April 7, 2025 • 18 mins
Securing your brand's identity is not just for giants like Disney or Coca-Cola—it's essential for businesses of every size. Attorney Mario Milano breaks down the often misunderstood world of trademarks with practical advice that could save you thousands in costly rebranding and legal headaches.
Most entrepreneurs focus on building their products and customer base without realizing how vulnerable their brand identity remains without proper trademark protection. That $500 investment in a preliminary trademark search could be the difference between sustainable growth and receiving a cease and desist letter that forces you to abandon years of brand recognition.
Mario walks us through the entire trademark process, from conducting proper searches to filing applications that typically take 6-8 months for approval. He explains the surprising range of things that can be trademarked—not just names and logos, but colors, sounds, and even scents—provided they've become distinctly associated with your brand. We explore common misconceptions, like assuming you're safe using a similar name in a different industry, and discuss international protection strategies through the Madrid Protocol for businesses with global aspirations.
The trademark landscape requires navigating some complex waters, but the protection it offers is potentially infinite since trademarks can be renewed indefinitely as long as they remain in active use. Whether you're launching a new product line or establishing your business identity, this episode provides the fundamental knowledge you need to secure your creations properly. Ready to protect what makes your brand uniquely yours? Listen now and take the first step toward bulletproof brand protection.
Mark as Played
Transcript
Episode Transcript
Available transcripts are automatically generated. Complete accuracy is not guaranteed.
Speaker 1 (00:02):
And welcome to Secure your Creations podcast with
Mario Milano.
I'm your host, Craig Andrewsand Mario, tell me about
yourself today.
How are you feeling?
Speaker 2 (00:11):
Pretty good, Craig.
You know, with this warmweather returning, everybody's
got a smile on their face, Ithink.
Speaker 1 (00:17):
That means basketball season's ending and baseball
season's starting right.
Speaker 2 (00:21):
Yeah, yeah, and both good things, you know starting
right.
Speaker 1 (00:27):
Yeah, yeah and uh.
Both good things.
You know absolutely.
So today we're going to talkabout trademarks.
I know that's one of yourservice lines that you offer in
terms of trademarks and so justto make sure that everyone's
clear in terms of whattrademarks are, kind of give me
the difference betweentrademarks, copyrights, patents,
in addition to why is thatimportant for small businesses?
Speaker 2 (00:44):
Sure.
So a trademark is gonna be theidentifier for a source of goods
.
We can think of some of thecommon trademarks like Pepsi or
Coca-Cola for soda.
You know, if you buy one brandyou have an expectation for what
the flavor's gonna be and thetrademark helps you identify
what the product is.
A trademark is different from apatent because patents really
(01:08):
protect the underlying idea ofsomething, but the patent isn't
really concerned with who thesource of a good is.
The patent is really justprotecting the idea, whereas the
trademark you would know whoyou're buying it from.
And a copyright is more for acreative work and again, it's
not really concerned with who isthe manufacturer of something,
(01:29):
just that it's protecting thework itself.
So if you're a small businessand you have your product lines
and you want to make sure thateverybody knows the high quality
products that you're puttingout, then a trademark is the way
to go.
Speaker 1 (01:42):
And so thinking about the shows and movies of the
past I'm a big movie buff, soseeing Coming to America and
they had McDonald's andMcDonald's.
And even in the movie it'sfunny because they reference in
terms of there's people overhere always taking pictures and
making sure I'm not breaking thecopyright and so forth.
Speaker 2 (01:59):
That's what I think about when I think about the
trademarks as you're referencingit.
Speaker 1 (02:02):
So in terms of those examples of big, now McDonald's
is a big brand.
What about the small businessguy?
How does trademarks affect them?
Speaker 2 (02:10):
Yeah, the trademark is still gonna affect and impact
small businesses.
One of the ways that I see itfor somebody, for small
businesses that don'tacknowledge trademark laws and
just kind of ignore it,sometimes they get a cease and
desist letter from either abigger company or just another
small business that has atrademark for something that you
(02:31):
know my client is using, andyou know that's not what we want
to see, because now all theeffort that the client has put
into not only establishing theirbrand and getting customers to
recognize it, but also theexpenses that they've paid they
usually have products that arealready out there and all that
stuff has to be taken care of ifyou are accused of trademark
infringement, and so clientsshould.
(02:54):
From a defensive standpoint,they should be aware of
trademarks and other people'strademarks, and they also want
to make sure that they havetheir own trademarks so that
nobody else can come in and tryto compete against them using
their own intellectual propertyso tell me about that process.
Speaker 1 (03:10):
What would a client have to do if you were, if you
were engaged with them in termsof setting up that trademark to
protect themselves?
Speaker 2 (03:16):
yeah, it's uh.
You know, uh, trademarks arerelatively faster than patents.
Uh, there's not as much uh pento paper work for an attorney,
you know still work that has tobe done and the scope usually
looks like, you know.
Number one I always recommendthat you get a search done.
That's going to number one makesure you're not going to be
infringing the rights of others,which is very important.
(03:37):
And number two we can usuallyget a really good idea of
whether your trademark is goingto be something that's actually
protectable or not.
There's different uhrequirements for a trademark
application, you know it has tobe, uh, it has to be sufficient
for a source identifier.
And, uh, once we go ahead andmake sure okay, we think it's
going to be protectable, we'renot going to be infringing the
(03:59):
rights of others, then we'llsubmit the trademark application
.
Uh, it typically takes aboutsix to eight months once we file
it, until we hear back from thetrademark office and, you know,
ideally the application willjust be allowed at that point.
Sometimes we do have to have alittle bit of a back and forth
with the trademark office andthen the application gets
allowed.
Speaker 1 (04:21):
So can you give me a real life example of something
that went maybe not as great fora small business that didn't
have trademark, a trademarksituation?
Speaker 2 (04:31):
Yeah, the situation that I see with that is the most
often way that it comes up isjust they don't do a search for
anybody else's trademarks.
They start selling theirproducts.
They have an established brand,now with some recognition in
the marketplace, and asconsumers start to recognize
that brand, trademark ownersalso start to recognize that
(04:54):
brand, and so if you have a nameor an image or a logo that
you're using that's confusinglysimilar to somebody else's
trademark, then the trademarkowner will then send you a cease
and desist asking you to stopusing that trademark.
Speaker 1 (05:11):
That makes sense.
That makes sense.
So a lot of times in smallbusiness owners that we both
work with, they tend to kind ofescape over the details.
So tell me about the costbenefit versus not doing the
proper way.
You know what is the benefit interms of.
How do you justify that to asmall business owner?
Speaker 2 (05:30):
Yeah, so you know the number one thing.
Like I said, the number onething that I always recommend is
the search.
We can usually do a search forabout $500 for a single
trademark, and so you know thefee for that.
Sure, $500 is some money, butthe fee for, but the cost
associated with not doing thesearch and just starting to
(05:51):
adopt a brand new trademark foryourself or a brand new logo
without doing the search, youknow if you then have to rebrand
and adopt a new mark later, youknow that's certainly going to
cost you a lot more than theoriginal $500.
just to make sure you know, someclients are hesitant to do it
because they've alreadyestablished their new brand or
(06:13):
they've already, you know,worked with some creative folks
to come up with the new logo andthey're excited to start using
it.
So they don't want to getbogged down in the details of
having to do a trademark searchand then start over.
Speaker 1 (06:26):
Well, I know, I know with yourself you're more of a
proactive thinker, right?
So ultimately, you want to makesure that you're being careful
not to have an accrued cost oflegal fees and defense and
everything of that fashion.
So the word to the wise here isdo it right the first time,
ultimately.
Speaker 2 (06:44):
Yeah, yeah, absolutely, you know, the legal
fees certainly start to add up.
You know the search isrelatively cheap.
The fees to respond to ceaseand desist letters and making
sure we're complying witheverything that the other side
is requesting that certainlystarts to add up.
So the initial fee is usuallywell worth it in the long run.
Speaker 1 (07:03):
That's right, and 500 bucks investment into your
business is generally pretty low, I would assume, considering
we're all growing businesses toget bigger.
Very few people said I want togrow a business and stay small
and deal with minimal amount ofpeople.
So as you begin to grow, youwant to make sure that your
legal stuff in reference to yourtrademark is set in place, and
(07:26):
you want to do that early andoften.
Tell me a little bit aboutMilano IP's process when it
comes to maybe how often shouldyou check your trademark in
terms of infringement?
Speaker 2 (07:39):
Yeah, so we do offer an ongoing monitoring service,
and so we have software thatjust is constantly scouring the
Internet and other sources tomake sure that you know is
anybody using a mark that'ssimilar to yours?
If they are, what type of goodsare they selling it under?
You know, if you have a companythat sells construction
(08:00):
equipment, well then somebodyelse who starts manufacturing a
food product, you know thatmight not be as much of an issue
as far as your trademark isconcerned, but if it's somebody
who is selling constructiontools under a similar mark, then
that's certainly something thatwe want to know about.
And so we have software inplace that just is constantly
monitoring that, and usuallyit's kind of a set it and forget
(08:23):
it thing.
We just run the search and ifthere's no issues then we don't
bother, we don't need to let youknow, but if something does
come up, then we can reach outand let you know right away.
Speaker 1 (08:33):
So you bring up an interesting point there and
we're talking about probablymore myths and as a novice I
wouldn't know the difference,but that's why we're here
talking to you.
So you mentioned there inreference to being in different
industries.
Tell me some examples of whenit doesn't matter if your
trademark's in place, if you'rein a different industry than
your trademark is in, or if itdoesn't matter at all, like
(08:56):
should you still stick with thecease and desist letters and
things of that fashion.
Speaker 2 (09:01):
Yeah, so the issue comes up sometimes it doesn't
matter, but a lot of it dependson the other person's trademark.
If we're looking at it from aninfringement standpoint, uh, so
if somebody else has a veryfamous mark, then whether you're
in their industry or not,there's a high likelihood that
they're still going to tell youto stop using their mark for
(09:23):
example uh, if you know, likethe walt, disney uh or disney
trademark, you know that's avery famous mark, everybody
knows about it.
And whether it's in a particulararea that disney trademark, you
know that's a very famous mark,everybody knows about it.
And whether it's in aparticular area that disney has
filed that trademark applicationin and has a trademark for
those goods, or if it's anunrelated one, the likelihood if
you start using disney'strademark for an unrelated
(09:44):
product, they're probably stillgoing to be able to say that
you're causing confusion in themarketplace with their trademark
because they're that famous.
Now, if it's a relativelyunknown trademark for banking
services and you start using itfor your landscaping business,
it's the likelihood that you'recausing confusion in the
(10:05):
marketplace is significantlylower than it is with the Disney
example.
Speaker 1 (10:10):
That makes sense.
And so a couple of questions Ihave from that answer is when
you're talking about trademarkand I know you've somewhat
answered before, but when you'retalking trademark, are you
talking color?
Are you talking scent?
Are you talking size, Like?
What type of things really fitsunder that trademark moniker?
Speaker 2 (10:27):
Yeah, and so those are all things that we can apply
for.
Typically, when clients firstcome to me, they'll have either
their business name or theirbusiness logo and they'll say,
okay, I want to get a trademarkon this.
Typically, just getting thename itself in plain text is
usually the broadest trademark.
But you know, once they filethat one, then they want to
(10:50):
adopt a logo so they can thenstart incorporating their
business colors into theirtrademark.
Then we can go that route.
I just saw, you know, like theReese's peanut butter, you know
that color of orange.
They have a trademark on that.
You know, those are morecomplicated trademarks to get
because we have to show thatthere is sufficient brand
recognition in the marketplacein order for somebody to get a
(11:13):
trademark on that, whereas withthe name itself, you know, we
can show, okay, here's the name,uh, here's where we're using it
in connection with the, withgoods and services, and then we
can get a trademark like that.
But you know it is possible,especially um for a sufficiently
famous mark, like recent peanutbutter cups, they can certainly
get a trademark on the colorthere.
(11:33):
Scents are another way to get atrademark.
That one is again a little bittricky.
You have to send in examples tothe trademark office.
You have to be able to definewhat that scent is using.
I don't know the name of thedevice that they would use for
that, but there is scientifictests that you would use for
that.
But there is scientific teststhat you can use to classify the
(11:55):
scent.
You know musical notes havealso been trademarked.
You remember the NBC3 chime?
Speaker 1 (12:03):
pattern.
Speaker 2 (12:04):
Yeah, exactly, exactly.
Yeah, they had a trademark onthat as well.
So it's you know, you can get.
If you have something thatidentifies you as a source of
goods or services that'ssufficiently famous, you can get
a trademark on it.
Speaker 1 (12:19):
So what cannot be trademarked?
Is there anything that cannotbe trademarked?
Speaker 2 (12:25):
Yeah, that's a good question.
I guess there's not much as faras a blanket rule on you're not
getting a trademark on this.
It just has to be somethingthat is sufficiently famous as
far as being the sourceidentifier for you, the USPTO
does have some rules onoffensive trademarks and stuff
(12:47):
like that.
But generally, like words,sense, sounds, I don't know
about touch, you know.
I'm assuming that, yeah, youcan probably get a trademark on
things that you know you cantouch and feel.
Speaker 1 (13:01):
But again it.
Speaker 2 (13:02):
Just it has to be sufficiently famous that
consumers in the marketplacerecognize like oh, when I see
that or I hear that or I touchthat, I know that.
You know this is the productthat it's associated with and
this is who the manufacturer is.
Speaker 1 (13:14):
That makes sense.
That makes sense, so similar towhat we talked about in another
episode in terms of timeline ortime, excuse me is does patent
I'm sorry, excuse me trademarkshave a time limit to them?
Speaker 2 (13:26):
Yeah, the nice thing about trademarks is they're
extendable forever, so you justhave to pay your maintenance
fees.
So when you file your trademarkapplication usually six to
eight months we get thetrademark approved.
Then once it's issued andregistered as a you know, once
it's a registered trademarkbetween years five and six you
(13:48):
have to renew the application.
You know just some paperworkthat you have to send in, and
then at the 10 year mark youhave to renew it.
10 years from the originalregistration date you have to
renew it again and then every 10years after that you just have
to show that you're still usingthe mark in connection with the
same goods and pay the renewalfee.
Speaker 1 (14:10):
And so similar to the patents as we talked about
before.
What about internationally?
How does those trademarksaffect you?
If I patented a logo here, isthat something still that works
in Spain and Madrid?
Speaker 2 (14:24):
Yeah, unfortunately no, the US trademark is just in
the US, and then you know.
But you can use your USapplication as a basis for
filing outside of the US throughthe Madrid protocol, as a basis
for filing outside of the USthrough the Madrid Protocol, and
so we can.
You know if you can get atrademark in any of those
(14:46):
countries that you desire, butyou do have to go through the
trademark application andexamination process, and so,
just because we like to educateour audience, can you give me a
basis of what the MadridProtocol is?
Yeah, so when we file anapplication here in the U, we
can file it through the Madridprotocol where now any other
countries that want to, whereyou can select which countries
you want to enter through thatprotocol, and so that then you
(15:08):
can just file anywhere that anymember country.
You can just use yourapplication to enter those
countries.
You can also enter each countryindividually, but the Madrid
protocol just makes it easier toget into multiple countries at
once.
Speaker 1 (15:23):
So let's talk about that holistic view that you have
in terms of your clients.
What is the value of having atrademark that can go
international?
Obviously, the ones who arehere.
We were talking before aboutthe small businesses, but let's
talk a little bit larger.
What would be the advantages ofhaving a trademark that's
international for biggerorganizations?
Speaker 2 (15:43):
Yeah, certainly you know.
Then you can have a consistentbranding and messaging
associated with your company andyour products.
You know, you don't want tohave to call your product.
You know one thing over here inthe U?
S and then something else inEurope and something else in
Japan.
You know one thing over here inthe US and then something else
in Europe and something else inJapan.
You know if you can have aconsistent message.
It just helps to build up thatbrain recognition.
Speaker 1 (16:08):
And so that makes a lot of sense In terms of other
platforms, because I know that alot of people like to
generalize.
So if you're talking aboutputting your trademark or your
brand out on Etsy or an Amazon,are there any things that we
should keep an eye on in termsof that trademark?
Speaker 2 (16:25):
Yeah, if you're doing it on your own and you want to
put your brand out there, likeyou said, on these online
marketplaces, you just want tomake sure that you're not coming
too close to somebody else'strademark that's already out
there.
You can't just change oneletter and try to get it or get
around it.
Speaker 1 (16:43):
Uh estimate dollars.
Speaker 2 (16:45):
Yes, yes, yeah, it just doesn't work like that, and
so you know, if you want to geta trademark.
If you come up with a new wordthat's not in the english
language, you know that'susually a pretty good sign that
you're going to be able to get atrademark for that word.
Not guaranteed, of course, butyou know that's usually a good
way to come up with somethingthat won't be infringing
(17:05):
somebody else's trademark andyou should be able to get your
own trademark for it.
Speaker 1 (17:09):
That makes sense.
So, as we wrap out this episodeof Secure your Creation podcast
, what are some tips that youcan give them?
In reference to trademark,that's 100% without hesitation.
Every business should beconsidering.
Speaker 2 (17:23):
Yeah, if you're coming up with a new product
line or a new advertising line,make sure you do the trademark
search.
You're going to save yourself alot of headaches in the long
run by just conducting thatsearch, making sure that you're
not going to be infringinganybody else's trademarks and
that you're going to be able touse that mark as your own source
identifier.
Speaker 1 (17:42):
Very good, very good, and so, as we conclude the show
, you can always reach out toMario at MilanoIPcom, in which
he'll be.
You offer a consultation ofsome fashion, correct?
Speaker 2 (17:52):
Absolutely yeah.
Initial consultations arealways free.
Speaker 1 (17:56):
Awesome.
So again, our co-host here,milano.
Uh, mario Milano, excuse me, atMilano IP.
That's a lot of Milano's to bethrowing out, but you can reach
out to him or give him a calland he'll be happy to help you
with your trademark concerns orissues.
Until next time, mario, uh,we'll, we'll, we'll catch them
on the next side and secure yourcreations.
(18:16):
Thanks, greg, thank you,bye-bye now.
And welcome to Secure your Creations podcast with
Mario Milano.
I'm your host, Craig Andrewsand Mario, tell me about
yourself today.
How are you feeling?
Speaker 2 (00:11):
Pretty good, Craig.
You know, with this warmweather returning, everybody's
got a smile on their face, Ithink.
Speaker 1 (00:17):
That means basketball season's ending and baseball
season's starting right.
Speaker 2 (00:21):
Yeah, yeah, and both good things, you know starting
right.
Speaker 1 (00:27):
Yeah, yeah and uh.
Both good things.
You know absolutely.
So today we're going to talkabout trademarks.
I know that's one of yourservice lines that you offer in
terms of trademarks and so justto make sure that everyone's
clear in terms of whattrademarks are, kind of give me
the difference betweentrademarks, copyrights, patents,
in addition to why is thatimportant for small businesses?
Speaker 2 (00:44):
Sure.
So a trademark is gonna be theidentifier for a source of goods
.
We can think of some of thecommon trademarks like Pepsi or
Coca-Cola for soda.
You know, if you buy one brandyou have an expectation for what
the flavor's gonna be and thetrademark helps you identify
what the product is.
A trademark is different from apatent because patents really
(01:08):
protect the underlying idea ofsomething, but the patent isn't
really concerned with who thesource of a good is.
The patent is really justprotecting the idea, whereas the
trademark you would know whoyou're buying it from.
And a copyright is more for acreative work and again, it's
not really concerned with who isthe manufacturer of something,
(01:29):
just that it's protecting thework itself.
So if you're a small businessand you have your product lines
and you want to make sure thateverybody knows the high quality
products that you're puttingout, then a trademark is the way
to go.
Speaker 1 (01:42):
And so thinking about the shows and movies of the
past I'm a big movie buff, soseeing Coming to America and
they had McDonald's andMcDonald's.
And even in the movie it'sfunny because they reference in
terms of there's people overhere always taking pictures and
making sure I'm not breaking thecopyright and so forth.
Speaker 2 (01:59):
That's what I think about when I think about the
trademarks as you're referencingit.
Speaker 1 (02:02):
So in terms of those examples of big, now McDonald's
is a big brand.
What about the small businessguy?
How does trademarks affect them?
Speaker 2 (02:10):
Yeah, the trademark is still gonna affect and impact
small businesses.
One of the ways that I see itfor somebody, for small
businesses that don'tacknowledge trademark laws and
just kind of ignore it,sometimes they get a cease and
desist letter from either abigger company or just another
small business that has atrademark for something that you
(02:31):
know my client is using, andyou know that's not what we want
to see, because now all theeffort that the client has put
into not only establishing theirbrand and getting customers to
recognize it, but also theexpenses that they've paid they
usually have products that arealready out there and all that
stuff has to be taken care of ifyou are accused of trademark
infringement, and so clientsshould.
(02:54):
From a defensive standpoint,they should be aware of
trademarks and other people'strademarks, and they also want
to make sure that they havetheir own trademarks so that
nobody else can come in and tryto compete against them using
their own intellectual propertyso tell me about that process.
Speaker 1 (03:10):
What would a client have to do if you were, if you
were engaged with them in termsof setting up that trademark to
protect themselves?
Speaker 2 (03:16):
yeah, it's uh.
You know, uh, trademarks arerelatively faster than patents.
Uh, there's not as much uh pento paper work for an attorney,
you know still work that has tobe done and the scope usually
looks like, you know.
Number one I always recommendthat you get a search done.
That's going to number one makesure you're not going to be
infringing the rights of others,which is very important.
(03:37):
And number two we can usuallyget a really good idea of
whether your trademark is goingto be something that's actually
protectable or not.
There's different uhrequirements for a trademark
application, you know it has tobe, uh, it has to be sufficient
for a source identifier.
And, uh, once we go ahead andmake sure okay, we think it's
going to be protectable, we'renot going to be infringing the
(03:59):
rights of others, then we'llsubmit the trademark application
.
Uh, it typically takes aboutsix to eight months once we file
it, until we hear back from thetrademark office and, you know,
ideally the application willjust be allowed at that point.
Sometimes we do have to have alittle bit of a back and forth
with the trademark office andthen the application gets
allowed.
Speaker 1 (04:21):
So can you give me a real life example of something
that went maybe not as great fora small business that didn't
have trademark, a trademarksituation?
Speaker 2 (04:31):
Yeah, the situation that I see with that is the most
often way that it comes up isjust they don't do a search for
anybody else's trademarks.
They start selling theirproducts.
They have an established brand,now with some recognition in
the marketplace, and asconsumers start to recognize
that brand, trademark ownersalso start to recognize that
(04:54):
brand, and so if you have a nameor an image or a logo that
you're using that's confusinglysimilar to somebody else's
trademark, then the trademarkowner will then send you a cease
and desist asking you to stopusing that trademark.
Speaker 1 (05:11):
That makes sense.
That makes sense.
So a lot of times in smallbusiness owners that we both
work with, they tend to kind ofescape over the details.
So tell me about the costbenefit versus not doing the
proper way.
You know what is the benefit interms of.
How do you justify that to asmall business owner?
Speaker 2 (05:30):
Yeah, so you know the number one thing.
Like I said, the number onething that I always recommend is
the search.
We can usually do a search forabout $500 for a single
trademark, and so you know thefee for that.
Sure, $500 is some money, butthe fee for, but the cost
associated with not doing thesearch and just starting to
(05:51):
adopt a brand new trademark foryourself or a brand new logo
without doing the search, youknow if you then have to rebrand
and adopt a new mark later, youknow that's certainly going to
cost you a lot more than theoriginal $500.
just to make sure you know, someclients are hesitant to do it
because they've alreadyestablished their new brand or
(06:13):
they've already, you know,worked with some creative folks
to come up with the new logo andthey're excited to start using
it.
So they don't want to getbogged down in the details of
having to do a trademark searchand then start over.
Speaker 1 (06:26):
Well, I know, I know with yourself you're more of a
proactive thinker, right?
So ultimately, you want to makesure that you're being careful
not to have an accrued cost oflegal fees and defense and
everything of that fashion.
So the word to the wise here isdo it right the first time,
ultimately.
Speaker 2 (06:44):
Yeah, yeah, absolutely, you know, the legal
fees certainly start to add up.
You know the search isrelatively cheap.
The fees to respond to ceaseand desist letters and making
sure we're complying witheverything that the other side
is requesting that certainlystarts to add up.
So the initial fee is usuallywell worth it in the long run.
Speaker 1 (07:03):
That's right, and 500 bucks investment into your
business is generally pretty low, I would assume, considering
we're all growing businesses toget bigger.
Very few people said I want togrow a business and stay small
and deal with minimal amount ofpeople.
So as you begin to grow, youwant to make sure that your
legal stuff in reference to yourtrademark is set in place, and
(07:26):
you want to do that early andoften.
Tell me a little bit aboutMilano IP's process when it
comes to maybe how often shouldyou check your trademark in
terms of infringement?
Speaker 2 (07:39):
Yeah, so we do offer an ongoing monitoring service,
and so we have software thatjust is constantly scouring the
Internet and other sources tomake sure that you know is
anybody using a mark that'ssimilar to yours?
If they are, what type of goodsare they selling it under?
You know, if you have a companythat sells construction
(08:00):
equipment, well then somebodyelse who starts manufacturing a
food product, you know thatmight not be as much of an issue
as far as your trademark isconcerned, but if it's somebody
who is selling constructiontools under a similar mark, then
that's certainly something thatwe want to know about.
And so we have software inplace that just is constantly
monitoring that, and usuallyit's kind of a set it and forget
(08:23):
it thing.
We just run the search and ifthere's no issues then we don't
bother, we don't need to let youknow, but if something does
come up, then we can reach outand let you know right away.
Speaker 1 (08:33):
So you bring up an interesting point there and
we're talking about probablymore myths and as a novice I
wouldn't know the difference,but that's why we're here
talking to you.
So you mentioned there inreference to being in different
industries.
Tell me some examples of whenit doesn't matter if your
trademark's in place, if you'rein a different industry than
your trademark is in, or if itdoesn't matter at all, like
(08:56):
should you still stick with thecease and desist letters and
things of that fashion.
Speaker 2 (09:01):
Yeah, so the issue comes up sometimes it doesn't
matter, but a lot of it dependson the other person's trademark.
If we're looking at it from aninfringement standpoint, uh, so
if somebody else has a veryfamous mark, then whether you're
in their industry or not,there's a high likelihood that
they're still going to tell youto stop using their mark for
(09:23):
example uh, if you know, likethe walt, disney uh or disney
trademark, you know that's avery famous mark, everybody
knows about it.
And whether it's in a particulararea that disney trademark, you
know that's a very famous mark,everybody knows about it.
And whether it's in aparticular area that disney has
filed that trademark applicationin and has a trademark for
those goods, or if it's anunrelated one, the likelihood if
you start using disney'strademark for an unrelated
(09:44):
product, they're probably stillgoing to be able to say that
you're causing confusion in themarketplace with their trademark
because they're that famous.
Now, if it's a relativelyunknown trademark for banking
services and you start using itfor your landscaping business,
it's the likelihood that you'recausing confusion in the
(10:05):
marketplace is significantlylower than it is with the Disney
example.
Speaker 1 (10:10):
That makes sense.
And so a couple of questions Ihave from that answer is when
you're talking about trademarkand I know you've somewhat
answered before, but when you'retalking trademark, are you
talking color?
Are you talking scent?
Are you talking size, Like?
What type of things really fitsunder that trademark moniker?
Speaker 2 (10:27):
Yeah, and so those are all things that we can apply
for.
Typically, when clients firstcome to me, they'll have either
their business name or theirbusiness logo and they'll say,
okay, I want to get a trademarkon this.
Typically, just getting thename itself in plain text is
usually the broadest trademark.
But you know, once they filethat one, then they want to
(10:50):
adopt a logo so they can thenstart incorporating their
business colors into theirtrademark.
Then we can go that route.
I just saw, you know, like theReese's peanut butter, you know
that color of orange.
They have a trademark on that.
You know, those are morecomplicated trademarks to get
because we have to show thatthere is sufficient brand
recognition in the marketplacein order for somebody to get a
(11:13):
trademark on that, whereas withthe name itself, you know, we
can show, okay, here's the name,uh, here's where we're using it
in connection with the, withgoods and services, and then we
can get a trademark like that.
But you know it is possible,especially um for a sufficiently
famous mark, like recent peanutbutter cups, they can certainly
get a trademark on the colorthere.
(11:33):
Scents are another way to get atrademark.
That one is again a little bittricky.
You have to send in examples tothe trademark office.
You have to be able to definewhat that scent is using.
I don't know the name of thedevice that they would use for
that, but there is scientifictests that you would use for
that.
But there is scientific teststhat you can use to classify the
(11:55):
scent.
You know musical notes havealso been trademarked.
You remember the NBC3 chime?
Speaker 1 (12:03):
pattern.
Speaker 2 (12:04):
Yeah, exactly, exactly.
Yeah, they had a trademark onthat as well.
So it's you know, you can get.
If you have something thatidentifies you as a source of
goods or services that'ssufficiently famous, you can get
a trademark on it.
Speaker 1 (12:19):
So what cannot be trademarked?
Is there anything that cannotbe trademarked?
Speaker 2 (12:25):
Yeah, that's a good question.
I guess there's not much as faras a blanket rule on you're not
getting a trademark on this.
It just has to be somethingthat is sufficiently famous as
far as being the sourceidentifier for you, the USPTO
does have some rules onoffensive trademarks and stuff
(12:47):
like that.
But generally, like words,sense, sounds, I don't know
about touch, you know.
I'm assuming that, yeah, youcan probably get a trademark on
things that you know you cantouch and feel.
Speaker 1 (13:01):
But again it.
Speaker 2 (13:02):
Just it has to be sufficiently famous that
consumers in the marketplacerecognize like oh, when I see
that or I hear that or I touchthat, I know that.
You know this is the productthat it's associated with and
this is who the manufacturer is.
Speaker 1 (13:14):
That makes sense.
That makes sense, so similar towhat we talked about in another
episode in terms of timeline ortime, excuse me is does patent
I'm sorry, excuse me trademarkshave a time limit to them?
Speaker 2 (13:26):
Yeah, the nice thing about trademarks is they're
extendable forever, so you justhave to pay your maintenance
fees.
So when you file your trademarkapplication usually six to
eight months we get thetrademark approved.
Then once it's issued andregistered as a you know, once
it's a registered trademarkbetween years five and six you
(13:48):
have to renew the application.
You know just some paperworkthat you have to send in, and
then at the 10 year mark youhave to renew it.
10 years from the originalregistration date you have to
renew it again and then every 10years after that you just have
to show that you're still usingthe mark in connection with the
same goods and pay the renewalfee.
Speaker 1 (14:10):
And so similar to the patents as we talked about
before.
What about internationally?
How does those trademarksaffect you?
If I patented a logo here, isthat something still that works
in Spain and Madrid?
Speaker 2 (14:24):
Yeah, unfortunately no, the US trademark is just in
the US, and then you know.
But you can use your USapplication as a basis for
filing outside of the US throughthe Madrid protocol, as a basis
for filing outside of the USthrough the Madrid Protocol, and
so we can.
You know if you can get atrademark in any of those
(14:46):
countries that you desire, butyou do have to go through the
trademark application andexamination process, and so,
just because we like to educateour audience, can you give me a
basis of what the MadridProtocol is?
Yeah, so when we file anapplication here in the U, we
can file it through the Madridprotocol where now any other
countries that want to, whereyou can select which countries
you want to enter through thatprotocol, and so that then you
(15:08):
can just file anywhere that anymember country.
You can just use yourapplication to enter those
countries.
You can also enter each countryindividually, but the Madrid
protocol just makes it easier toget into multiple countries at
once.
Speaker 1 (15:23):
So let's talk about that holistic view that you have
in terms of your clients.
What is the value of having atrademark that can go
international?
Obviously, the ones who arehere.
We were talking before aboutthe small businesses, but let's
talk a little bit larger.
What would be the advantages ofhaving a trademark that's
international for biggerorganizations?
Speaker 2 (15:43):
Yeah, certainly you know.
Then you can have a consistentbranding and messaging
associated with your company andyour products.
You know, you don't want tohave to call your product.
You know one thing over here inthe U?
S and then something else inEurope and something else in
Japan.
You know one thing over here inthe US and then something else
in Europe and something else inJapan.
You know if you can have aconsistent message.
It just helps to build up thatbrain recognition.
Speaker 1 (16:08):
And so that makes a lot of sense In terms of other
platforms, because I know that alot of people like to
generalize.
So if you're talking aboutputting your trademark or your
brand out on Etsy or an Amazon,are there any things that we
should keep an eye on in termsof that trademark?
Speaker 2 (16:25):
Yeah, if you're doing it on your own and you want to
put your brand out there, likeyou said, on these online
marketplaces, you just want tomake sure that you're not coming
too close to somebody else'strademark that's already out
there.
You can't just change oneletter and try to get it or get
around it.
Speaker 1 (16:43):
Uh estimate dollars.
Speaker 2 (16:45):
Yes, yes, yeah, it just doesn't work like that, and
so you know, if you want to geta trademark.
If you come up with a new wordthat's not in the english
language, you know that'susually a pretty good sign that
you're going to be able to get atrademark for that word.
Not guaranteed, of course, butyou know that's usually a good
way to come up with somethingthat won't be infringing
(17:05):
somebody else's trademark andyou should be able to get your
own trademark for it.
Speaker 1 (17:09):
That makes sense.
So, as we wrap out this episodeof Secure your Creation podcast
, what are some tips that youcan give them?
In reference to trademark,that's 100% without hesitation.
Every business should beconsidering.
Speaker 2 (17:23):
Yeah, if you're coming up with a new product
line or a new advertising line,make sure you do the trademark
search.
You're going to save yourself alot of headaches in the long
run by just conducting thatsearch, making sure that you're
not going to be infringinganybody else's trademarks and
that you're going to be able touse that mark as your own source
identifier.
Speaker 1 (17:42):
Very good, very good, and so, as we conclude the show
, you can always reach out toMario at MilanoIPcom, in which
he'll be.
You offer a consultation ofsome fashion, correct?
Speaker 2 (17:52):
Absolutely yeah.
Initial consultations arealways free.
Speaker 1 (17:56):
Awesome.
So again, our co-host here,milano.
Uh, mario Milano, excuse me, atMilano IP.
That's a lot of Milano's to bethrowing out, but you can reach
out to him or give him a calland he'll be happy to help you
with your trademark concerns orissues.
Until next time, mario, uh,we'll, we'll, we'll catch them
on the next side and secure yourcreations.
(18:16):
Thanks, greg, thank you,bye-bye now.
Popular Podcasts
Dateline NBC
Current and classic episodes, featuring compelling true-crime mysteries, powerful documentaries and in-depth investigations. Follow now to get the latest episodes of Dateline NBC completely free, or subscribe to Dateline Premium for ad-free listening and exclusive bonus content: DatelinePremium.com
Stuff You Should Know
If you've ever wanted to know about champagne, satanism, the Stonewall Uprising, chaos theory, LSD, El Nino, true crime and Rosa Parks, then look no further. Josh and Chuck have you covered.
Intentionally Disturbing
Join me on this podcast as I navigate the murky waters of human behavior, current events, and personal anecdotes through in-depth interviews with incredible people—all served with a generous helping of sarcasm and satire. After years as a forensic and clinical psychologist, I offer a unique interview style and a low tolerance for bullshit, quickly steering conversations toward depth and darkness. I honor the seriousness while also appreciating wit. I’m your guide through the twisted labyrinth of the human psyche, armed with dark humor and biting wit.