February 4, 2025 • 28 mins
Unlock the secrets to crafting a brand that not only captures hearts but also stands firm in the legal arena. Join us as Erik Pelton, a renowned trademark attorney and former examiner at the US Patent and Trademark Office, shares his expertise on building memorable and legally protectable brand names. With Erik's guidance, learn how to avoid the common pitfalls that many businesses stumble into and discover the strategic advantage of securing trademark protection early on. This episode promises to equip you with the knowledge to lay a solid foundation for your brand's future success.
Navigate the emotional and strategic challenges of small business branding with us. Through personal stories and real-world examples, we delve into the complexities of trademark protection and the importance of a strong brand name. From addressing trademark infringement issues to exploring resolutions outside of court, we highlight how proactive intellectual property protection serves as essential insurance. For small businesses with limited resources, investing in trademark protection isn't just wise, it's crucial for sustainable growth and partnership opportunities.
Visit: http://www.erikpelton.com/
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Episode Transcript
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Speaker 1 (00:00):
It's not easy to come up with a great brand name
that's available and creativeand strong from a legal
protection standpoint andcommunicates with your customers
.
Right, because we could make upa word.
You see on Amazon a lot ofthese days, a lot of brands that
(00:20):
are just made up combinationsof characters.
They're sometimes evenimpossible to pronounce so they
don't actually mean anything,right?
But for most businesses, youwant a name that your customers
can remember and that when theysee your name, they know
something about what it is thatyou do or some quality or nature
(00:40):
of your business.
So to come up with a greatbrand name is not easy.
Speaker 2 (00:51):
You are listening to Intangiblia, the podcast of
intangible law plain talk aboutintellectual property.
Please welcome your host,Leticia Caminero, Overnight
success is usually years in themaking.
Speaker 3 (01:07):
We talked today about brand creating one from the
idea, from the first thoughtsand conception, to choosing the
right name and finding the bestway to communicate with your
customers, with your clients,with your intended audience.
This all needs care, thoughtand planning.
(01:32):
So let's welcome our guest totalk about building a bold brand
.
Speaker 1 (01:45):
My name is Eric Pelton.
I'm located just outside ofWashington DC in Virginia in the
United States, and I am atrademark attorney who
specializes mainly in workingwith small and medium-sized
businesses in both trademarkregistration and prosecution of
(02:05):
trademark applications, as wellas trademark disputes and
agreements and contracts andlitigation.
I run my own law firm, eric MPelton and Associates.
We're in 2024, actuallycelebrating our 25th year of the
law firm.
(02:26):
I started it on my own after Ihad been an examiner at the US
Patent and Trademark Office, somy first job after law school
was with the US Patent andTrademark Office as an examiner,
reviewing applications, andthat was a wonderful training,
(02:46):
wonderful people, wonderfulexperience.
I got to learn in detail thetrademark registration process
from the inside, from thegovernment's perspective, and
then, ever since then, I've beenworking helping people manage
that process from the other sideas their attorney.
Speaker 3 (03:04):
So you have the inside information, how the
logic works and everything, howthe language that they speak.
So you have a great advantagein that sense.
Speaker 1 (03:16):
Yes, and it is.
You know, it certainly can be avery complicated process.
There's lots of specificprocedures, forms, policies, and
so having that backgroundreally can be helpful and in
times of situations where anapplication gets stuck or
(03:38):
there's a very rare occurrenceknowing who to ask, maybe, or
where to look for the rightinformation is a nice tool to
have.
Speaker 3 (03:50):
Oh, that sounds perfect.
I would love to be your clientwith all that information.
So now we're going to turn.
How I got to know you, it wasthrough your book Building a
Bold Brand, the Foundations ofTrademark Protection.
So on this book you really gointo detail and tackle the main
(04:13):
parts of brand protection, fromthe creating of the brand,
protecting the brand and soforth.
So what would you say are someprevalent pitfalls that business
should be mindful during thecrucial process of creating a
brand or deciding on a brandname.
Speaker 1 (04:35):
Yeah, I love that question because a lot of people
think about trademarkprotection later on in the
business's life cycle and that'svaluable and important.
It's better to think about itand work on it later than never,
for sure.
But the most important time youcan work on it and think about
(04:56):
it and learn about it is at thebeginning of starting a business
, or starting a new product or anew service and the name that
gets attached to it.
So I wanted to take or startinga new product or a new service
and the name that gets attachedto it.
So I wanted to take.
This was a few years ago when Iwrote the book Building a Bold
Brand, and I wanted to take myyears of experience, both as an
examiner and as an attorney andwrite a book that was for
(05:29):
business owners or marketingmanagers, people doing business
and working with brands.
There's lots of content writtenfor other lawyers, written for
governments, written at thattype of level, with that type of
language, and it's not reallyaccessible to the business owner
.
So I wanted to write somethingthat was more accessible to the
business owner.
So I wanted to write somethingthat was more accessible to the
business owner and that's how Ideveloped the book and thought
(05:50):
of the audience when I wrote it.
And to your question about thebeginning of the process and
launching a brand, the mostimportant thing is the name
itself that is chosen for acompany, a business, a product,
a service, and taking the timeto choose a bold and creative
(06:14):
name, because it's going to bemuch more unique and stronger
and more protectable, and to dothe research to make sure that
it's available in theappropriate industry or
industries, and to do theresearch to make sure that it's
available in the appropriateindustry or industries and to
begin the registration process.
So you know, if I had a magicwand and could educate every
(06:34):
business owner before theylaunched, that would be the
message you know is, before youlaunch, as you think you've come
up with this great name, pause,work with an attorney, do the
research to make sure it's agreat name, because it's the
foundation for your business inmany, many ways and if you build
(06:56):
it on a more solid foundation,of course it's going to be that
much easier for the business togrow bigger and bigger and
quicker and quicker, as opposedto the opposite.
Speaker 3 (07:07):
Of course, and before you do the big investment,
before you start making thelabels, putting out the
promotion, all I say, oh, maybeI should protect this, so maybe
I should hire an attorney tohelp me out.
So before you do all that, it isimportant to make sure that the
(07:31):
brand that you're using, it isavailable in the legal sense and
also it is registrable, becauseit may be available but it
maybe is too generic, maybe it'stoo descriptive, maybe it
doesn't fit into the categoriesthat needs to be, that needs to
be met for registration.
So, yeah, it's important to dothe thought before the action.
(07:52):
And with that, moving to now,we have the brand, we are bold,
we decide to make this adistinctive, unique brand and
make that registration and gothrough all that.
(08:13):
And we know that life is notthe same as it was 10, 15, 20
years ago.
The way that a brand grows andgets to the consumer, to the
user, is very different nowadaysand of course, we have
technology to thank for that andin that also realization.
(08:36):
The protection of a brand isnot as simple.
Or it doesn't have the samestructure as it used to be, or
it doesn't have the samestructure as it used to be, so
how do we find protection?
Speaker 1 (08:51):
How do we find protection in this new world?
Yes, there are many interestingaspects of this the way that
commerce has changed and how itaffects the world of trademarks.
There's the speed at which abusiness can launch and grow and
be public, especially if it's aservice-based business.
Now it's so much quicker to setup a website or a software and
(09:15):
deliver services.
And then there are all theother technology things related
to communications, like socialmedia, artificial intelligence
all these other things that alsointeract with the world of
trademarks and intellectualproperty and that's actually how
I first got so excited andinterested in intellectual
(09:35):
property was the change oftechnology At the time when I
was graduating law school.
It was the explosion of theinternet and websites and domain
names at the start of that, andI built my own website when I
launched the firm to market thefirm and at the time, many, many
websites, many, many.
(09:56):
At the time, many, many lawfirms did not have websites, and
so that helped set me apart andhelped make it easier for
people to find me.
Back to your question abouttoday what are things that
brands want to think about inthis environment of doing
business today?
(10:17):
Is it really is more importantthan ever to start the
protection as early as possible.
When possible, start it beforeyou go public, before you launch
.
Ideally it's six months or ayear before you launch, right.
But like I said, for manyindustries you can get up to
(10:41):
speed and launch a business muchquicker.
That's okay.
But it's still better to startthe process a month before you
launch or even a week before youlaunch than it is after you
launch.
Once you're already out there,it's more costly to make changes
right and your risk you mayhave already taken, risks that
(11:03):
you didn't realize you weretaking because you didn't stop
to do the research about thename.
Speaker 3 (11:10):
Of course you may be infringing someone else's
trademark without knowing,without the intention, but in
this case intention doesn'tmatter.
If you did it, you most likelywould have to pay for it or at
least find an agreement tosettle for it.
Speaker 1 (11:32):
At a minimum.
It will be a big headache.
It will probably cost moneymoney on lawyers, maybe money in
damages and that's why a lot oftimes, we have to deliver bad
news to people.
Right, we love this name.
We've been planning it for thelast six months.
We're launching in two weeks.
We want you to go ahead andprotect it.
(11:53):
I say well, actually you mightwant to think about this name
and maybe alter it, but thatnews is much better to receive
before you launch it than it isto receive a cease and desist
letter a month after you'velaunched it, and it's that much
more expensive and burdensome todeal with of course, uh, it's,
(12:18):
uh.
Speaker 3 (12:19):
No one wants to receive a notification saying,
hey, you are in violation, soplease stop.
So it's, it's, uh.
That is why planning and andbeing surrounded by the right
people that can guide you andcounsel you is very important.
Especially something as anentrepreneur, you put your heart
(12:43):
and soul in your business.
You put everything you have inyour business, so it is crucial
to protect that, because this iswhere you're putting your, your
blood and sweat, so and andyour dreams and hope and your
future.
So it's very important that youmake a, a wholesome protection
(13:03):
of everything, not just the thetypical things that you need to
formalize your business, butalso protect your identifiers,
protect the way that you'representing yourself to the users
, to the consumers.
It is crucial because that'sgoing to make or break your
business.
Speaker 1 (13:25):
Yeah, and I really wish that in business school or
business classes that theytaught more about intellectual
property, because it is such afundamental thing, and I think
maybe many such classes brieflymention intellectual property,
but I don't think they reallygive it the time and the
(13:47):
attention and highlight it ashow important it is from the
outset for those businesses, andso that's another reason that
we're trying to always educatepeople with our books, podcasts,
videos and things.
Speaker 2 (14:04):
You are listening to Intangiblia, the podcast of
intangible law playing talkabout intellectual property.
Speaker 3 (14:12):
Discuss about real world examples.
So in your book you touch a fewof them, and I would like you
to tell us one that isparticularly intriguing or
challenging, in which we canunderstand the different
complexities and colors in theTregman Law.
Speaker 1 (14:33):
Wow, complexities and colors in the trademark law.
Wow, there's so many examplesand it's hard to share stories
because of attorney clientprivilege on a lot of matters,
of course.
But you know, I can tell you,for example, working with a
business and watching it growfrom an idea and a trademark
(14:57):
filing to then growing insuccess, and this happens all
the time.
Without having to give aspecific example, you can
imagine almost any business thatgrows successful.
Here we say the American dream.
A lot right, Starting your ownbusiness out of your basement or
your garage, right.
(15:18):
But I know that that dreamexists in lots of places.
It's not limited to theAmerican dream and sometimes
everything goes 100% smoothly,right, they make up a word or
pick a brand new, completelyarbitrary, creative word and
(15:39):
they're off to the races.
But much, much more frequent isthere are roadblocks, there are
obstacles, whether it's achallenge at the trademark
office getting registration.
A challenge at the trademarkoffice getting registration, or
whether it's the fact that theapplication process in the
(15:59):
United States went off smoothlybut the company expands and they
look at filing internationallyand they learned that somebody
has already filed in China or inEurope for something very
similar, and what options andobstacles they have to address
(16:20):
there.
And so one of the things I loveabout my job is that I get to
work with all different types ofbusinesses all the time, so I
get to learn a little bit aboutwhether they're in the beverage
business or the softwarebusiness or real estate business
.
I get to learn a little bitabout all these different
industries and businesses.
And then the other aspect isthat there's always something
(16:42):
new and unique.
You know that's challenging fora business that we've never
seen before, Because thingsthere's just so many different
possibilities in the world ofintellectual property that
there's always new challenges,new issues that arise.
(17:03):
And even though we're lawyersand we're dealing with this
technical area of trademarkregistration, there's a lot of
creativity that goes into how doyou formulate a strategy to
address this situation or tonegotiate with another company
to try to find a resolutionthat's beneficial for both sides
(17:24):
.
And I love that I get to usethe analytical side as well as
the creative side of my brain,and I never knew that when I got
into the world of trademarksthat that would be something
that happened so frequently andthat I would enjoy so much.
Speaker 3 (17:44):
Yeah, ip law, trademark law, is extremely
creative and you get to reallyexplore the full spectrum of the
human brain with it, because,of course, it's not only
following the process, notunderstanding the law and so
forth, but it's alsounderstanding the business,
(18:05):
understanding the person behindthe business and what they're
hoping to achieve, andtranslating that into the brand
that they're looking to protect.
Translating that into the brandthat they're looking to protect
.
So it's a very beautifulcompanionship that this kind of
law lets you do that.
(18:30):
You really are with thebusiness owner, with the
business creator, from a verybeautiful perspective and you
can understand the whole of thebusiness, not only one
transaction, one here, one there.
It's just this.
It's the entire, what makes thebusiness, the mission of the
business, the vision of thebusiness.
So it's.
It's quite a challenging, ofcourse, uh, but also, uh,
(18:51):
interesting.
It's a.
That's why well, I'm partial,of course, because I'm an IP
lawyer, it's hard for me to beimpartial in this sense, but,
yes, I truly believe it's themost beautiful part.
Speaker 1 (19:07):
Yes, I could add two things to that briefly.
You mentioned before when youwere talking about businesses
creating their brands and theirproducts and services and the
emotion that they have involvedin it, and that can make it
complicated when there's aproblem with the brand right,
but it makes it wonderful whenyou see it succeed because you
(19:30):
know how much passion andemotion goes into it.
And we are also a smallbusiness as our law firm, and so
we completely understand andget that.
And then the other thing Iwanted to add was over the years
because what we do for the vastmajority of trademark work is
(19:53):
in the United States, federal,and so we can work with clients
all over the country and allover the world is that we get to
work with so many differenttypes of businesses, so many
different places around theworld.
And when I'm traveling, whetherit's for work or even for
vacation, sometimes I get to tryto meet with clients who
(20:16):
sometimes I've worked with formany, many years that we've
never met in person.
We've seen each other on Zoomperhaps, but we've never sat
down and had a cup of coffeetogether or gone out to dinner.
And it's great.
I've made so many greatrelationships through the world
of trademarks.
(20:43):
No-transcript.
Speaker 3 (20:46):
Yeah, it's beautiful to make that relationships and
get to see the full spectrum.
So, in that, you are a smallbusiness, you work with small
business, so you reallyunderstand the realities and the
challenges that they face,because those are similar to the
ones that you face as well.
Can you identify some of thosemain challenges and which
(21:13):
strategies would you recommendto overcome them?
Speaker 1 (21:16):
One challenge, like we talked about launching a
brand and how it's not easy tocome up with a great brand name
that's available and creativeand strong from a legal
protection standpoint andcommunicates with your customers
(21:36):
.
Right, Because we could make upa word.
You see on Amazon a lot ofthese days, a lot of brands that
are just made up, combinationsof characters.
They're sometimes evenimpossible to pronounce, so they
don't actually mean anything,right?
But for most businesses, youwant a name that your customers
can remember and that when theysee your name, they know
(21:58):
something about what it is thatyou do or some quality or nature
of your business.
So to come up with a greatbrand name, To come up with a
great brand name, is not easyand we have gone through that in
coming up with names for thename for the book Building a
(22:19):
Bold Brand, or the name for ournewsletter or our podcast Tricks
of the Trademark.
So we've gone through thatprocess and then gone, of course
, because we love to practicewhat we preach, and gone on and
registered those names with theUS Patent and Trademark Office.
And then, of course, anotherchallenge for small businesses
(22:41):
is what do you do when you findthat somebody is infringing it
or possibly infringing it right.
You don't have a legaldepartment or a budget that
built in thousands or tens ofthousands of dollars for
litigation and trademarkprotection.
And so how can you try toaddress those situations fairly
(23:08):
and protect your brand?
Because if you don't protect it, you could lose your rights or
weaken your rights right, butwithout breaking the bank and
without spending more money thannecessary.
So we've dealt with that withsome of our brands and we help
clients deal with that all thetime, almost every day.
Right, that's an issue thatcomes up.
Speaker 3 (23:31):
So you have to find different ways of how making
your right effective, and noteverything has to be solved in a
court of law.
Some things and sometimesbetter outcome comes out of a
meeting room, comes out of agood settlement, a good
conversation.
At the end, businesses are notin the business of suing each
(23:54):
other.
They're in the business ofwhatever industry, whatever
sector they're focused on.
It is sometimes even moreenriching to find ways, and some
people have started fightingand end up even being business
partners later on oraccompanying each other in
different ways in the business,because they realize that
there's some synergies that theycan take advantage of.
(24:16):
Underline message that I'mseeing here is about being open
to make the change, to make theprotection, to make all that and
also being bold in the wholesense of the world.
So it's not only being bold onyou're already being very bold
by creating a business and bybeing an entrepreneur is already
(24:36):
quite a big step but also beingbold in the rest of how do you
identify yourself, how do youprotect yourself, how do you go
on about your business and howyou carry on in the digital era
of having a business in thisnowadays.
So, eric, any final wisethoughts to share?
Speaker 1 (25:02):
Well, first, thank you for having me, I guess, and
for helping to spread themessage to different audiences
about the importance ofintellectual property, and that
it's, you know, one of mymessages would certainly be you
don't have to be a big businessto take advantage of
(25:24):
intellectual property protectionand, in fact, protection.
And in fact, it's probably moreimportant if you're a small
business to protect yourtrademarks and your other
intellectual property upfront,proactively, because you don't
have that litigation budget.
So, amazon or Nike, if theytrip up and make a mistake, or
(25:54):
Nike, if they trip up and make amistake, they can afford to pay
somebody or pay lawyers to sueor defend a suit and deal with
it.
Small businesses cannot.
So it's even more important forthem to invest.
It is an investment, but it's areasonable investment, and it's
a reasonable investment andit's a type of insurance to help
strengthen their brand, reducethe odds that they get caught up
(26:15):
in a situation that's going tocost them money, time, emotion,
and that it's well worth thatexpense at the outset.
Thank you.
Speaker 3 (26:28):
Thank you at the outset.
Thank you.
Thank you, Eric, and can youtell us how can we get in
contact with you, your socialmedia handle and also the full
name of your podcast or anyonewho would like to listen?
Speaker 1 (26:39):
Thank you so much.
So my podcast is Tricks of theTrademark, and you can find that
everywhere you listen topodcasts.
You can find me at Eric Pelton,that's E-R-I-K-P-E-L-T-O-Ncom,
(27:03):
and on there you can see alllinks to all of our social media
.
Our handle on Instagram isMaking Trademarks Bloom and you
can find all of my videos.
I have more than 500 videos ontrademark and intellectual
property topics, and you canfind those at Eric Elton dot TV.
Speaker 3 (27:17):
Perfect.
So there's a whole lot ofinformation to keep
understanding, to keepdiscovering, to keep discovering
and, eric, you are part of thegreat minds that are making that
work and approaching trademarksand IP to the rest of the world
(27:39):
.
So, thank you, thank you foryour time and thank you for your
words.
Speaker 1 (27:43):
My pleasure.
Speaker 3 (27:49):
We have reached the end of our episode.
Greetings from Switzerland.
Speaker 2 (27:54):
Thank you for listening to Intangiblia, the
podcast of intangible law plaintalk about intellectual property
.
Did you like what we talkedtoday?
Please share with your network.
Do you want to learn more aboutintellectual property?
Subscribe now on your favoritepodcast player.
Follow us on Instagram,facebook, linkedin and Twitter.
(28:14):
Visit our websitewwwintangibliacom.
Copyright Leticia Caminero 2020.
All rights reserved.
This podcast is provided forinformation purposes only.
It's not easy to come up with a great brand name
that's available and creativeand strong from a legal
protection standpoint andcommunicates with your customers
.
Right, because we could make upa word.
You see on Amazon a lot ofthese days, a lot of brands that
(00:20):
are just made up combinationsof characters.
They're sometimes evenimpossible to pronounce so they
don't actually mean anything,right?
But for most businesses, youwant a name that your customers
can remember and that when theysee your name, they know
something about what it is thatyou do or some quality or nature
(00:40):
of your business.
So to come up with a greatbrand name is not easy.
Speaker 2 (00:51):
You are listening to Intangiblia, the podcast of
intangible law plain talk aboutintellectual property.
Please welcome your host,Leticia Caminero, Overnight
success is usually years in themaking.
Speaker 3 (01:07):
We talked today about brand creating one from the
idea, from the first thoughtsand conception, to choosing the
right name and finding the bestway to communicate with your
customers, with your clients,with your intended audience.
This all needs care, thoughtand planning.
(01:32):
So let's welcome our guest totalk about building a bold brand
.
Speaker 1 (01:45):
My name is Eric Pelton.
I'm located just outside ofWashington DC in Virginia in the
United States, and I am atrademark attorney who
specializes mainly in workingwith small and medium-sized
businesses in both trademarkregistration and prosecution of
(02:05):
trademark applications, as wellas trademark disputes and
agreements and contracts andlitigation.
I run my own law firm, eric MPelton and Associates.
We're in 2024, actuallycelebrating our 25th year of the
law firm.
(02:26):
I started it on my own after Ihad been an examiner at the US
Patent and Trademark Office, somy first job after law school
was with the US Patent andTrademark Office as an examiner,
reviewing applications, andthat was a wonderful training,
(02:46):
wonderful people, wonderfulexperience.
I got to learn in detail thetrademark registration process
from the inside, from thegovernment's perspective, and
then, ever since then, I've beenworking helping people manage
that process from the other sideas their attorney.
Speaker 3 (03:04):
So you have the inside information, how the
logic works and everything, howthe language that they speak.
So you have a great advantagein that sense.
Speaker 1 (03:16):
Yes, and it is.
You know, it certainly can be avery complicated process.
There's lots of specificprocedures, forms, policies, and
so having that backgroundreally can be helpful and in
times of situations where anapplication gets stuck or
(03:38):
there's a very rare occurrenceknowing who to ask, maybe, or
where to look for the rightinformation is a nice tool to
have.
Speaker 3 (03:50):
Oh, that sounds perfect.
I would love to be your clientwith all that information.
So now we're going to turn.
How I got to know you, it wasthrough your book Building a
Bold Brand, the Foundations ofTrademark Protection.
So on this book you really gointo detail and tackle the main
(04:13):
parts of brand protection, fromthe creating of the brand,
protecting the brand and soforth.
So what would you say are someprevalent pitfalls that business
should be mindful during thecrucial process of creating a
brand or deciding on a brandname.
Speaker 1 (04:35):
Yeah, I love that question because a lot of people
think about trademarkprotection later on in the
business's life cycle and that'svaluable and important.
It's better to think about itand work on it later than never,
for sure.
But the most important time youcan work on it and think about
(04:56):
it and learn about it is at thebeginning of starting a business
, or starting a new product or anew service and the name that
gets attached to it.
So I wanted to take or startinga new product or a new service
and the name that gets attachedto it.
So I wanted to take.
This was a few years ago when Iwrote the book Building a Bold
Brand, and I wanted to take myyears of experience, both as an
examiner and as an attorney andwrite a book that was for
(05:29):
business owners or marketingmanagers, people doing business
and working with brands.
There's lots of content writtenfor other lawyers, written for
governments, written at thattype of level, with that type of
language, and it's not reallyaccessible to the business owner
.
So I wanted to write somethingthat was more accessible to the
business owner.
So I wanted to write somethingthat was more accessible to the
business owner and that's how Ideveloped the book and thought
(05:50):
of the audience when I wrote it.
And to your question about thebeginning of the process and
launching a brand, the mostimportant thing is the name
itself that is chosen for acompany, a business, a product,
a service, and taking the timeto choose a bold and creative
(06:14):
name, because it's going to bemuch more unique and stronger
and more protectable, and to dothe research to make sure that
it's available in theappropriate industry or
industries, and to do theresearch to make sure that it's
available in the appropriateindustry or industries and to
begin the registration process.
So you know, if I had a magicwand and could educate every
(06:34):
business owner before theylaunched, that would be the
message you know is, before youlaunch, as you think you've come
up with this great name, pause,work with an attorney, do the
research to make sure it's agreat name, because it's the
foundation for your business inmany, many ways and if you build
(06:56):
it on a more solid foundation,of course it's going to be that
much easier for the business togrow bigger and bigger and
quicker and quicker, as opposedto the opposite.
Speaker 3 (07:07):
Of course, and before you do the big investment,
before you start making thelabels, putting out the
promotion, all I say, oh, maybeI should protect this, so maybe
I should hire an attorney tohelp me out.
So before you do all that, it isimportant to make sure that the
(07:31):
brand that you're using, it isavailable in the legal sense and
also it is registrable, becauseit may be available but it
maybe is too generic, maybe it'stoo descriptive, maybe it
doesn't fit into the categoriesthat needs to be, that needs to
be met for registration.
So, yeah, it's important to dothe thought before the action.
(07:52):
And with that, moving to now,we have the brand, we are bold,
we decide to make this adistinctive, unique brand and
make that registration and gothrough all that.
(08:13):
And we know that life is notthe same as it was 10, 15, 20
years ago.
The way that a brand grows andgets to the consumer, to the
user, is very different nowadaysand of course, we have
technology to thank for that andin that also realization.
(08:36):
The protection of a brand isnot as simple.
Or it doesn't have the samestructure as it used to be, or
it doesn't have the samestructure as it used to be, so
how do we find protection?
Speaker 1 (08:51):
How do we find protection in this new world?
Yes, there are many interestingaspects of this the way that
commerce has changed and how itaffects the world of trademarks.
There's the speed at which abusiness can launch and grow and
be public, especially if it's aservice-based business.
Now it's so much quicker to setup a website or a software and
(09:15):
deliver services.
And then there are all theother technology things related
to communications, like socialmedia, artificial intelligence
all these other things that alsointeract with the world of
trademarks and intellectualproperty and that's actually how
I first got so excited andinterested in intellectual
(09:35):
property was the change oftechnology At the time when I
was graduating law school.
It was the explosion of theinternet and websites and domain
names at the start of that, andI built my own website when I
launched the firm to market thefirm and at the time, many, many
websites, many, many.
(09:56):
At the time, many, many lawfirms did not have websites, and
so that helped set me apart andhelped make it easier for
people to find me.
Back to your question abouttoday what are things that
brands want to think about inthis environment of doing
business today?
(10:17):
Is it really is more importantthan ever to start the
protection as early as possible.
When possible, start it beforeyou go public, before you launch
.
Ideally it's six months or ayear before you launch, right.
But like I said, for manyindustries you can get up to
(10:41):
speed and launch a business muchquicker.
That's okay.
But it's still better to startthe process a month before you
launch or even a week before youlaunch than it is after you
launch.
Once you're already out there,it's more costly to make changes
right and your risk you mayhave already taken, risks that
(11:03):
you didn't realize you weretaking because you didn't stop
to do the research about thename.
Speaker 3 (11:10):
Of course you may be infringing someone else's
trademark without knowing,without the intention, but in
this case intention doesn'tmatter.
If you did it, you most likelywould have to pay for it or at
least find an agreement tosettle for it.
Speaker 1 (11:32):
At a minimum.
It will be a big headache.
It will probably cost moneymoney on lawyers, maybe money in
damages and that's why a lot oftimes, we have to deliver bad
news to people.
Right, we love this name.
We've been planning it for thelast six months.
We're launching in two weeks.
We want you to go ahead andprotect it.
(11:53):
I say well, actually you mightwant to think about this name
and maybe alter it, but thatnews is much better to receive
before you launch it than it isto receive a cease and desist
letter a month after you'velaunched it, and it's that much
more expensive and burdensome todeal with of course, uh, it's,
(12:18):
uh.
Speaker 3 (12:19):
No one wants to receive a notification saying,
hey, you are in violation, soplease stop.
So it's, it's, uh.
That is why planning and andbeing surrounded by the right
people that can guide you andcounsel you is very important.
Especially something as anentrepreneur, you put your heart
(12:43):
and soul in your business.
You put everything you have inyour business, so it is crucial
to protect that, because this iswhere you're putting your, your
blood and sweat, so and andyour dreams and hope and your
future.
So it's very important that youmake a, a wholesome protection
(13:03):
of everything, not just the thetypical things that you need to
formalize your business, butalso protect your identifiers,
protect the way that you'representing yourself to the users
, to the consumers.
It is crucial because that'sgoing to make or break your
business.
Speaker 1 (13:25):
Yeah, and I really wish that in business school or
business classes that theytaught more about intellectual
property, because it is such afundamental thing, and I think
maybe many such classes brieflymention intellectual property,
but I don't think they reallygive it the time and the
(13:47):
attention and highlight it ashow important it is from the
outset for those businesses, andso that's another reason that
we're trying to always educatepeople with our books, podcasts,
videos and things.
Speaker 2 (14:04):
You are listening to Intangiblia, the podcast of
intangible law playing talkabout intellectual property.
Speaker 3 (14:12):
Discuss about real world examples.
So in your book you touch a fewof them, and I would like you
to tell us one that isparticularly intriguing or
challenging, in which we canunderstand the different
complexities and colors in theTregman Law.
Speaker 1 (14:33):
Wow, complexities and colors in the trademark law.
Wow, there's so many examplesand it's hard to share stories
because of attorney clientprivilege on a lot of matters,
of course.
But you know, I can tell you,for example, working with a
business and watching it growfrom an idea and a trademark
(14:57):
filing to then growing insuccess, and this happens all
the time.
Without having to give aspecific example, you can
imagine almost any business thatgrows successful.
Here we say the American dream.
A lot right, Starting your ownbusiness out of your basement or
your garage, right.
(15:18):
But I know that that dreamexists in lots of places.
It's not limited to theAmerican dream and sometimes
everything goes 100% smoothly,right, they make up a word or
pick a brand new, completelyarbitrary, creative word and
(15:39):
they're off to the races.
But much, much more frequent isthere are roadblocks, there are
obstacles, whether it's achallenge at the trademark
office getting registration.
A challenge at the trademarkoffice getting registration, or
whether it's the fact that theapplication process in the
(15:59):
United States went off smoothlybut the company expands and they
look at filing internationallyand they learned that somebody
has already filed in China or inEurope for something very
similar, and what options andobstacles they have to address
(16:20):
there.
And so one of the things I loveabout my job is that I get to
work with all different types ofbusinesses all the time, so I
get to learn a little bit aboutwhether they're in the beverage
business or the softwarebusiness or real estate business
.
I get to learn a little bitabout all these different
industries and businesses.
And then the other aspect isthat there's always something
(16:42):
new and unique.
You know that's challenging fora business that we've never
seen before, Because thingsthere's just so many different
possibilities in the world ofintellectual property that
there's always new challenges,new issues that arise.
(17:03):
And even though we're lawyersand we're dealing with this
technical area of trademarkregistration, there's a lot of
creativity that goes into how doyou formulate a strategy to
address this situation or tonegotiate with another company
to try to find a resolutionthat's beneficial for both sides
(17:24):
.
And I love that I get to usethe analytical side as well as
the creative side of my brain,and I never knew that when I got
into the world of trademarksthat that would be something
that happened so frequently andthat I would enjoy so much.
Speaker 3 (17:44):
Yeah, ip law, trademark law, is extremely
creative and you get to reallyexplore the full spectrum of the
human brain with it, because,of course, it's not only
following the process, notunderstanding the law and so
forth, but it's alsounderstanding the business,
(18:05):
understanding the person behindthe business and what they're
hoping to achieve, andtranslating that into the brand
that they're looking to protect.
Translating that into the brandthat they're looking to protect
.
So it's a very beautifulcompanionship that this kind of
law lets you do that.
(18:30):
You really are with thebusiness owner, with the
business creator, from a verybeautiful perspective and you
can understand the whole of thebusiness, not only one
transaction, one here, one there.
It's just this.
It's the entire, what makes thebusiness, the mission of the
business, the vision of thebusiness.
So it's.
It's quite a challenging, ofcourse, uh, but also, uh,
(18:51):
interesting.
It's a.
That's why well, I'm partial,of course, because I'm an IP
lawyer, it's hard for me to beimpartial in this sense, but,
yes, I truly believe it's themost beautiful part.
Speaker 1 (19:07):
Yes, I could add two things to that briefly.
You mentioned before when youwere talking about businesses
creating their brands and theirproducts and services and the
emotion that they have involvedin it, and that can make it
complicated when there's aproblem with the brand right,
but it makes it wonderful whenyou see it succeed because you
(19:30):
know how much passion andemotion goes into it.
And we are also a smallbusiness as our law firm, and so
we completely understand andget that.
And then the other thing Iwanted to add was over the years
because what we do for the vastmajority of trademark work is
(19:53):
in the United States, federal,and so we can work with clients
all over the country and allover the world is that we get to
work with so many differenttypes of businesses, so many
different places around theworld.
And when I'm traveling, whetherit's for work or even for
vacation, sometimes I get to tryto meet with clients who
(20:16):
sometimes I've worked with formany, many years that we've
never met in person.
We've seen each other on Zoomperhaps, but we've never sat
down and had a cup of coffeetogether or gone out to dinner.
And it's great.
I've made so many greatrelationships through the world
of trademarks.
(20:43):
No-transcript.
Speaker 3 (20:46):
Yeah, it's beautiful to make that relationships and
get to see the full spectrum.
So, in that, you are a smallbusiness, you work with small
business, so you reallyunderstand the realities and the
challenges that they face,because those are similar to the
ones that you face as well.
Can you identify some of thosemain challenges and which
(21:13):
strategies would you recommendto overcome them?
Speaker 1 (21:16):
One challenge, like we talked about launching a
brand and how it's not easy tocome up with a great brand name
that's available and creativeand strong from a legal
protection standpoint andcommunicates with your customers
(21:36):
.
Right, Because we could make upa word.
You see on Amazon a lot ofthese days, a lot of brands that
are just made up, combinationsof characters.
They're sometimes evenimpossible to pronounce, so they
don't actually mean anything,right?
But for most businesses, youwant a name that your customers
can remember and that when theysee your name, they know
(21:58):
something about what it is thatyou do or some quality or nature
of your business.
So to come up with a greatbrand name, To come up with a
great brand name, is not easyand we have gone through that in
coming up with names for thename for the book Building a
(22:19):
Bold Brand, or the name for ournewsletter or our podcast Tricks
of the Trademark.
So we've gone through thatprocess and then gone, of course
, because we love to practicewhat we preach, and gone on and
registered those names with theUS Patent and Trademark Office.
And then, of course, anotherchallenge for small businesses
(22:41):
is what do you do when you findthat somebody is infringing it
or possibly infringing it right.
You don't have a legaldepartment or a budget that
built in thousands or tens ofthousands of dollars for
litigation and trademarkprotection.
And so how can you try toaddress those situations fairly
(23:08):
and protect your brand?
Because if you don't protect it, you could lose your rights or
weaken your rights right, butwithout breaking the bank and
without spending more money thannecessary.
So we've dealt with that withsome of our brands and we help
clients deal with that all thetime, almost every day.
Right, that's an issue thatcomes up.
Speaker 3 (23:31):
So you have to find different ways of how making
your right effective, and noteverything has to be solved in a
court of law.
Some things and sometimesbetter outcome comes out of a
meeting room, comes out of agood settlement, a good
conversation.
At the end, businesses are notin the business of suing each
(23:54):
other.
They're in the business ofwhatever industry, whatever
sector they're focused on.
It is sometimes even moreenriching to find ways, and some
people have started fightingand end up even being business
partners later on oraccompanying each other in
different ways in the business,because they realize that
there's some synergies that theycan take advantage of.
(24:16):
Underline message that I'mseeing here is about being open
to make the change, to make theprotection, to make all that and
also being bold in the wholesense of the world.
So it's not only being bold onyou're already being very bold
by creating a business and bybeing an entrepreneur is already
(24:36):
quite a big step but also beingbold in the rest of how do you
identify yourself, how do youprotect yourself, how do you go
on about your business and howyou carry on in the digital era
of having a business in thisnowadays.
So, eric, any final wisethoughts to share?
Speaker 1 (25:02):
Well, first, thank you for having me, I guess, and
for helping to spread themessage to different audiences
about the importance ofintellectual property, and that
it's, you know, one of mymessages would certainly be you
don't have to be a big businessto take advantage of
(25:24):
intellectual property protectionand, in fact, protection.
And in fact, it's probably moreimportant if you're a small
business to protect yourtrademarks and your other
intellectual property upfront,proactively, because you don't
have that litigation budget.
So, amazon or Nike, if theytrip up and make a mistake, or
(25:54):
Nike, if they trip up and make amistake, they can afford to pay
somebody or pay lawyers to sueor defend a suit and deal with
it.
Small businesses cannot.
So it's even more important forthem to invest.
It is an investment, but it's areasonable investment, and it's
a reasonable investment andit's a type of insurance to help
strengthen their brand, reducethe odds that they get caught up
(26:15):
in a situation that's going tocost them money, time, emotion,
and that it's well worth thatexpense at the outset.
Thank you.
Speaker 3 (26:28):
Thank you at the outset.
Thank you.
Thank you, Eric, and can youtell us how can we get in
contact with you, your socialmedia handle and also the full
name of your podcast or anyonewho would like to listen?
Speaker 1 (26:39):
Thank you so much.
So my podcast is Tricks of theTrademark, and you can find that
everywhere you listen topodcasts.
You can find me at Eric Pelton,that's E-R-I-K-P-E-L-T-O-Ncom,
(27:03):
and on there you can see alllinks to all of our social media
.
Our handle on Instagram isMaking Trademarks Bloom and you
can find all of my videos.
I have more than 500 videos ontrademark and intellectual
property topics, and you canfind those at Eric Elton dot TV.
Speaker 3 (27:17):
Perfect.
So there's a whole lot ofinformation to keep
understanding, to keepdiscovering, to keep discovering
and, eric, you are part of thegreat minds that are making that
work and approaching trademarksand IP to the rest of the world
(27:39):
.
So, thank you, thank you foryour time and thank you for your
words.
Speaker 1 (27:43):
My pleasure.
Speaker 3 (27:49):
We have reached the end of our episode.
Greetings from Switzerland.
Speaker 2 (27:54):
Thank you for listening to Intangiblia, the
podcast of intangible law plaintalk about intellectual property
.
Did you like what we talkedtoday?
Please share with your network.
Do you want to learn more aboutintellectual property?
Subscribe now on your favoritepodcast player.
Follow us on Instagram,facebook, linkedin and Twitter.
(28:14):
Visit our websitewwwintangibliacom.
Copyright Leticia Caminero 2020.
All rights reserved.
This podcast is provided forinformation purposes only.
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