, and adjust it and just say, hey, don’t be. So that’s when you get council. That’s why you need council. And again, that’s what you talked to. Okay. Disclaimers out there and you should be all good. Got You. Represented right. Um, I do want to talk about two sponsors though. I don’t want to miss this because I use both of them this week and I just always think that it’s better when you can give real life examples. So the first one said when I first went, I want to talk about is solutions four ecommerce solutions, the number for ecommerce. Um, that’s Karen lockers group and I’ve been a customer of carrots I guess for a couple of years. And I use it all the time. I mean, I don’t, I mean I’m embarrassed to say I don’t create my own listings.
Stephen: 00:02:10 Karen’s group does and sometimes Karen herself does. And the case that I used her this week was for a bundle, wanted to create a bundle and it’s bad news, it didn’t work. But man, she went extra mile, like spent almost two days on it trying to get this done. And it turns out the brand, you can’t do that. You can, it was a toy and they would not allow it. They rejected it twice actually I think three times. But she tried all, I mean to go above and beyond. That’s why I use Karen Locker Service. That’s the service that I get. Um, and so, you know, to go above and beyond and basically, you know, I’m sending her stuff to create listings for me. And then in this case it was a bundle which just didn’t work. And she went for the exemption and they said no. And then she tried it again.
Stephen: 00:02:54 They said no. So I appreciate the effort and if I would have spent that much time in q four, I mean it would have crushed me. That’s why I bring somebody on the team and that’s why we have a solutions. The number for ECOMMERCE, I’m on our team and so, you know, if you’re interested in that service and you’re gonna pay the same price I am, but you get to say 50 bucks. I don’t get to save 50 bucks. I got to say something to her, I don’t get to save 50 bucks. Um, but if you go to solutions, the number four e-commerce dot com, forward slash momentum, you’re going to save 50 bucks and she’s going to do an inventory health report for you. The only place you’re going to get the inventory health report, and let’s face it, if you’re getting monthly storage fees and longterm storage fees, yes, we all are every month from now on, it’s an opportunity to get your inventory in order, save some money, but save the 50 bucks.
Stephen: 00:03:46 So again, solutions number four, e-commerce dot com, forward slash momentum. Tell Karen I sent you the second sponsor I want to talk about is scope. And you know, I know I talk about them a lot us because they use him a lot. And so we did wholesale, um, uh, we expanded some wholesale, we added some variations in and so we added some other things. And so what we do is we just, you know, do the reverse ace and lookup and get out there and take a look and see our competitor, what they’re doing, why are they having so much success? And so by, uh, using scope and doing that reverse lookup, you get the opportunity to, um, to have that benefit. So if you go to seller labs.com, forward slash momentum, a port such scope, excuse me, I’m sorry, forward slash scope. Use the code momentum and you’re going to say 50 bucks.
Stephen: 00:04:36 I love that. $50, Ken, to tell, I always ask for a $50 savings. So use that code momentum and you’re going to save 50 bucks and it’s going to help you find the high traffic keywords. Keywords are important, um, you’ll hear people talk about them all the time, but you want high traffic, you want to make sure it’s a competitive market right now. You’ve got to make sure you have the right things working for you. So again, that’s why I use it and I use it this week and it was also. Let’s get into the podcast. Welcome back to the ECOMMERCE momentum podcast. This is episode 364 and Palma. Okay. Nerds get ready for your speak. Uh, we have a fellow nerd coming in to talk to us about all that fun legal Ip issues and I’m very cool lady who clearly knows what she’s talking about and a real calm way.
Stephen: 00:05:26 And I love it. I love how to be honest with you. I have a presentation that she had done her, another gentleman and it’s just so easy to understand and I really appreciate that, that they’re not dumbing it down, they’re just trying to make it a little clear and it’s muddy waters. And Jill even been talking about how muddy it is sometimes because there’s know individual interpretations, but they do a decent job of making it relatively clear. So I have some of the slides on this episode come out and check out on the website, but we talk about patents and a trademarks and copyrights and, and when it’s right, when it’s not. When you should do it yourself, when you shouldn’t do it yourself and you, you know, of course you probably shouldn’t do it yourself more than you should, um, but then they also have a new thing where, you know, you can do quite a bit of it and then they can help take a look at it and help take it to the right way all the way to the edge.
Stephen: 00:06:17 And I think that’s really important too. So let’s get into podcasts. Really, really cool stuff. All right. Welcome back to the ECOMMERCE momentum podcast. We’re excited about today’s guest, um, because I think it’s, it’s a fresh perspective for most of us. Most of us have never heard of our guest. Um, we’ve heard from some other attorneys give you a little clue and, and they have a point of view, but you know, what I find with most attorneys, it’s an interpretation and it’s a point of view and some are willing to push the envelope a little bit more. Some are not. Some are really geared to keep you on the straight and narrow so you don’t have to defend your position. Um, and I think that’s the best place to play. Um, and I’m hopeful that our guests today and Palma can help us do that. Welcome man.
Ann: 00:07:01 Alright, thanks for having me.
Stephen: 00:07:02 I appreciate you coming on. Now, let’s just first get to your practice, uh, that where you focus is in copyrights, trademarks and patents, correct?
Ann: 00:07:14 That’s correct.
Stephen: 00:07:16 Okay, now I’m going to call you a nerd. Why? I mean you got to be reading that most minutiae stuff. I mean you don’t, I mean, was that your, like your goal is like, hey man, I’m going to, I’m going to be reading contracts and just awful minutia stuff forever. Was that, is that what you’re going to do?
Ann: 00:07:34 Hundred percent, you know, and it even started before that. Oh, you’re a real nerd nerd. When I was an Undergrad I, um, came in as a biology major and then I had a dream about calculus one night and decided that I missed math. So I switched my degree to chemistry and pursued a degree in chemistry.
Stephen: 00:07:54 Okay. All right. So, uh, that’s definitely nerdy. And what was it? I mean, it’s interesting you say that because what was it for a calculus that you missed? It was it. Was it the. The challenge? What was it?
Ann: 00:08:11 It’s funny. It’s almost the, the yes and no black and white that I missed the having an answer which as an attorney we get zero of. So it’s interesting that I made the switch to law, but.
Stephen: 00:08:23 So you wanted absolutes. I mean that’s what was exciting for you, right? To like you said, black or white. The answer is there. I can. If the. If it doesn’t work then I did something wrong. Then we figured out, let me figure it out and then boom, I got it.
Ann: 00:08:35 Exactly. It’s a puzzle and I know that puzzle was an answer and and, and that is probably where the law side comes in is everything that I faced as a puzzle and there may not be the black and white answer that math provides, but there is an answer that you can, you can come to
Stephen: 00:08:53 generally. Right? I mean, for the most part, other than external, I always say this, there are a lot of external forces like what you saw on Amazon. Well guess what? Amazon is going to do what’s right for them and it’s not always logical because there’s so many, you know, humans, there’s what, half a million employees, so I guess what somebody’s going to make a decision different than what you and I think and therefore somebody’s going to win somebody’s gotTa lose outside of my control. I can do everything right, and yet they still could mess it up. They make mistakes just like you do. Right? And so in law to me, I always sit back and I think generally it’s, you know, speed limits the speed limit unless there’s extenuating circumstances. Right? And that’s where it’s interpretation. I’m one of the things that I’ve seen or I’ve now the, the, the news, whether it’s fake or not, I don’t know that it is or not, but they call it legislating from the bench in, in the field that you’re in copyrights, trademarks and patents. Right? Generally the laws were written, I don’t know how long ago and it’s still. Yeah. So, so is that, what’s happening is they’re kind of legislating from the bench because it’s not all been, you know, especially like, like ecommerce for example, that didn’t happen back when they wrote most of the laws. Right?
Ann: 00:10:07 Absolutely. That’s the case. So Congress, well, we’ll draft a lie with certain language and then it’s up to the courts to interpret that language and those interpretations change over time. Um, and when I say that laws are still being written, at least on the patent side in 2012, there was a whole new set of laws that were enacted and so we are still figuring out how those law should be interpreted
Stephen: 00:10:33 when I’m thinking about this too. Like I have a friend who’s a, he’s a da here now. Um, and he retired and then the other da moved up and now he’s back to being the DA. He was a, he was a judge for a long time. Now he’s back to being a TA. And I asked him, I said, you know, um, and he does criminal stuff, most of it. And I said to him, I said, how different is he goes, it’s night and day. Then when I was da before, and I think about like judges, most of them were probably old white dudes, but, but there has to be some fresh perspective coming into it even in the copyright trademark and patent area is that fresh perspective having a lot of influence on, on copyrights, trademarks and patents because they’re there, they’ve grown up maybe with a computer in their house. And so now they have some, some idea of what’s going on.
Ann: 00:11:21 Absolutely. Um, the fresh perspective is particularly being seen at the patent and trademark office right now. We have, um, a whole new system for evaluating patents and they are judges who used to be attorneys and so they’re in the thick of patent law and they have a really good understanding of, of what the law should be and how it should be interpreted.
Stephen: 00:11:46 Is it an advantage then to do a patent today versus, you know, 10 or 15 years ago. I mean, is it because you described, it sounds like there’s a whole new approach to it?
Ann: 00:11:57 Um, I wouldn’t say there’s a whole new approach to obtaining a patent. Computers have really created this new avenue of, of what you can patent and we’re still figuring out whether or not it should be patented, what aspects of computers should be patented. So I wouldn’t say it’s more advantageous than it was before. There’s just technology is advancing at an increasing rate currently. I’m in patents are just trying to keep up.
Stephen: 00:12:23 I remember one business I was in and there was a gentleman who patented and if it was bar codes or something like that and this guy came back and just kept, you know, suing companies after companies and getting paid from him because he had the rights to the technology. I think that’s what it was, or something like that. And I would assume, you know, um, because I, I see it on the copyright side with photos. Um, I forget who the photo company is. There’s a major photo company and when you use one of their photos, you will get a bill and you will pay that bill or they will take you to court. And the technology allows the other side of it, right? People finding all the infringements on their stuff a lot easier today. Right. That seems to make sense.
Ann: 00:13:09 It’s kind of both sides. It’s easier to infringe, easier to copy people’s copyrights and intellectual property. It’s also easier to find people at the same time.
Stephen: 00:13:18 Hmm. So it’s a double edge sword. So, um, so, so let’s walk through the things I’m like, well, let’s just start with what the difference between a copyright or trademark a patent and maybe even a trade secret are.
Ann: 00:13:33 Yeah. So a trademark to start with that is a symbol or word that you can legally register or established by actually using it in commerce that indicates a source of your goods. So when you think about a trademark picture, the Nike Symbol Picture, the Coca Cola word, the apple symbol or the apple world. It’s, it’s a use of a slogan or word that will signify this is my brand. And these are my goods that are coming from my brand,
Stephen: 00:14:02 so I could just pick a word and from this point forward and say that Steve’s word or no,
Ann: 00:14:10 well, are you using that word in conjunction with goods or services that you’re planning to sell?
Stephen: 00:14:16 So I’m going to sell box. I’m going to sell air, I’m going to put it in a box, I’m going to ship it to you, right? And so I’m going to sell. I want to. I want to trademark the word air. How likely is that going to happen?
Ann: 00:14:28 Pretty Unlikely. So when you apply for a trade, well let me step back. You can use whatever you would like. If you want to protect the word air, you would have to register it through the trademark office and they’re going to likely tell you that your choice of the word air to sell products that contained air is descriptive. And so this is important because when you’re choosing a trademark, it’s important to think about choosing a word or a phrase or a logo that is unique and not necessarily identification of the goods or brands or goods or services that you’re selling.
Stephen: 00:15:10 So like I’m thinking of the apple computers. So there’ve been apples before steve jobs went into computer world, right? They oppose, uh, I think Adam and eve or the first a notion that we’ve seen apples. And so they’ve been around for a long time. What makes them distinct? The word apple because I don’t think it’s apple computer only. I think it’s just apple. Right? Right. What makes them distinctive that makes that defensible?
Ann: 00:15:39 Well, when you think of the word apple, you don’t think of computers what? Previous to the origination of apple computers. Correct. Right. So that is a unique identifier that places their goods and services under that brand.
Stephen: 00:15:56 So is it, I mean, so because I’m like, I’m thinking of banana. Alright. So banana, what would be, what, what’s the distinction between apple and banana? So if I wanted to make, I guess there are banana games, so that’s a, that’s a trademark I’ve seen out there because there a company that makes games and shaped like a banana and there’s little titles in there. So is it the apple logo in conjunction with their name or is it the apple? The use of it. So they’re using it on computers now. If they made apple cars, would that take them a whole new direction and then that has to get addressed differently or. I don’t get it.
Ann: 00:16:34 Yeah. So if they wanted to pursue, they use of the trademark apple with sales of cars, they would file a trademark with the US Pto for use of the word apple with cars. So right now if I were to go look at their trademark registrations, I can’t say for certain what I would think that most of their goods and services are related to technology, you know, computers, headphones, iphone, that type of thing. Um, so they wanted to identify a whole nother area of goods and services. They would just have to do that at the patent office.
Stephen: 00:17:11 A new trademark or is it a, an expansion of their existing trademark?
Ann: 00:17:16 It would technically be a new trademark because they’re old trademark only covers the goods and services that they filed for. And so this new trademark would be used to cover the new goods and services. The cars.
Stephen: 00:17:31 Okay. And how long has the trademark good for?
Ann: 00:17:34 Uh, forever. As long as you continue to pay the renewal fees, right?
Stephen: 00:17:40 Always somebody’s benefiting the returnees? Yes. The United States
Ann: 00:17:45 Patent and trademark office, I believe is one. The only profitable areas of the government, so for good reason, they charge fees and you have to continue to use it. So every five to 10 years the office requires you to renew your trademark and not only with the fee, you have to also prove that you’re still using the mark in commerce. So they don’t want people just sitting on these marks and not using them. If you don’t use it, it will go abandoned, but you can always reapply for your trademark, paid the office some more money, show that you’re using the goods and commerce and then have a rights to your trademark. Again, assuming nobody else has come in and started using it
Stephen: 00:18:27 so somebody can’t come in and you know how they used to sit on the uh, websites, right? They can’t come in and take. If apple doesn’t pay, they can’t come in and just, just take that trademark without having a technology good that, that meets the requirements of that trademark. Correct.
Ann: 00:18:46 Right. Or an intent to use a good or service. So that’s the distinction with trademarks is when you a file a trademark, you don’t actually have to be using it in commerce at that time, you know, say you have a product that’s being manufactured currently and not for sale. You can file what we call an intent to use the trademark and then it goes to the registration and you have a certain period of time in order to show the office that you are in fact using it. So it buys you a couple of years.
Stephen: 00:19:14 Okay. And does that, um, does Amazon, and this is a specific Amazon question, does Amazon, except that intent for trademark, I mean, do you get a document that says, Steve, you have that trademark, the Swish for your water bottle that’s yours and then would amazon except that or is that just a holding place that just keeps you in hold
Ann: 00:19:36 once you have a registration number and that’s when Amazon finally accepts it. And I, you know, I’d have to look at whether or not Amazon accepts the registration once it, once it is allowed, but before you have showed the specimen, I have a feeling they do, but I’d have to double check on that.
Stephen: 00:19:58 So let to make sure I get clear on that because I’m not clear in somebody else’s going to message me. I just wanna make sure I’m right on this. So I’m, I’m putting up my water bottle and a water bottle. That’s what we’re going to trademark it is. And so I uh, uh, I am getting it.
Ann: 00:20:13 Let’s give it a better name. Let’s call it banana,
Stephen: 00:20:16 a banana, banana water bottle. And so I’m going to file an intent because they’re gonna get manufactured. I really don’t have a product in hand, but I plan on doing it. I’m building out my organization so I apply for it because these take time. Right. How long has the trademark take? Generally?
Ann: 00:20:32 Generally about eight months.
Stephen: 00:20:33 Okay. So about eight months. So I’m like, all right, this is a big deal. I want to make sure I protect it by the domain, right? Get the website, get all that jazz, get all that stuff locked down so I can, you know, because I’m an invest and so I get it eight months. I’m still in the manufacturing process. I don’t have a product. I’m, will I get a trademark without a product, without a physical product,
Ann: 00:20:54 you will. Time starts ticking. You have, um, you technically have six months to submit what we call a specimen showing that you are using the trademark banana with your water bottle. You can also seek extensions up to five extensions after that of six months each in order to submit that specimen so that the clock starts ticking. If you don’t use it within that 36 month period, then your trademark will lapse, but you do receive a registration.
Stephen: 00:21:27 Okay. And so that, that’s the point where, as you said, Amazon would accept it generally because you, you, you meet the requirements, they don’t know that you don’t have the product. Right. It, it just makes sense. So, um, I’m sitting here thinking about what’s your advice to clients then when they come to you and say, Hey, should I trademark this thing I have. It’s, there’s no proof of concept. I mean, I think it’s a great idea. Every, every idea I have is a great idea, right? I’m, I’m sure
Ann: 00:21:51 I’ve never heard that.
Stephen: 00:21:52 I’m a guy especially, right? Never, never. Um, so, so I think every big idea I have is a great idea. So should I just go and apply for a trademark for every single one of the things I, I think I’m going to do,
Ann: 00:22:06 you have to use some reason. It’s obviously expensive and can get expensive, um, to file a trademark application. So I would say yes, be a little little broader than you think you might go. But maybe be a little reasonable in terms of how many trademarks are going to file, but I would definitely get something on file as soon as you possibly can because it takes time in Amazon, requires that registration before they are willing to acknowledge your brand and the brand registry program. So I’ve had a lot of clients that say, Hey, can we expedite this process? No, I need Amazon to recognize my trademark and there’s not much we can do on our side to expedite unless there are no infringement concerns. It takes a lot in order for the office to be willing to expedite trademark. So the earlier you get it in the better.
Stephen: 00:22:54 So let me ask you this because you’re a profession that bills by the 15 minute increments. So, but I’m looking for an honest answer here. So, um, do people need to use an attorney or are these legal zooms? Because I, you know, I listened to the radio on the radio, it says legal zoom can solve all my legal problems and there’s a whole team of lawyers. They’re sitting someplace probably in downtown Chicago, just waiting for Steve to send his stuff to them. What I mean realistically, what’s The difference?
Ann: 00:23:24 Realistically we’re going to data our I’s and cross our t’s much better. Zan. Probably one of those services. Um, you can file a trademark on your own. Actually, the, the US pto has a great,
Speaker 4: 00:23:41 um,
Ann: 00:23:42 group of references and information, how you can find your trademark. The thing is we have the experience, we have the practice. We’ve been through this before. We know what to look out for ahead of the game and we give you that personalized attention, which I’m, you know, I haven’t gone through one of these services so I’m not entirely sure what those who you’re talking to or what the parameters are with respect to that. But we’ve had a lot of people come back to us and say, Hey, I filed my own trademark. I did X, Y, and Z, and now I’m in this sticky situation. And legal fees are higher now than if you had come to me from the get go. We could have thought through some of these issues, address them early on, and then you wouldn’t be in a sticky situation.
Stephen: 00:24:29 I’m old enough to remember when we used to pay $100 an hour for an attorney and that was like, that was a good deal. Yeah, they’re not, they’re not waking up for. They’re not even going to listen to that. They won’t even take their call. The receptionist won’t take the call. Let me ask you this. So there is [inaudible] you, you bring up a point, um, is there a time when it makes sense to do it by yourself as opposed to using an attorney? And again, I’m asking for an honest question. Not a somebody who bills by the 15 minute increments, right?
Ann: 00:24:57 I would say if you have months and months before you need something done, then go through the process of learning it on your own. Absolutely. If, if this is something that needs to happen, it needs to happen right quickly, then I would hire an attorney to take it over. Um, one thing I always tell our clients who especially are our conscious with respect to money is you could do a lot of it on your own and then you can contact us and we can just check it over.
Stephen: 00:25:23 Oh, okay. So if there’s, I mean if there’s something that needs to be tweaked, can you get a revision to it and an amendment or whatever the legal term would be.
Ann: 00:25:32 Exactly. I’ve had clients do that. They’ll prepare the trademark application, the description for the goods and services. They’ll come to me and say, Hey, and this is what we’re selling, this is what we prepared. Can you just check this over? And then they go back and they file it.
Stephen: 00:25:48 What’s the cost, uh, around, and it’s a rough number and this’ll change next year. Guaranteed. Um, but what, what’s a reasonable that somebody should budget for a normal trademark? Not a real complicated one.
Ann: 00:26:02 So the trademark office itself charges $275. Generally there’s some other fees that can be added or deleted from that depending on your trademark. So $275 per mark, pour her good or service so that can add up quickly if you have multiple goods or services that you’re fighting.
Stephen: 00:26:23 Give me an example there. So, so let’s take, um, so I’m gonna do the banana water bottle, but I also wanted to be, I don’t know, I don’t know what else it holds water, but it’s sports. I mean, you know, let me, that’s a bad example. But give me an example where there would be a broader and, and where you would need to have it match those services and goods.
Ann: 00:26:43 Yeah. So
Stephen: 00:26:44 something we see quite often is with apps, if you filing a trademark for an APP, say it’s for a beauty service, you may have not only an APP, which is one classification classification nine, I believe though I’d have to double check, I’m just pulling that out for memory. But then you might also have a web platform that you use and so that’s an entirely different class that you would then have to pay for to cover. And it’s a complete separate fee. I’m not a separate application, correct?
Ann: 00:27:16 Correct. It’s the same application, I guess technically you could file it as two separate applications, but I wouldn’t, um, you can file it all under the same application.
Stephen: 00:27:26 Okay. All right. Um, how about the lawyer fees? Reasonable estimate for a trademark
Ann: 00:27:33 and we’re doing everything from scratch. I normally estimate about an hour to two hours. So between 500 to $700 of attorneys fees associated with it.
Stephen: 00:27:47 So a little more than a. So $1,200 between a thousand and $1,200 is probably a reasonable range? Yes. Okay. All right, good. So I think people understand that, um, when you have a trademark, how, how much, how important is that when, especially now as ecommerce is, you know, we’re still in the infancy stage, but you know, we all think that it’s going to get a little bit bigger, right? I think that’s pretty safe to say. Um, how, how important is it if you have a brand or you have a product that you think can be a brand for you to really have this in place because you’re going to eventually have to defend it or fight somebody else who’s infringing on your product, how important is that?
Ann: 00:28:29 Well, so you’re asking how important is it to keep the other people?
Stephen: 00:28:35 Well, having a trademark from, from today, I mean in today’s Amazon world it helps you get brand registered and all that kind of jazz so it helps you, you know, so you can sort of protect your product. Not much, but you could sort of protect it. And then um, with, with somebody inferring your name, right? If I’m correct, they can’t even use my trademark in their backend keywords, which nobody sees a technically correct. Legally.
Ann: 00:29:06 Actually you can use it in the background
Stephen: 00:29:08 so I can use Nike and all my background keywords. That’s illegal. Illegal. No kidding, Steve didn’t know that. So that’s news to me. I, I, I, I don’t know that Amazon allows that though
Ann: 00:29:21 Amazon may not, but,
Stephen: 00:29:23 but it’s not a legal issue. So it’s just because they have a handshake with that brand maybe or something, or maybe that’s part of how that brain cells on their platform, they say, hey, you got to help protect us. Maybe that’s the route they met at. That seems logical keywords you can. So then what was a trademark and to protect me for so, so how. I mean, because I’m. How important is it, you know, and like you said it, it’s if you’re going to do it, you should do it because it’s gonna take quite a while. Um, if you’re going forward, but, but what is it going to protect me from
Ann: 00:29:51 wow. So I wouldn’t even step back. So really the benefit of having a trademark is being able to develop the goodwill associated with your products and your services. I think. I think more so than having to defend yourself. That is truly the benefit of, you know, locking in a trademark and using that trademark to identify what it is that you’re selling. Because consumers tend to go with brands that they know and that they trust. And so, you know, it’s almost a good thing. Not, not really good, but a good thing if people start to copy you because that means that you have developed that goodwill with consumers and so once you have that trademark and that goodwill, you know, that’s when you have the ability then to defend that trademark and prevent other people from using it, which, you know, in the ecommerce world, especially on Amazon, is undeniably and an important aspect of, of being a successful in sales. That unique product.
Stephen: 00:30:53 I’m looking at one of your examples. Uber’s a good one, right? I mean, that makes sense to me. Right? So Uber and lyft are two separate companies. They offer similar services, gently used to anyway. Now however uber has uber eats for example, right? And Uber freight is another one there. They’ve really taken their, their, uh, their trademark now and have expanded it into these other places. So to me, when you think Uber, you think, uh, you know, I don’t know what it used to mean to be honest with you. I don’t even know if I, I mean, when you think of that word it, you know, it might might’ve been extra cool way back in the day. You’re like Uber Cool and right. You know, um, but, but now it, you almost take it to mean that it’s going to transport something, right? Yeah, absolutely. That’s a good example. Okay. Alright. Yep.
Ann: 00:31:38 Very powerful when used correctly and you smartly.
Stephen: 00:31:42 Well, that’s cool. All right, so now, because I’m not confused enough on trademarks, we’re going to jump to a copyright. Okay? And a copyright, walk us through what a copyright is and then maybe some examples.
Ann: 00:31:57 So a copyright grants the creator of an original work of art, exclusive rights to that piece of artwork so that it can’t be used by others. And the interesting thing with copyrights other than trademarks is that they take a moment that they are fixed in a tangible form. So the moment that you take a photo moment that you create a sculpture, um, the moment that you write down some lyrics for the song that you’re working on, that’s one of copyright applies. You can register your copyright with the Copyright Office that affords you greater damages if somebody does end up copying your work of art, but generally you can put that m, little c after whatever it is that you create and then you’re protected.
Stephen: 00:32:46 So I write this unbelievable and it would be unbelievable blog post about banana water bottles and it would be very, you know, just incredible. That’s immediately every sentence I’d jot down is immediately
Ann: 00:32:59 copywriting. It sure is.
Stephen: 00:33:02 And when I publish it to the interwebs that then, unless someone credits me is technically thievery if they go or they’re infringing on my copyright, if I, if they copy my words correct,
Ann: 00:33:18 correct. Now,
Stephen: 00:33:21 but it’s done all the time. So I mean it’s why is it selectively enforced because it’s so vast and unmanageable.
Ann: 00:33:29 Yes. That could be the author of themselves. They have to go after people. Kind of what I was saying earlier with, with the Internet, it’s much easier for people to infringe and it’s sometimes easier to catch them doing so, but it can be difficult as well. I know that some major companies, when you think of a Time Warner and companies such as that have dedicated departments to monitoring their copyrighted materials and issuing takedowns lots of big, a big problem on youtube. Sometimes if you go to a youtube channel, you’ll see this has been taken down by Yada Yada, Yada. That’s because he offered himself had, went and took it down.
Stephen: 00:34:13 Yeah. Like if they’re doing a video and you have music in the background, um, after like gets like 10 seconds I think is what they say. You could actually lose your video because you don’t have rights to use that music unless you have gotten bought those rights. It’s funny, like my podcast, the music that you hear at the beginning, I had to pay for, right? I had to buy the rights for that and the cool voice guy had to pay for him to um, and um, but it, it’s, it’s logical because you can’t. Now you can go out and find a whole bunch of free stuff. But the risk now it’s just a risk. If you ever take off now, nobody’s going to come and say, hell, listen, this, you know, three people listen to my podcast, so they’re not doing that kind of bother. But. So what, what is a, um, when I’m thinking about a literary work, I mean me literally writing a blog post that’s considered a literary work.
Ann: 00:35:01 Absolutely. Why wouldn’t it be? Just read my writing.
Stephen: 00:35:07 It was, it’s now. Am I the first guy to lie to you today? No comment today. No, but seriously, I mean, it’s just, you don’t think of it that way, right? You just don’t think so when I’m putting the words on my packaging. So let’s bring it to ecommerce. Right? And I’m putting on there the descriptions of, uh, uh, of my bottle versus, you know, whatever. Not even any versus anybody else. It’s what I think the key takeaway from my bottle is that phrase then copyrighted. It can be, but if it’s blue, it’s a blue bottle. That’s copyright.
Ann: 00:35:43 Are you, you’re sort of conflating trademark and copyright. So are you thinking of a slogan?
Stephen: 00:35:50 Are you going to have a description,
Ann: 00:35:52 a description? Yeah, that’s copyright protected. So we often see that I’m on Amazon if you are listing for a certain product and use the original products description, you’ll get a copyright take down notice regarding it.
Stephen: 00:36:07 Wait, say that again? Sure. So, so if I’m copying somebody else’s obviously, but, but um, the first time seller of this blue water bottle and I put a description next to it, says blue water bottle, I could get that taken down because somebody else owns the rights to.
Ann: 00:36:24 I’m saying if somebody else were to use what you said, you know what? I have to be probably something a little more verbose than just blue water bottle. Um,
Stephen: 00:36:36 so it can’t be that general
Ann: 00:36:40 and it has to be considered a work of art.
Stephen: 00:36:43 Okay. So blue water bottle, maybe if you’re describing a painting, I guess it could be if, if monet, you know, made the painting that’s a blue water bottle. Maybe that could be but, but generally just the word blue water bottle or are just too generic. Okay. Yeah. That would not be protected by copyright. How different do we have to have like those titles then I is my title for my Amazon product or my ebay product and matter. Um, that seems to be copyrighted. How different does somebody who’s going to use my too? Because on Ebay it’s done all the time. They use exactly the same title. I mean it’s, it’s the most common thing that you see on Ebay where people just say, because he even gives you an option. Hey, I’m sell one like it or something. I forget what the phrase is that they use and everything just comes right over. How different do I need to make it than yours to make it protect it. And again, that’s assuming that you’re coming after me, which, you know, logically most people wouldn’t but, but you know, to be right.
Ann: 00:37:43 You know, that’s a tough, tough question to answer in the abstract, you would have to compare the two. I’m a to determine whether or not the initial phrase or word or work of art is indeed copyright protected.
Stephen: 00:38:00 And then just because they say it is doesn’t mean it is. Right. Oh, okay. Right. Well, because in the other thing I would think is that, you know, you sold your blue water bottle and now I’m coming along, copying your stuff to sell my blue water bottle. Do you do. You don’t even own one anymore. Right? So I guess the likelihood of you coming back and saying, Hey, that was mine, right? That’s my work of art. No, but do you run a
Ann: 00:38:28 instead of just the word water bottle because that’s. You couldn’t actually protect the copyright. Let’s think about if you took an picture of a blue water bottle and somebody used that image or an image very similar to. No, no, that’s a no, no. Okay. But there’s a threshold. I mean they could still take a picture of your blue water bottle just in a different location and that wouldn’t be a copy of your picture. It would be different.
Stephen: 00:38:55 So all those images that are out there floating on the Internet, they’re all trying to take and use a or. No,
Ann: 00:39:03 no they aren’t. I mean, the chances of you getting caught are probably slim, but somewhere somebody took that picture and that was copyrighted by them by the fact that they took it.
Stephen: 00:39:17 There’s a massive company, I can’t think of their name, their photo company that that’s what they do. Say they are getty images. That’s it. They own bazillions of images and they will find you. They will. Absolutely. So it’s one of those things about the sites like a pixabay where they sell images or there’s free images too and you have to make sure that they can be used for commercial use. Correct. They give you the rights and it has to be a. If you’re going to put it in your Ebay listing or your Amazon listing
Ann: 00:39:45 for commercial rights, right?
Stephen: 00:39:46 Yeah. Okay. Alright, good. Alright, I’d make sure I get that. Alright. Anything else on copyrights? How, how, how does this help me on selling on Amazon or Ebay having a copyright?
Ann: 00:39:58 Uh, it, it’s the same as it. Same as trademarks. It’s an identifier in my mind. If you take a picture of your goods and it’s a nice picture and somebody else would want to use it to help solve the product, sound their products, you know, you’re able to protect yourself from, from somebody taking your hard work. The interesting thing with copyrights, and this is one thing I wanted to mention with Amazon, is if oftentimes, at least what we’ve seen is there a fraudulent copyright take down notices filed and the nice thing about copyrights is under the digital Millennium Copyright Act, DMC has what we call it. There’s a clause that says if you receive a take down notice for copyright complaint, um, you can essentially challenge the person who alleged copyright infringement. And so you send back what we call a counter notice. And the person that alleged infringement has 10 days to file a civil lawsuit against you. And we’ve seen it go both ways where the person will file a lawsuit. And then we’ve seen it on the contrary where they don’t. And then Amazon realists your goods. But
Stephen: 00:41:17 it’s a little scary. So how do you know when, I mean, do you just know? I mean, that’s again, that’s, I guess that’s when you get an attorney is you just know that they’re full of nonsense and it’s just these people, just because I see it on the Amazon merchant hurts a whole bunch, right? That people are doing that, right? They all of a sudden are just, I guess maliciously. I don’t know how to say it any better than that. They’re maliciously just sending out these massive things and most people are like, oh my God, I got a letter. I better take it down. Right. And it’s a competitor and they don’t have any rights to it, but they’re doing that now obviously that, that opens up a whole other can of worms legally. But there’s a lot of that.
Ann: 00:41:53 There is a lot of that. We see it a lot. Um, it’s too bad. It’s too bad that they don’t have this on the trademark side too, because there’s not much that you can do from the trademark perspective. But this is a nice avenue with a copyright just to throw it back at them and say, I’m calling your boss and oftentimes it ends,
Stephen: 00:42:14 but how do you. Yeah, oftentimes, right. So that sounds like more than not, right. That’s, is that fair? But how do you know, how do you know when. I mean, because someone has stuff looks real,
Ann: 00:42:25 you don’t, you don’t know when you just sort of had to have to trust your gut. A lot of it is based on, um, in our experience, our communications with the other side. If it seems legitimate, then we’re probably not going to recommend that you file a counter notice, you know, if there’s a real attorney on the other side corresponding with us, then it’s likely that you have a copyright and would be willing to file a lawsuit against them if we are getting no responses or we have to get responses that just clearly don’t understand intellectual property and are spouting off random words to try and scare us. Um, that’s when you will call their bluff. It doesn’t seem legitimate.
Stephen: 00:43:07 And so again, that’s when you bring in an attorney, how expensive is it to get to the point of calling somebody’s bluff?
Ann: 00:43:15 It’s relatively inexpensive to file a counter notice. At least for us, we charge about $1,000, which takes into account our time or being your case file to make sure that indeed we think this is a legitimate complaint. And then actually drafting the counter notice, um, doesn’t take as much time as you would think, but, but we like to have everything in a row before we file off that, that kind of notice because the last thing we really want is for you to then be engaged in a mitigation. Nobody wants to be in litigation, but the attorneys,
Stephen: 00:43:49 yeah, nobody makes money but you guys signed get it. Yeah. And, and not even use the partners, right? Didn’t. Unless you are a partner that was. And then the senior partners making a lot more money. I get it. I understand. I’ve seen that system. Okay. So it’s, it’s definitely one of those. It’s scary. Um, but it’s not. Right. So if you, if you’re in a good position, if you feel if you have a good brand and you’re building a brand new, you’ve done everything right and you, you know, hey, that’s part of doing business that like you said, somebody going to copy it because that’s a, that’s a compliment. Stevie or water bottles. Unbelievable. And uh, and so therefore we’re gonna, we’re gonna, we’re gonna copy it. And so therefore you have to be able to defend it. Okay? Alright. Alright, now let’s get to the easy stuff. This is simple patents. They’re just simple, simple, easy things, right? So if I take this water bottle and I do a left twist as opposed to a right twist, I could get a patent on that. Correct? I’m not so sure about that. So, Short, all my big ideas, these were big ideas. How much time do we have? Another like six hours. No, no, no, no, no. So, so walk us through patents because there’s a couple different patents right there. I mean, if to that I think are really relevant to what we’re talking about,
Ann: 00:45:05 right? So there are a couple of types of patents, there’s utility patents which grant the right to exclude somebody from making, using or selling a device, a method or system. So it’s protecting a utility and then we have design patents which protect the ornamental aspects of a design. And then we have plant patents, which up until recently were not that popular, but with marijuana,
Stephen: 00:45:32 I’m just going to say, don’t tell, tell me. I’m just going to say we’d come on, we’d people are in this too.
Ann: 00:45:37 It really is. Yeah. We have a pretty strong marijuana practice here. Actually.
Stephen: 00:45:42 You’re all high. No,
Ann: 00:45:45 quite not quite a, but protecting it has been biggest, you know, the more states where it gets passed in, the more important it is to protect not only patents, trademarks as well.
Stephen: 00:45:56 No kidding. We’d people were everywhere and you guys found a way in. I love it, love it, love it, love it. Um, okay. So I think that the two that are probably relevant for the listeners of the show would be the utility and design. So, so let’s start with, um, can you tell me which one we should start with? Cities. Water bottle, a utility or design?
Ann: 00:46:17 Oh, Steve’s water bottle would most likely we would recommend a design patent. So water bottles have been out there for ages unless there’s a specific new utility that the water bottle is used for, you found some came up with some awesome invention that separates it from any other invention that’s out.
Stephen: 00:46:34 You have an example like that because I think it’s important to make it a sink of water bottle is just general. Um, just give me an example where somebody could have gotten a patent to take a product farther.
Ann: 00:46:45 Right? So if you think of the wine opener, typical wine shoppers are somebody inserting the screw into the cork on the top and then pulling it out and then the rabbit came along and some patented the idea for having the lever that inserts the corkscrew into the cork and then seamlessly pulls it out. And that whole system is protected by a utility patent
Stephen: 00:47:13 and the whole system. So somebody can’t make a similar, I mean the CA. I mean, what, what’s the pen, the concept of the grips in different positions or is the concept of a jabbing
Ann: 00:47:29 cork? I would have to take a look at the patent itself. So in a utility patent, the scope of the invention is defined in what we call the claims and it’s typically 20 sentences at the end of the patent that describe the scope of whatever it is that’s being invented. That’s kind of where patent attorneys come in because it’s this weird legal language that we’ve probably developed on our own for security issues. What it’s very legal interpretation. Each. Each word is carefully chosen to have a meaning and a definition and to define what the scope is of that particular device
Stephen: 00:48:12 because you got to think it all the way out, the whole potential of it, right? I mean, that’s really important.
Ann: 00:48:17 You Do, you do. It’s essential actually. That’s really the meat and the guts of a pattern is, is how you define it in the claims.
Stephen: 00:48:26 Are there people that go back to these patents and look and say up Steve wrote that himself look at all those openings and Uhm, and then they can go and do their own thing and then they have a, they’re in a better position because when it comes to defend, it’s like you’re right here. You didn’t say you were going to use it to hold Tequila. Steve, a bad example, but I’m not really, um, but that, that that’s an example that when doing it by yourself or somebody who’s not experienced with it could expose what you think you’re protected for.
Ann: 00:48:56 Right? So we pretty much never recommend that people try drafting their own claims. Um, you can, you can file a patent on your own, but I think I’ve only seen it once or twice. And those people tend to have a lot of experience in patents before doing. So it’s easy. I wouldn’t say it’s easy, but if you don’t have proper patent coverage, patent scope coverage, you can design around whatever the claim is. So if somebody comes to us with an invention, it’s our job to define the invention as broad as we possibly can, but narrow enough to make it through prosecution at the patent office. And so what typically happens, it’s a, it’s a game with the US patent trademark office. We will define the invention broadly. The Patent Office will come back to us and say, for these reasons, we don’t think you should be entitled to a patent, whether it’s, you know, this particular reference already describes your invention or this combination of references would render what we call your invention obvious. And so then we say, okay, fine, we’re going to narrow our claims slightly. We’re going to narrow the scope of our invention. How about that? Do you still think that this invention has already been disclosed in the patent office? Will either say yes or no and then you can continue arguing with them, um, or hopefully you get a patent issued at that point.
Stephen: 00:50:26 Obvious. Really key, isn’t it? I mean, that sounds like that’s a real point that you know, when anybody’s creating. Because you know what, on the radio I heard that I can get patents, invention corporation, one of those corporations, all my invention, they’re going to get patents right through, right. That’s, that’s all the Git, right? All that stuff. And Yeah, the answer’s No. So, so obvious is a big piece of the puzzle here.
Ann: 00:50:54 It is. So it’s sort of a subjective side so that the examiner comeback can come back to us with colorable arguments about why two references should be combined to state that your invention is obvious and then we can come back with colorable arguments as well. It’s that gray area in patent law. So an example that I like to use is a client a couple of years ago wanted to get a patent on a Jello shot cup that had a rotating piece on the bottom that would help release the Jello from the cop.
Stephen: 00:51:32 You have some interesting clients. We’d
Speaker 5: 00:51:34 liquor. All right, go ahead and wind. Thanks. I’m seeing a pattern here and I’m just saying just saying
Ann: 00:51:43 boring stuff too. Um, and so we submitted a patent application and the office came back to us and cited references from your twenties and thirties and forties, really old references that work for mugs or a pie tin that had a rotating piece that would release the Pi or an ice cream scoop. They had a rotating piece that will release the ice cream. And so they said that this Jello shot, this Little Cup was obvious in light of these inventions that had already been on the market for ages.
Stephen: 00:52:17 Even though those patents are probably, you know, expired. That doesn’t matter.
Ann: 00:52:23 It doesn’t matter. So it’s still disclosed in to public. And so that can be used against you. It’s what we call prior art.
Stephen: 00:52:31 Hm. And so likely they would reject something they’d say, you know, not, not. It’s just too obvious. Even though, yeah, it’s novel, but it’s still obvious.
Ann: 00:52:41 It’s still obvious that’s helpful for consumers to. Because it would be unfair for somebody to get a patent in 20 years of protection on a device that really has already been disclosed in the public.
Stephen: 00:52:56 You’ve done Jello shots and I can tell.
Speaker 5: 00:52:58 All right, so now let’s talk about design. Let’s talk about design pet
Stephen: 00:53:03 and uh, yeah, you got a little baby. You’re not doing Jello shots right now. Design patents. Um, so give me an example of a design patent. Um, Eh, something that would be that you would see in the ecommerce world. I think that that’s because I think this is really important for what we do.
Ann: 00:53:20 So one design patent that’s come through that I’ve seen recently is for the Ninja Wallet, are you,
Stephen: 00:53:27 that’s that little little credit card you put in your wallet and it cuts and chops and does a million different things, right?
Ann: 00:53:34 Right. Like tools, but out of credit card piece. So a design patent protects the ornamental design of a functional items. So if you think about that Angel Wallet, they have patent protection on the ornamental aspects. So the shapes of the cutouts and they might have patent protection on, um, you know, whereas certain edges jet out, it’s the shape, it’s the overall look of that design. Another good thing to think about is the apple charger for map books. They have a design patent covering the square device with rounded edges and when you are looking at a design patent, the claims, so we’re in a utility patent, it’s words, the claims in a design patent are the solid lines and so that defines what the scope of the patent will be is where the lines are, so in an apple patent for the charger, the solid lines are going to cover the rectangular shape, the curved lines, and then everything else might be doubted. They might have a dotted line for where the hole is for the court to be attached, but that is not a necessary feature of that particular design. It’s really just the squared charger with the rounded edges.
Stephen: 00:55:03 Is that to their advantage? It sounds like it would be right, because that little square is where the real money is. The wire is wire, right, because the wire is going to change and so they might not want to stay bound to a certain way. Correct.
Ann: 00:55:16 Exactly. So you’re getting a broader patent by having less defined.
Stephen: 00:55:22 Yeah. Right. Right. Because the rest of it doesn’t matter. So let’s just go back to your Ninja Wallet example. Um, can I just, uh, instead of having a, I don’t know how to describe it, they got some dagger pointing on that one thing to open an envelope or whatever. Can I make that a circle and make make. I mean Kantei I guess, unless they have a utility patent on it and that’s what you’re going to say, Steve. Alright. Is that if they don’t have the utility patent, I can make the, another one just make my own shapes and be happy with it. However, if they have a utility patent, which I’m assuming these guys are smart enough to do, then they own the rights to have some kind of credit card tool or something. Right,
Ann: 00:56:03 right. Okay. So your design would have to be substantially different than the design in the design patents,
Stephen: 00:56:10 but is that, is that just changing the stitching? You know, so I’m selling, I’m selling bathing suits. Is that just changing the stitching from a, a loop to a hip? No, I’m totally talking. I have no clue what I’m talking about that but, but is, is that significant enough or we’re not? Maybe
Ann: 00:56:27 that’s for a jury to decide to be honest. Okay. Alright. It’s, it’s design law is one of the things where you kind of want to trust your gut. If it looks too similar, it probably is too similar. Um, it’s, it’s a subjective evaluation,
Stephen: 00:56:45 but that’s a lot of what private label sellers talk about is that, you know, go find a great product out there and make your own version of it, you know, improve it to something to it. I’m there. That’s kind of a sketchy area, isn’t it?
Ann: 00:57:01 It can be very dangerous. You, I’m definitely want to do a patent search ahead of time. Um, which google patents is a great resource for doing that. They have design patent searching as well and make sure that you’re in the clear. And we do that quite often for, for people before they launched their device or product is, hey, can you, can you do a prior art search for us? We want to make sure we’re covered if we’re not covered. Can you propose a design that you think would be outside of the protection that already exists?
Stephen: 00:57:40 So that’s the place to start you’re saying is google patents is a great place to start the answer discovery and then you go down deeper into the US Pto, which I mean, it is, it’s definitely more user friendly today than what it was, but it’s still, it’s still odd. It’s odd. I mean, it clearly was for my wife would tell you a guy who came up with it and I would agree with her. Um, so she did and I’d be like, yeah, you’re right. I’m sure because it’s not, it’s not user friendly. And again, I sit back and say somebody is benefiting. So it’s probably done by design. It’s intentional not to change it because somebody benefits the attorneys that I know. It’s your fault. Everything is your fault. Okay. So one of the things that you talked about earlier was goodwill. And I remember when we sold the company, there was some money. I used to have to go through these crazy calculations to calculate the goodwill back in my old accounting days. Um, let’s talk about why Ip is valuable and why people really need to start thinking of this way about their brand.
Ann: 00:58:45 Yeah, I mean for starters, having Ip attracts investors and that’s probably where we see it the most is new company owners want to lock down that patent or at least get the patent issued or a trademark on file so that they can go to investors and say we have this Ip protection and we can prevent other people from coming into our zone. So not only is it attracting those investors, it’s also keeping competitors out, which is everybody knows,
Stephen: 00:59:19 yeah, we want to protect ourselves. That’s exactly one of the, one of the big challenges now in, in the, um, especially in the private label white label world, is that so many people are coming from other countries, Asian countries named China and they’re copying or they’re affecting my brand now, my water bottle brand, my whatever brand. And you’re seeing so much of it. What, what, what do you suggest to clients that they need to do, you know, really the best practices to really, if they’re real serious about building this brand, these are kind of the absolute you want to put in place now to, to, to stave off because you’re not going to stop it, but you can, you can protect as much as you can, so hopefully you can successfully defend it.
Ann: 01:00:11 First would be obtaining trademark and patent protection that at least affords you the opportunity to assert your rights on Amazon and other ecommerce platforms
Stephen: 01:00:21 and generally for the most part to the. Do the platforms respect that
Ann: 01:00:28 almost to a fault we’ve seen lately?
Speaker 6: 01:00:30 MMM.
Ann: 01:00:33 The, it seems Amazon is very brand favored, which is, which is great for brands, often difficult for sellers because they receive so many Ip violations in. Some of them aren’t legitimate because Amazon’s taking the brand side before really evaluating
Speaker 6: 01:00:52 he being
Ann: 01:00:55 merits of the claims
Stephen: 01:00:58 fire fire before aim, right? That’s what they’re doing. So, so a good example is I’m selling, I’m a adidas sneakers and I’m buying them from a distributor. Um, and uh, so I put my adidas sneakers up on Amazon and Nike’s a better example, but, but it would just say adidas today, and so I put them up for sale. I bought them legitimately, I’ve got a, I’ve got an invoice and I’ve got an invoice from a company that says they have rights to sell adidas and boom, I put them up and then all of a sudden I get notified, hey, you’re not a registered seller of our brand, take it down or else. Right. That’s something that we see a lot of. Exactly. So what’s my defense?
Ann: 01:01:38 To be honest, your defense at that point is either filing your plan of action with Amazon, which companies like ea growth, um, assist sellers with frequently or talk to the rights owner and say,
Stephen: 01:01:51 you asked to actually go out to adidas and say, hey wait man, I bought these from Bob and Bob’s showed me that he has authorization to sell your brand and he’s a distributor. And so I’d done everything right. Why are you penalizing me? I mean, are they open to that conversation?
Ann: 01:02:06 Oftentimes, distributors want you to just stop selling entirely and more often than not, what we see as sellers, sellers are more willing to stop selling the product than having their marketplace have the violation tarnish. And so many of our letters are saying it’s that given take, we’ll stop selling if you retract the Ip violation notice and then they stopped selling it entirely.
Stephen: 01:02:35 Yeah, I’ve had that with music. Um, with, uh, someone with a CD. I’m very, um, it was the law firm. That’s what they did was just four or five a dead people that they represented and they protected their brand and it’s like, okay, we’ll just take it down again and now you’re gonna fight it because you know, that’s fine. It. And, and, uh, we just took it down. Um, so is that the time you go back to your distributor and say, Hey Bob, you sold me these and you represented that you, uh, I’m allowed to sell these other places because I’ve heard the first sale doctrine will protect me every single time. That’s all I gotta do. So I just got to open the door and yell first sale doctrine and I’m defended,
Ann: 01:03:16 not quite, not quite that simple. It’s a sport. I know, right? It affords a lot of protection, um, but Amazon has certain policies that, that require a lot more specific or a lot more intolerant of just an open application of the first sale doctrine. For example, you can’t resell and item and market is new. You have to mark it as used even though it may very well be new. Um, so it’s not quite as simple as just throwing up the first sale doctrine flag.
Stephen: 01:03:49 Okay. Yeah. It’s. So, yeah, even though it is new, it’s not new because it’s transferred ownership. So therefore, legally in the court’s mind, that becomes non new, is that correct? Right. Okay, that’s interesting. Okay. And that seems to be a place that people get hung up a lot. Um, and it depends on the platform. Um, Amazon’s much more aggressive than, than an Ebay or an Etsy, right? Yes, I believe so. Okay. All right. So let’s bring it home. So when, when is the time that we need to. I mean, what you described is a, we’ve got to get that patent and trademark in place. Those are the best defenses we have. That’s the place to get it. Once the time when we need to bring in an attorney.
Stephen: 01:04:34 Very broad, very broad question. Your answer is going to be every time, Steve, of course, and by the way, I bill in 15 minute increments every time I’m sending you my invoicing, but no, I guess you know, because it, it, it’s, you know, when I get there, maybe I’ll say it this way because I’m stumbling on my words, but the guy who’s going or lady who’s going and scanning target end caps and they’re selling, you know, two of these, five of these, one of these, and they get one of those letters, um, they’re probably not going to find that item again. It’s from a legitimate source because you can generally tell her these. They used to be able to easily tell. Now they’ve gotten a little more sophisticated, but generally, you know, you communicate with each other and somebody is like, yeah, yeah, I checked them out. Yeah, they’re real. Pull it down. Take the loss and move on. Correct. Pull the listing down, move on. Or maybe not.
Ann: 01:05:28 So are you, are you talking from a brand side?
Stephen: 01:05:31 Yeah, I’m selling. I’m selling. No, there’s not even a brand here, a pilot, a precise pens and I put them up and then all of a sudden I get one of those letters and I don’t have a lot of, um, it’s not a, it’s not something I’m developed. Is it worth anytime? Should I see an attorney or is it just take your licks, move on?
Ann: 01:05:50 Yeah, mean I think it depends on the, the breadth of the protection that you’re trying to, to afford. So if it’s not that many and you’re able to take down the listings that you don’t want, um, and prevent them from going back up and I think you’re set. I don’t think you need an attorney. If it rises to a level where these keep occurring and we need to send out cease and desist letters to the actual corporations, you know, if they’re selling outside of Amazon, then that’s something where it’s probably best to get an attorney involved and make sure the language in the letter is correct. Make sure that you’re asserting the right laws and protections against them.
Stephen: 01:06:34 Wait, wait, wait. I don’t think I understood what you meant there. So, so give me another example. So there they would prevent me from selling period. Is that what you think? And then. So therefore I’ve got to say, Hey, wait a second, you know, I’m allowed to sell them Amazon saying no, but, but, um, I mean, I’m not sure I’m clear what you were, what you meant there.
Ann: 01:06:51 Oh, maybe I’m unclear about your question.
Stephen: 01:06:54 I started the UNHCR, the, I don’t know what the right word. Maybe the lack of clarity. Okay. So, so, um, I get one of those letters. So I’ll go back to my music example. The music example. I was like, Hey, you know, uh, you, you don’t have rights to sell this dead person stuff. And I’m like, well, it’s used. And the attorneys like, yeah, it’s cool, but you still don’t have rights to sell it and so therefore, um, if you take your listing down, will make it go away and you know, I’m like, okay. So I agree. Talk to the. Actually I got on the phone and talk to the attorney and it was very reasonable. He’s like, Yep, no problem. Um, and he shot off the letter to Amazon and Amazon said, Yep, you’re good. Okay. And so whatever strike hopefully got district right in. So my reputation and get soiled and I just gave them away. Right? I didn’t solve but I could sell them to and my yard sale. Correct. I own them. Okay. So that’s different. Right. And that attorneys not circling my driveway saying, Hey, what’s in that yard sale box over there? Right. Um, why is it different? Let me ask you that because that’s a reasonable question.
Ann: 01:07:59 You are not by selling it at your house, you are not coming across as though you are the brand owner themselves. And I think that line gets blurred on Amazon.
Stephen: 01:08:14 Yeah. Well, because if I had a retail store, a, a thrift store, that’s a commercial venture. Um, but it’s not because I’m, I’m doing elvis and was an elvis, but, but it’s. If it was Elvis’s thrift store, that might be the issue. Right? So, uh, you know, so maybe that’s the distinction,
Ann: 01:08:30 right? If you’re putting yourself off as that or the brand owner in signing it through that brand, that’s where the problem lies because it’s all from the consumer’s perspective. And so if the consumer thinks that they’re getting a pair of shoes from Nike, they should be getting a pair of shoes from Nike. It shouldn’t be some, a middleman who is coming off as I’m selling Nike products,
Stephen: 01:08:55 but, but 56 percent of Amazon sales come from third party sellers, not from the brands.
Ann: 01:09:01 Right. Which is why Amazon is so particular are so, so brand savvy or so, so in favor of the brands that they can monitor their own products.
Stephen: 01:09:11 So you have to be an agent of the brand, I guess is a better example, right. For Nike for that, if that’s what they’re saying.
Ann: 01:09:17 Well you have to be an authorized distributor and so they just sell the new product. Right,
Stephen: 01:09:23 right, right. Yeah, I understand they do that they don’t enforce last year. So it was just. So it’s, it’s basically that’s the Itch, the distinction. So when a buyer is buying on Amazon, they think they’re buying from an authorized seller of Nike or whatever. Um, so therefore it’s okay. All right. And when they’re not, that’s when it becomes potentially a problem if the brand raises a stink about it.
Ann: 01:09:45 Exactly. Okay. Right. Cool. Good. Well,
Stephen: 01:09:49 alright, well we never did talk about Ebay, but the rules are relatively similar. Similar, correct. Yep. Okay. All right. And so, um, when people are thinking about getting started, what do you do? You guys don’t do anything for free. This was going to be a dumb question. Like Huh, is there some type of consulting that people that you guys offer when people are starting to develop a brand so they can go through, like get the whole scope of the potential whether they need to trademark whether they need to patent, whether they need all those things.
Ann: 01:10:21 Absolutely. So what was the download people on help them identify good trademarks, what to trademark, what Ip they should protect it. Maybe they should hold off on protecting,
Speaker 7: 01:10:32 um,
Ann: 01:10:34 you know, we, we understand that it’s expensive and so we come to the table with that thought process in mind. Some things are more important to protect than others. Patents generally conversed in terms of expense, trademarks come second. Um, but if you can do it all at the same time, even better.
Stephen: 01:10:52 Yeah, I sit and I think about packaging. It’s such an important thing that people need to really to get, you know, control of and make sure that they have their ducks in a row because it means so much. And, and you know, I think, I don’t think people pay attention to it and I think there’s an opportunity here. Okay. So the law firm is like eight guys with these giant names. Nothing easy, but MBHB is easy. I like somebody said a man though the other one, but uh, some woman said, hey, let’s just use mbhb. It’d be easy. Um, what’s the website that if somebody wants more information? Oh, I love it. Saying I’m telling you. Some lady said, hey, um, and um, and uh, I’ll put in contact here. And so she’s a, this is a field that you practice in day and night nerd.
Stephen: 01:11:40 Okay. All right. Well man, I really appreciate it. I really appreciate the detail. Um, and the help that you’ve given. Um, you gave a presentation in Chicago at Econ Chicago. If somebody requests, is that presentation available? Can I use any of that on my website? Okay. Legally you heard her, everybody. I’m recording. So she said it. So I’ll put some links out here and uh, um, and a couple of the slides because I think there’s some really good, simple, easy to understand information. It’s what I really appreciate about what you got here. So, Hey, thank you so much, man. I really appreciate it. Thank you. It’s been great. Great episode. Great Lady. A clearly knows what she’s talking about. I just love that. I love somebody who’s so confident and has seen so much. Um, I think that that’s the, that’s the key. You know, it’s funny, as you sell longer in this world used, realized things, right?
Stephen: 01:12:34 You get smarter, you get better at different things. Well, and their world, it’s the same thing. You know, they do something, it gets tested, they tweak it next time it doesn’t get tested because they tweaked it right? And then something else new comes along and then they tweak it. That’s the beauty of having somebody with experience. So it didn’t sound that expensive. If you’re building a brand, you know, a thousand bucks, 1200 bucks, not that much money to protect, to think about, you know, how long have you know, you know, $700, six, seven, $800 an hour. Now how long an hour defense gonna take you that 1200 bucks you would have spent, you know, thinking back, right? So as, as and points out this is the stuff you want to do upfront. So as you’re building these private label brands and you’re really creating something, this is really important. And, uh, I think she does a great job explaining it really, really cool. ECOMMERCE momentum.com, ecommerce momentum.com. Take care.
Speaker 2: 01:13:26 Thanks for listening to the ECOMMERCE momentum podcast. All the links mentioned today can be found at incomers momentum dot come under this episode number. Please remember to subscribe and the lake us on itunes.