Trademarks

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You can also be notified just based on an algorithm. You know, if somebody files something that's similar to your trademark to trigger a notification to you. The interesting thing about the trademark office, at least from a government perspective, is it's the most government 2.0 out there in the sense that the data is publicly available and can be downloaded every single day.

Hello and welcome to Metamuse. Muse is a tool for deep work on iPad and Mac. This podcast isn't about Muse product, it's about the small team and the big ideas behind it. I'm Adam Wiggins here with my colleague, Mark GaN, Adam, and we're joined today by Josh of gbo Intellectual Property.

Thanks for having me guys.

And Josh, I understand you have four kids. How in the world do you manage life work balance with that and being a business owner?

That is incredibly difficult. I will say that the plan was maybe not to have as many kids initially, but these are the things that happen as life goes on. And one of the great benefits I have is that I get to work from home every day. So I don't have a commute into the office or home from the office. So I can wake up, get to work, and you know, when the kids get home from school, I can have a little time, but you know, I'm not wasting an hour, two hours a day commuting to and from an office in a big city. And having that time back is really the critical element, I think, in making it all work.

That's huge. Now, have you found some good techniques for communicating boundaries around your office slash Yeah, you're on a call or just need to focus especially, uh, you know, I don't know how old your kids are, but the younger they are the less they understand, you know, closed door means you can't come in.

Absolutely. So in my house, we actually have an office, you know, that I work from that's dedicated for me. And everybody understands that the door is closed. You know, you just don't come in. I'll come out when I'm ready. And luckily, you know, when you work from home and you talk about those boundaries with your kids every day, they really understand what you're doing. Now of course, there's gonna be a situation here or there where they run in and they probably shouldn't be, but the benefit of Covid is so many people have had to work from home and deal with that Now that it's not unusual for anybody to kind of see a kid running around on a call here and there. So it's almost an endearing quality these days. So I find it works pretty well and for the most part, you know, we're able to sort of separate in our house.

Absolutely. I almost wonder, yeah, every time my kids run in and jumps in front of the screen and everyone sees her, you know, it's obviously always like a very positive reaction, but I almost wonder if that's a positive reinforcement for what ultimately is not of good behavior, which is, you know, violating the boundary of the closed door or the workspace. But yeah, then you can't resist it. Everyone's just entertained to see an unexpected cute face pop up on the screen.

Yeah. And honestly, if you have kids, you appreciate what's going on and, and you understand what's going on. And yeah, I think that that's something that, you know, to me doesn't bother me if I'm talking to somebody in their kids' budget, I like to see what their life is like. I like to see that they're a human being too. Right. And I think that that humanizing aspect of things can even make relationships stronger between people. So I personally have no issue with it, and I think if somebody does, then they're probably got ice in their veins, you know, it's .

And tell us a little about your firm and your background.

Yeah, sure. So I started the law firm in 2008, in the middle of the great recession. I had a steady job, a good job at the time. I was two years outta law school and everybody thought I was absolutely crazy as 27 years old. And they're like, You're gonna start your own law firm. I mean, most people don't wanna hire a lawyer and it looks like he's 12 years old. And I definitely looked like I was 12 years old at the time, but I said, Look, I can offer pretty low cost service and I'm not gonna have any overhead and I want to really be out on my own. I've always wanted to have my own business. And basically started by using Google AdWords and going out there and putting up a website and slowly but surely got clients. And if you're just building brick by brick day by day, ultimately you build up some clients, you get some repeat and referral work, you continue to take in new work. And slowly but surely you grow a law firm. And now we've got 13 employees. We file around a thousand US trademarks every year, plus hundreds of trademarks in other countries around the world. So it's been quite a ride and just something we've built very methodically and slowly over the last 14 years.

Nicely done I feel with uh, services business, which I for a few years was a software consultant. And the common wisdom there and certainly reflected my experience was you get business through referrals, essentially through your network. And ideally clients that refer you to other ones, but they tend to be all word of mouth. But we found you because you have a good website. And I basically just Googled US trademark when we were thinking about filing for Muse. And now we have a multi-year business relationship. I don't know, is that unusual that we came in that way or is this kind of reflecting a new reality of the internet world, which is you can't actually essentially get.

Randos from the internet that come to hire you for your services?

Yeah, well yeah, absolutely. And that was a lot of the disbelief that I had amongst the legal community cuz lawyers, you know, they tend to be really reticent to adapt to new technologies and new techniques of advertising and things. And everyone said, Who are you gonna find online that's looking to hire a lawyer? Who are you gonna really get? And well obviously, you know, we've gotten some really good clients, you included. And one thing that we invested in very early on was search engine optimization. So you likely found us through an organic search and not necessarily an ad. I will say that in my experience, you know, the clients that come to us when we were doing the Google ads, which we don't really do anymore, were harder to kind of parse through all the leads and finding sort of the good ones in that bag of leads that would come in every day.

But because we have such a great organic presence and work really hard on that, we find that the clients we obtain from that presence tend to be really, you know, great clients. And we've built a business that way. I will say probably now to grow a service business, I certainly agree you need the referrals because it's very hard. You know, there's a lot of work that goes into building a new relationship with a new client that's found you online and has their own suspicions about you. And building that trust factor is really challenging. But if someone comes in through a referral and it's a warm referral, they have the trust already, they're like, oh this person has worked with Josh, they know his firm, they trust him, I'm gonna trust him. Right? And so there's a lot less work that has to be done to build up that relationship and that's really what's allowed us to grow is that warm referral business that we have.

One thing I noted right away on the embrace of technology side is you had a calendarly link or some kind of automated form for basically asking for your time, asking for a call. And I think, I'm not sure how common that is nowadays, very, very common in the tech industry, but this was what, three years ago or something like that. And so I was quite impressed by that and it seemed to signal that yeah, you were embracing technology to make lives easier for everyone. And that implied to me that we would be sort of compatible in terms of you know, working together, working relationship.

That's so interesting to me to hear that because I have gotten mixed feedback on that LY link over the years. Some people really hate it, they take it as an insult that you won't take the time to schedule a call with them. And I'm just shocked because I'm like, well how many emails do we need to trade? Define what time works for you and what time And this is just, you go in there and you just, you know. Yeah, I think that's the nice thing about working with people in tech is that you appreciate those tools and you know, we do offer a lot of our services at a flat rate. So we are incentivized as a law firm to be more efficient. And that is actually, you know, the reverse of the way a lot of law firms think. Cause a lot of law firms are like, well we wanna be as inefficient as possible and bill as many hours as we possibly can to get this task done. And we've always been designed of, we need to get this done as quickly and as good as we can, but we need to get it done as quickly as we can. When you're focused on that, you look at all the different tools that are available and you start to use them because they're really helpful in keeping your time down and letting you move through projects.

This is very interesting to me. So for the listeners context, Adam has sort of reached out and established the relationship with Josh, who I wasn't involved in that and I wasn't aware actually, Adam, that you had reached out sort of cold over the internet. And my experience with almost all lawyers and accountants in similar professional services firms is that they basically don't talk to you unless you have referral. They don't quite come out and say that, but that's really the mo of most folks. But I think it's notable that Josh and I think the law firm that we worked at, we both found through their online presence basically and reached out and then our accountant, we've known for like 10 years. That's a different case, but it is one little data point in the changing world of professional services.

Yeah, it's interesting to hear. I mean I think that it depends on the size of the professional services firm because a lot of the firms are set up to have these really significant overheads and they have a very developed client base that they're billing every year. And these are retainer clients and they have these very set budgets. So when they take on somebody new, that new person needs to have a certain budget in order for it to make sense for that firm to take on. And where we differ is we have a very low overhead structure and we're actually focused on serving a lot more diverse of a client base and let's say a hundred big clients a year. We're focused on serving a thousand smaller clients a year. And to us that's a great benefit because of one client for some reason leaves, we're not looking at having to lay people off or having a huge loss of revenue. You know, we still have the 999 other clients that year that are gonna be, you know, keeping us afloat and keeping the lights on and our people paid. And so when you're not reliant on these like large whale clients, then you are more apt to really want to take in, you know, new work every single day because you are reliant on more or less the volume.

We went through something exactly like that with our software consultancy, which is, we got some.

Bigger projects and a particular one big client and we had to staff up to serve their needs, but then when things changed with them out the project or whatever, and then suddenly we're scrambling around to find enough work to keep these folks fed. And so, yeah, I mean it's, of course, it's always the case that professional services and you know, it's kind of like a scaled up version of freelancing, which is feast and famine. That's that, right? But the more you can diversify and spread out a little bit, But yeah, you get that client that comes in and you know, basically is the whale as like exactly as you said. And it's, it's really compelling. That's how a lot of services businesses do what they do.

Oh, for sure. And I mean, you know, we had in the last two years, we had three or four of our largest clients get acquired. And when that happens, a lot of times you lose the trademark work because the business that's acquiring them is much larger and has their own lawyers already. And so, you know, we have to be prepared that even when we build up and work with a particular client and they become a larger client, they're eventually gonna leave. So you have to always kind of have what you call a farm system of clients you're developing and hopefully getting into the next big client to take the place of the one that will eventually leave for one reason, either through a sale of the company or they get so big that some other lawyer poaches the work or whatever it might be.

Yeah, and I wouldn't be surprised that even if you don't have outsize clients in terms of work, you probably have some clients that give you an outsized amount of referrals. I'd be curious if that's the case.

Yeah, you know, actually other lawyers are our best source of referrals because a lot of other lawyers don't have a specialty in trademark law. And they'll get a question from a client about a trademark. And there's this ethics role that applies to all lawyers that you can't do work for somebody unless you really feel competent to do it. And if you're not feeling competent to do it, you might have to charge your client to get competent. Whereas they could just call us and we could do something really quick and easy for their client, and the client gets great customer service, and at the end of the day, the lawyer doesn't lose their client because we're not looking to take, you know, somebody on for more than the trademark work. So when we start working with our lawyers and other law firms, they're like, Wow, this is great. We can send these things over Toban and they turn it around and get everything taken care of and the client's happy and they're staying with us for their other corporate work or whatever it might be. And so those law firms and lawyers tend to be our best referral source.

Well, that's certainly a benefit of the tight specialization that you have. And maybe that is a good transition into our topic today, which is trademarks. So maybe this is a slightly surprising one for our listeners who are used to, a lot of our focus tends to be on design product tools for thought research, things like that. But I, at least one of my goals with this podcast is really to document all of the aspects of building a business that Mark and I and all the others on the Muse team are going through here. And the trademark is one corner of that. But I've found a surprisingly intriguing and intellectually engaging one. And just in our conversations, Josh, just on the phone working through our case of getting our various trademarks filed, I've been just fascinated by the mechanics of it, even past what's necessary for the purpose of doing the project. So I hope we can share that with our audience here.

Yeah, absolutely. That's my every day .

Of course. I'd like to tell a little bit about the muse journey in our trademarking and why we were motivated on all that and so forth. But we always like to start really at the beginning, which is just definitional. What is a trademark?

Yeah, so a trademark is a source identifier, meaning that it identifies the source of goods or services. So if you see a Nike logo on a shoebox, you know that the shoes in there were made by Nike Ink, the corporation, and you know that the shoes have a certain quality about them and where they come from. And so trademarks, and many business owners are surprised to hear this, but trademarks and trademark law exist to protect the consumer, not the business owner. So the test of whether you ever have trademark infringement is whether consumers might be confused as to the source of the goods or services because the trademarks are so similar. And that is why Trademark Law exists in the United States. But yes, so a trademark is meant to identify what company is behind whatever product or service is being offered.

And I'll do a quick call back to our episode on brand where I spoke there about some historical examples and a notable one, here's Heinz, which actually started as a jarred pickle business later went to their, now what they're known for with ketchup. But the big innovation there was that you had these door-to-door salesman that would sell these canned foods, but you didn't know where it was from. That's the source that you're talking about there. And Hines came along and came up with the idea of, I'm gonna put my name on it in a very particular typeface in a very particular kind of recognizable color scheme, and I'm really gonna stand behind the quality on this and get people to trust, I guess trust me, trust, you know, Mr. Hines, but really they're trusting the brand. And that was maybe the birth of the modern concept of brand. But that pretty naturally leads into why you need trademarks in that circumstance, which is like, okay, if you built a bunch of trust around a label with a typeface and some colors, well that's pretty easy to duplicate. And so then legal protection to prevent that as sort of a form of, I guess, defrauding the consumer or tricking someone in a way that harms them and makes sense for the law to provide that protection.

Yeah, absolutely. You know, I've never heard that story before, but that is an amazing way to kind of paint the picture of why Trademark Law exists and how it helps protect consumers.

And just very broadly speaking, how do you think about when a business owner should register a trademark for one or more of their products?

So I'm gonna be completely biased because I'm a trademark attorney and this is how I make my living. But it should arguably be the first thing that someone does in connection with starting a business. And that's because if you have a name for your company or a name for your product or service, you should not start investing in that. You should not be creating logos around it. You shouldn't be buying signs, you shouldn't, you know, you shouldn't be building brand equity into it until you know that trademark is clear for you to use, meaning there's not any other conflicts. And you've got a trademark application filed, which gives you a priority date in that particular mark. Meaning if anybody else comes and tries to use the name or file for the name, they're all gonna be subject to your rights from the date you had filed that trademark application. So we typically, if we can get to a client early enough, we remind people that you wanna do this as sort of number one A on your list of things to do when you're starting a new company or starting a new product or service line.

So maybe you would lump it in with registering a domain name, setting up your C Corp or llc, some of those other just basic mechanics of getting a business started.

Absolutely. Especially, you know, if you're ever gonna spend a nickel on buying a domain, you know, you're not just getting it for 1299 cuz nobody else wants it, but you're actually investing a couple thousand dollars or whatever might be to buy domain. You really want to make sure that the name is clear, because if you buy a domain that somebody else may have a trademark registered around or a similar trademark register around, they would actually be able to come and take that domain from you potentially down the road. So just making sure that name is clear and also again, getting an application filed to set a priority date in place, absolutely critical to protecting yourself whenever you're setting all those things up.

And gimme the simplest possible case. I have a name that is very unambiguous, you know, maybe it's long, it contains my personal name, or something like that. No confusion with, you know, something that's, for example, a single English word will come to why that's challenging. You're in just one jurisdiction, let's say the US since you know that Well, what's the simple case in terms of like time and cost to get your trademark filed?

Yeah, sure. So depending on the service provider you use, the cost can vary pretty significantly. You know, you could go online as you mentioned, and find a lawyer like myself. There's other lawyers that now Hawk their services online as well. There's plenty of them. You could use a service like a legal Zoom, which is technically in most cases a non-legal service, meaning you're just, you know, using a software that people have created to kind of help you with the search and help you with the filing and you pay a fee for that. Or you can hire a really large institutional law firm, and depending on which path you go, your fee structure's gonna be a lot different. The way that we view ourselves in the market is that we've always tried to set ourselves up to provide the same style of service you're gonna get from a large institutional firm and the same knowhow, but do it at a rate in between what a non-legal service, like a legal Zoom charges, and what a large institutional firm charges that many times, as you know, priced out a small business owner.

So just to put numbers out there, we typically charge $950 to run a US trademark search, provide an opinion, provide consultation time, and then ultimately file the application. And in most cases, your filing fees are gonna be around 250 or $500 with the government. So a $1,500 budget is pretty sufficient in most cases. And whether it's our firm or some other small law firms, you probably find the prices to be pretty similar time-wise. Typically it takes about a week or two to run a trademark search properly so you can go online and do this yourself, you know, and there's a lot of information about, oh, go to this website and run a trademark search, or what have you. But those searches are very inconclusive because they only are looking for identical matches. And the thing that will cause the most problem for anybody that's trying to register a trademark is not an identical match, but something that's just sounds like your trademark or is slightly spelled a little bit differently than your trademark.

Because those are all things that can create a conflict. And so a professional search is gonna look for all those things and takes a little bit of time. So it typically takes our firm about three hours of staff time. There's some paralegal time and there's some attorney time in there, and it takes us that kind of time to get a search done. So again, it might take a week or so to get that turned around, but then shortly after that you can get an application filed, let's call it two or three weeks from the time you're engaging somebody to the time you get your application filed. Now, once the application is filed, this is where it's kind of a process these days. The United States Patent and Trademark Office, which is the government agency that processes these filings, they take about 10.

To even process your trademark application. Now it used to be three to four months, of course now it's 10, so you're gonna wait a really long time to get an answer. But once you get that answer, if they approve it and move the application forward to registration, typically around month 12 to month 14, you end up with the registration certificate and you're all set,

As you mentioned before, actually being in the line, having the application submitted itself is worth something that kind of reserves your place, so to speak. And furthermore, I hadn't realized this until we'd worked together, but I think there's these two different symbols you can, if you want, use together with your trademark. One is the little TM kind of, and one is the R. And tell me if I'm remembering this right, that the TM you could actually do as soon as you have filed the application and the R means it's been registered and accepted. Am I remembering that right?

Yeah, absolutely. A matter of fact, you can use the TM before you even file if you want to. So the TM stands for, Hey, I'm claiming a trademark, right? Of some kind. It might be what we call a common law, right? Meaning a right that is an unregistered, right? Or it could mean I've got a federal trademark application filed and I've got a pending registration so that TM can be thrown up at any time. The circled R can only be used once you actually get the registration back from the S pto. So again, a year plus down the road, people are often surprised to find that if you use that circled R before you receive the registration, that's actually a violation of federal law. No, they're not gonna arrest you and throw you in jail, but it can actually cause the refusal of your trademark application if the government finds that you're using that in their examination process. So you don't want to use it before you get the registration.

That's interesting. I feel like I've seen TM in places where almost certainly they've filed and gotten the registration. Is that just because they like the TM or maybe they've never filed or maybe I'm just misremembering it.

No, you're remembering it properly in all likelihood, because two things tend to happen. One folks set their marketing and forget it, so they never change to the Circle R. And that's fine too. Like you don't have to, I mean, it's not a requirement. You can still just use a tm. The other thing is for business that touches internationally, if you are registered in the United States, but let's say you also use the trademark in Europe or Australia or South Africa and you don't have the mark registered there yet, don't wanna use the circled R there yet either. So it's a little easier to keep just using the TM symbol if you're in jurisdictions where you haven't yet registered the marker still trying to register the mark. And sometimes that's why that happens too.

That makes sense.

Now those markers, I don't know how it is for others or maybe beyond the tech world or whatever, but I do think of them as being something that nowadays people would find a little corny. You know, if you stick that into your product marketing materials or whatever on your website that, I don't know, you sound kind of old school or full of yourself or something like that. Like we're not gonna put news TM for example, up on our website now, maybe a little more classy way would be at the bottom. You know, there's some gray text that says, you know, X is a registered trademark of dust and such corp. I don't know if your other clients feel that way, but I can't imagine myself using either of those symbols regardless of any trademark status we have.

It's so funny you say that because that is like one of the most polarizing questions that I think I get because there's people at either end of the spectrum and no one in the middle. So either people love putting the trademark symbols next to their name because I feel it makes 'em look official. Yeah. Or they hate it because I think it jumps it up and it's corny and there's no in between on that. You know, it's like either far right or far left. And so I personally like them. I mean, I'm a trademark attorney. I think they look great when I see them. And we advise clients to use them because there's a technicality to using these symbols, which is that when you use them, you're putting the public on notice that you're claiming a trademark, right? So if somebody does infringe on your trademark, that quote unquote notice has already been given, which could enhance damages and awards, should you, you know, have to sue somebody in federal court. So legally speaking, the advice is always to use them. I certainly understand where some folks feel like that is not the aesthetic that they're going for or the look that they're going for, in which case we advise them to just try to get it in somewhere. Like you say, maybe it's in the footer of your site instead of on the ma head or something like that.

And this reminds me, I feel like there's some branch of intellectual property or law and maybe it's trademarks or maybe it's something else where it's like fight it or lose it, and that if you don't contest other people infringing basically on your whatever ip, then you sort of lose the claim to it. So you can't come back 10 years later and say, Wait a minute, you know, I want this back. Are trademarks like that?

Yes, they are. So basically there's a policing requirement with a trademark in that if you don't police the marketplace and you don't police the federal register and other people register trademarks that are similar or same as yours, it will basically erode your rights over time. So the benefit of any kind of trademark registration is that you think of your trademark and then draw like a big circle around it, and you have a lot of elbow room that you can enforce, right? So if somebody uses a phonetically similar trademark, you can ask them to.

If somebody uses a spelling of your trademark that's very similar, but maybe, you know, not the same, you could ask them to stop. For example, let's say someone tries to register muy with a Y, and they're offering a similar service or product that you are, you could ask them to stop, but if you don't and you allow them to go forward and register their mark or use it, and a certain amount of time passes, typically about three to five years, you could be stopped from ever making that claim in the future. So once somebody uses a trademark for so long and you sleep on your rights, the law basically says you can't sleep on your rights for five or 10 years and show up until someone, they can't use their name. So you have this window in which you have to actually police it, and then if you don't police it and that person uses your name and somebody else uses a similar name, basically that circle we've drawn around, your trademark gets much, much smaller and smaller and smaller over time.

So your rights just ode. And they get to a point where maybe you can only do policing on a very, very narrow type of infringement that might occur, and not some of these sort of fringe cases, if you will. It becomes very common for clients to get a trademark registration certificate and kind of just be done. You know, they're just like, Ah, we got it. We're good. We'll see you later. We'll see you in five years when we gotta renew this thing. And that's fine. But the challenge with that is, is that over time, again, if they're not doing that policing work, the rights just won't be as broad. And to most companies, that may never matter until you have a problem, right? And then you're like, Ah. I always say it's like wearing a seatbelt. If you put the seatbelt on every day, hopefully you're not gonna have an accident, you know, ever. But when you do, you're really glad you put the seatbelt on every day. If you're not wearing a seatbelt and you just have an accident, you start to go through the windshield. There's no like going back in time and putting it on, you know, And that's kind of the same concept here. Once you start to have the accident and the problem and you haven't been doing all the preventative work, it can be really hard to kind of unwind that.

Well, One way we can anchor the discussion a little bit here is to talk a bit about MU's journey on this and kind of some of our motivations and some of the particular challenges. Josh, you mentioned that one of the things your firm does is this search. And indeed, when I came to you and said, You know, we'd like to register this word, and you basically said, before even doing the search, all right, you got a short English word. This is gonna be a challenge, but let us look into it for you. And you came back with a report that had a big red banner that basically said like high risk and listed a bunch of similar ones. Again, different spellings, some are older, some are newer, some were for big firms and so on. And indeed, I reinforced that for myself by just going to the US trademark search page.

We'll link that in the show notes. You can do this yourself and just search. And there's hundreds of entries. Now, many of them are defunct or businesses that aren't around anymore or whatever. But that seems to be true for almost any simple English word like this. There's a lot of businesses in the world, and people have registered for a long time, and some of these are active. And so you basically came back and we did a process of, okay, could we add a word? Could it be the muse canvas? Could it be something else to make this an easier process for us? But ultimately, we decided to go ahead and for there, I'll rewind even a little further back in time, which is Mark, you and I had taken a walk while we were on basically our very first team summit in Dublin, Ireland, which is when me, you and Yulia had gotten together to say, Okay, we think there's business potential here.

Do we wanna spin this research project we've been doing out of the lab? And indeed, we decided there, and the name used, I think you had come up with Mark, but it was kind of a placeholder for, you know, this research project. But he argued, you know, this is a good name. I think it captures a lot about the spirit of the project, and I'd like to use it if at all possible. And that includes obviously the defending against any risk that either we're stepping on the toes of someone else who's already in this space, or someone else that might come up behind us, and that's why we decided to go on this. What is now been a multi-year journey of filing this trademark in several different jurisdictions?

Yeah. Names have always been super important to me. I mean, there's a whole business reason, of course, why names matter. But for me, whenever I'm starting, or in the early days of a project or a library, there's an incredibly important milestone where you come up with a name that feels really good. You always start with something generic or goofy, or maybe you pick some character from a novel you just read or whatever, right? You got the kind of placeholder name. And we had that with Capstone a while back, which was a prototype that would eventually become used. But I remember quite vividly, I sat down at one point and thought from first principles, what should the name of this thing be? You know, it's a connote thinking and deliberateness, but have sort of this creative, not too mechanical feel. And I wrote down a whole list, and man Es really felt like the right name, but I knew it was gonna be tough. It was gonna be very tough to get a domain, and I assumed it was gonna be tough in terms of the V IP side, but I really wanted to have a good name both for the business and for the sort of psychological value of saying it for the next five years or whatever.

And I specifically didn't want to do something like M Canvas software apps that wasn't gonna cut it for me. So I'm really glad that we did try to pursue the single word.

Yeah, and there's always this pool between marketing and legal with any trademark. I deal with this a lot where from a marketing perspective, the single word muse, four letters, that's ideal, right? It's an easy to remember word. It's short, it's sweet. It's to the point from a trademark perspective, when you're trying to register a four letter word against millions of trademarks that have been filed before you, the chances that there's gonna be a completely clear path are pretty slim. And so that's where the challenge comes in between what's good for marketing versus what's good for legal. I always give people the data point that in 2021 there was 669,397 trademarks filed with the US pto, so nearly called almost 700,000. That's one year. You know, so you could just imagine going back now, we've filed more and more trademarks now than we ever had before for various reasons.

But you know, when you have this many trademarks getting filed every year and you're trying to get a four letter word registered, you've got a lot of potential complications and competition to worry about. The one thing I will always tell folks about name selection is that most great names didn't really mean much or wouldn't be great unless the company really built a great product or service behind it. I look at Nike for shoes, I don't think there's anything great about Nike. It's a four letter word, but it doesn't strike me as like a great brand name if I didn't know that there was a huge shoot company behind it. Same thing with Google. It's like, what does that even mean? You know? But,

And famously Google is a mathematics term,

You know, Google is where it comes from. Yeah, right.

But it's actually misspelled, you know, misspelling by one of their angel investors that, Yeah.

Yeah. So those are sometimes, you know, I do think people put a lot of value into names that really, sometimes they shouldn't until they actually build the brand equity into the name, and then that's when the value's there.

Yeah. Well maybe there's a mix there for me, getting the right name on a project, on a company, on whatever it is, as Mark said, it feels right. And then I, I am actually more motivated to invest myself in it and build that brand equity. Sure. You know, one theme on this podcast for certainly is that the motivations of the creators do matter a lot in making a great product. And so yeah, we probably could have made things easier for ourselves, you know, gone the route of, I don't know, you know, Miro was called Realtime board when they started. Could we have been called like Realtime canvas or something? But that just would not have inspired me.

That's totally fair and very important. There's no question.

Now, one element of the name you've mentioned a few times here is the overlap, or I guess it's the risk of confusion for consumers. And one thing that really struck me in one of our early calls is you talked about the standard is different in different industries. So I think this is pretty obvious for businesses that are clearly local. So for example, here in Berlin for a few years, it shut down, but there was a restaurant near my house called Muse, and presumably they weren't worried about even another restaurant in another city with that same name, for example. And similarly that any kind of local business you're really worried about the people who are near enough to you to know who you are, do business with, you transact a part of the nature of technology business. You know, you put an app in the Apple app store and you're instantly available in almost every country in the world where you put something on the internet and you're instantly available everywhere. So your sort of little tiny just got started product is now essentially competing in the global name space. So that makes things way harder, although perhaps that's balanced out by, it seems, and you tell me if I'm remembering this right, but it seems like that various trademark authorities in different countries know that and actually apply a different standard to, for example, a piece of software or an app than they would to say fashion. Do I remember that correctly?

Yeah, for the most part. So one of the things we talk a lot about when we're looking at how clear a particular trademark is, is how diluted is that word in a particular industry as well. So the thing about clothing brands or fashion brands is that that is one category of trademarks that probably receives more applications than any other in any given year because of the low bar to start a clothing company. I mean, you know, you or I could go online and theoretically start a clothing company in 20 minutes. The bar to starting a software company and having an actual software product to sell is much higher. So you have fewer applications coming around that than you might the clothing category. So if you look at a trademark search that you would do around a fashion brand, you're probably gonna find, let's say a couple dozen trademarks that might look really similar, but yours is just different enough that you can kind of thread that needle between every other one of them, because so many already coexist in that space. Whereas if you come into a category that's less trafficked and there's only one other name that's similar to yours, the government, at least in the US PTOs case, you know, when they're doing a review of your trademark application, they're gonna have a lot harder time approving your application. If there's only one other trademark in your space uses a similar name, as opposed to having 20 other trademarks in your space that might have a similar name.

And what is the standard for customer confusion? So this is certainly a lot of what we've done in crafting our various applications is describing what the software is, or I suppose, I guess what the product is, but how that relates to the trademark. Because it seems fairly obvious to me that, for example, I don't know, there's a web browser, or at least was one called Mosaic, and there's also an investment firm called Mosaic. And actually I've seen other companies and open source projects and things, it's, it's just like, that's a good name. A lot of people have used it, but to me, there's no risk of confusion between a tech investment firm and a web browser. But you could say they're both in the software business.

Yeah.

Where do you draw the line and what's the standard for differentiating there?

And that's what makes Trademark law challenging and exciting at the same time, which is at, there's normally not a case that's been decided on the particular point that you're looking at. Like you said, would a investment firm and a software browser be similar? I mean, the instinct that I have would be, No, they wouldn't be. But then you get in other examples and you're like, Well, what about this and this? And you're like, Well, that's closer to the line, right? And so there's this sort of imaginary line that we're dealing with is to, when does something get too close to it? And that is why there's litigation in this world, right? That is why there's lawsuits, because people disagree about what the line is and how close you can come to it. I also love the examples of, you know, you have Delta Airlines and you have Delta Faucets, you know, Faucet Maker, you have Dove soap and Dove Chocolate.

You know, you can reuse names in different industries, but then the question becomes, you know, how close can you get? One example that I can think of is beer, wine and spirits are typically considered to be very closely related from a trademark analysis. Although from a consumer perspective, if you're buying these products, you're likely in different aisles in the supermarket or in whatever store you're buying the product, right? You don't normally buy a vodka off of the same shelf you're buying a Pinot noir from. And so the question is, why couldn't a wine in a spirit have maybe similar, the same name and coexist peacefully in the marketplace? I think they probably could, but there's a lot of case law and a lot of decisions that have been made out there that says, No, these are all very highly related things and you can't coexist. So sometimes you have a developed area of law because people have litigated it, and other times you're in industries where people just haven't litigated it yet. And there's not really a clear answer to the question of whether or not these two things are considered too close.

And is there any underlying statute here, or is it just pure case law?

Well, the underlying statute in the United States is called the Land Ham Act. If you wanna look it up, it's L A N A M and then Land Ham Act. That's where it kind of talks about the fact that if consumers are confused, you'd have trademark infringement. So if you're litigating a case, one of the things you typically do is you convene a poll or a study and you actually go out and scientifically interview consumers and see if there's any confusion. And these things can cost like 50 to a hundred thousand dollars to run. So I mean, they're really expensive type of project, but you know, large corporations do them when they're litigating these cases. So you have that baseline statute. But then as to your point, the case law is what develops kind of these finer points, which is are beer and wine too close? Is a clothing brand and a jewelry brand too close? You know, and all these types of questions that get asked, this is where the case law sort of develops it and tries to provide some guidelines as time goes on.

I wonder if the software industry is harder or maybe just more confusing from a regulator perspective because it is still new enough. That's something that's often not well understood by people who are not in the industry. I certainly run into this all the time with just explaining what I do to friends and family, very smart, educated people. But it's just, if you're not pretty deep in the software world, you may not know the difference between certain categories of productivity software versus B2B SAS versus infrastructure versus medical software versus something else. So I wonder how much, you know, obviously the folks working in the trademark office, they're dealing with all varieties of business. And if you come in and say, Well, no, you know, this piece of software is an app store and this other piece of software that I'm registering for is a health tracker, and those are just completely different and there's no risk of confusion, but maybe to the person in the office that it's sort of like hard to tell the difference.

Yeah. So there actually is case law out there that talks about that two.

Our products could certainly coexist with the same name in different industries. So there's at least a recognition in the law that just because it's a software doesn't mean that you're in the same industry. Cuz at one point that was the problem that was occurring is that everybody was lumping software into the same category.

No, that's actually a really good point. Which is the software industry. I mean we say that all the time we talk about being in the software, but like it's really software in the internet is part of everything now. Yeah. So it isn't exactly an industry. There are practitioners like us that have skills around it, have built careers in technology broadly. But really when you talk about industry in the sense of serving a particular set of customers needs, software is a means to an end. It's not a category of thing a customers buying.

You're a hundred percent right. And and the law started to recognize that. But where there's still a challenge, and this is why you'd sometimes have what's called expert testimony at a trial, is that understanding the nuance sometimes between what is really related and what is not is really, really hard for people that are not in the industry to get their heads around, right? And so you might have a software that tracks health data and then you might have another software that tracks or that is related to like a hospital system and how it's tracking patient data and the government thinks that those are related, but one's really a consumer product and one's a product for a hospital. And those are again, two very different channels of trade we would call it. So you have those things that can be really hard for a trademark office or a court to really get into the finer details and lines if they're not super obvious. And again, that's where you get expert testimony and things like that involved. But that is also why people run into trademark problems because there is still this really difficult way of trying to parse out what industry are you really in once you're in that software category.

Yeah. And then presumably that's also part of your job is to explain it to bridge the gap. You know, we went through this process which is I'm explaining what it is we do. And by the way, early stage products, especially things that come out of a research world like us, like is actually hard to even explain what it is that you do in the beginning. This is part of the nature of kind of, yeah, early stage work generally as you're developing a way to talk about what it is you're doing, you're pursuing an intuition to a product vision and you have a message or a position or whatever you wanna call that early on, but it's often kind of wrong and you evolve it over time as you better understand the problem you're solving for customers. But then your job is to listen to this early very raw description. We're still figuring it out as we go along and then translate that into something that a fully non-software world person could hopefully make sense of. So certainly, you know, we can't talk about tools for thought in our application. That's not gonna make sense to someone here. You need to talk very about, you know, really well established patterns and maybe also about the customer, who's the person that actually buys this because maybe that's one of the more relevant things here.

We have inside jokes as trademark attorneys, you know, and one of the biggest ones is when you're talking to a client and they're throwing all the industry jargon at you to try to explain what they're doing. And you're just like, you spend 20 minutes listening to somebody and you have absolutely no clue what product or service they're providing to people. And I will be on the phone with someone, I will be kindly as I can trying to say to them, Look, you gotta stop using the jargon and just explain to me like I'm an idiot. You know what this is? Because I have to be able to really get my head around what you're doing to write the language for the trademark application. And I will actually tell you this, I kind of use it as a test when I'm working with a client like our clients that end up running the best businesses can articulate very clearly to someone not in their industry, uh, me, what it is that they're doing.

And folks that just spill the jargon out and can't get away from that I find really struggle because I just don't think that they relate to folks that are not doing that one very specific thing that they're doing. And that becomes a problem for them at some point in their business. And that's just something I've noticed over the years. I'll have younger associates at our firm call me up and say, I just got off phone with this client and I have no idea what they were saying. They didn't wanna interject and tell the client they didn't understand. And part of my training is always you have to do that because that is our job is to understand. And if they're saying it in a way that you don't understand, like you just have to be very blunt about that.

Yeah, well that's something I believe in in general, which is I always take as inspiration some of these great scientists who are able to explain things like electromagnetism or relativity or something like that in a way that is accessible to potentially anyone, whether or not you have their training. Now obviously you're leaving out a lot of important detail that people in the field need to be able to actually work with it. Just the high level conceptual pieces. But it's something I've always struggled with in my career. Music is probably one of the easier ones. In some cases, something like Heroku, that was infrastructure software where if you're a web developer and you need this product, you understand what I'm saying? And I do lean on jargon cuz that's the easiest thing when I'm speaking to my customer cuz they want to hear the jargon because they're in the field and they know it. And this is a good way to communicate.

We love jargon as lawyers too. We have our own language. Yeah, yeah. And clients will complain about that too. Like, I don't know what you're talking about. You know, it's, Yeah, yeah, for

Sure. Yeah. Jargon gets a bad name sometimes, but I think of it as a highly efficient and.

Precise way to communicate between people who are in a very specific Yeah. Line of work or even endeavoring under a very specific project. Yes. And that can be extremely useful and valuable versus the more like kind of general purpose explainer. But if you cannot bridge the gap to the general purpose explainer, I think that's a weak point that's worth addressing, just kind of philosophically in life in general.

Completely agree. That's a great way of putting it.

Now one thing you hinted at earlier that I found to be an interesting part of the process is just putting in the trademark application triggers. I don't know the right way to put it, but it goes into a public database. This is something where anyone who wants to get notified, I don't know how this system works exactly, will find out that you've filed this application. And actually, I quite liked this because at the beginning when we were looking at this very high risk word to register, what I didn't want to do is embark on a multi-year, potentially somewhat expensive in terms of attorney fees journey, just to get to find out that there's some major firm that is in our field or very close to it, that basically is gonna be really upset that we're doing this and we might not discover that until further along in our business.

And so I liked the idea that by just filing the application, we would bring people out of the woodwork who would object to us using this name, and we could look at who those people were and kind of make our own judgements of, oh, okay, this is really worrying, versus, hmm, I don't know this one, it's a brand new startup. They're kind of not even really working on the same thing. Who knows if they'll leave and be around in a few years? Okay. I'm pretty comfortable with that risk. Can you tell me about how that kind of notification system works?

Yeah, sure. And it's different country by country. So for example, in the United States, when you file a trademark application, no one's ever gonna notify another party that you might be in conflict with. The only thing that will happen is the US Patent Trademark Office might actually deny your application because of these other trademarks, but they're never gonna notify these other folks. What you can do though, in the US, and there's plenty of software options for this, is that you can set up a watching service so that any time your trademark is used as a reason to deny a new application, you can be notified. You can also be notified just based on an algorithm. You know, if somebody files something that's similar to your trademark to trigger a notification to you. The interesting thing about the trademark office, at least from a government perspective, is it's the most government 2.0 out there in the sense that the data is publicly available and can be downloaded every single day.

We actually have a section of our website that you can go to and it pulls every day from the trademark database filings from big companies, celebrities, sports figures. So if you're curious to see what trademarks LeBron James owns, you can come to our website and see as of today what trademarks he's filed and owns, you know, with u s pto. And we have a backend, basically like API that goes in and pulls that data every day. So you have a bunch of software companies that have taken advantage of this data that's available and can push these notifications to you. Like one of the services we use, I get an email on any client we're monitoring their trademark on every month that shows me what trademarks have been filed lately that might be too close to theirs. And then I can go through and determine, of course the algorithm pulls things that aren't relevant, but I can go through then and determine what things the client should be aware of and notify them and see if they wanna take any action.

So that data that's out there is really valuable. And like you said, you actually have a unique view on it, Adam, because most of our clients are very scared that somebody's gonna see this and send them a letter. You are more like welcoming it and saying, Hey, this would be great if we can get any objections out of the way. And so that's a very refreshing way to look at it. But a lot of people are actually scared of that process and really get nervous if they get a letter. But to your point, most of the time getting letters is the start of a conversation. It's not the start of a lawsuit or something like that. Now the difference here is where you are in the world. So if you go to Europe or the uk, when they review a trademark application, they don't just refuse your application.

Matter of fact, they won't. They'll just tell you, Hey, we saw that there's a couple other trademarks that are similar to yours, and we're gonna notify those owners about your application directly, and they'll have an opportunity to lodge an objection. And if they lodge an objection, then that stops your application. But if they don't, we'll register it. So in those countries, it becomes the onus of the trademark owner to actually spend time and money to oppose an application they get notified about by the trademark office. So it's a really interesting and very different fundamental process, and it's here in the United States. But that is again, yes, you're right, by filing an application. That's how you will draw fire is by one of those two ways.

You know, I guess this comes from the, or my perspective on this comes from the thinking of general, you know, startup or early stage or risky ventures, which is your goal is to kind of de-risk, to use some jargon, de-risk some, you know, the biggest questions and the biggest things you're worried about. A lot of times that's the technology, but it might also be the market.

Part of your job as the creator or founder or whatever is to sort the list of things that would be catastrophic. You know, for your business. I either fundamental assumptions and de-risk those as early as you can. You wanna find out if it's gonna work before you do a deeper investment. And so for me, I knew the muse because it's this short English word could be tricky. So before we spent a lot of time investing in brand equity as you called it earlier. I wanted to know how likely was it that two years on we would need to like do this big rebrand. And so there's always a risk of that I suppose. But to me it created more confidence to basically send the the mind seeking robot out into the minefield and see what explosions happened, right? That created more comfort for me to step out into the minefield.

And you've seen the explosions at this point, right? And you know what you're dealing with and there is a lot more certainty around where you are with the name and what the path forward looks like. And I think that that is something that not only is valuable to you but would be valuable to investors in your business are eventually an acquirer of the business, right? So I always say if you're going to use a name, file the trademark applications because people will get a search back and there'll be some trepidation and say, I see risk here, what do I do with this risk? And I'll say to them, Well you have two options. You can change the name and try to get a lower risk situation. Or if you're gonna use the name we file the application and be aggressive in about trying to acquire the registration. Because once you acquire the registration, you make it much, much more difficult for somebody to challenge you. And especially you make it almost impossible for someone to challenge you once you get out to three or five years down the road of having this registration because of the way that the law works. So absolutely, even though there's risk going out and securing and doing everything you can to secure registrations actually lowers risk over time. And that's why you do it. And I think you articulate that great in your example and how you think about it.

One other note here is that I do really think of this as a defensive activity. I certainly in no world wanna be in the business of suing anyone over their name being too similar to ours. But what I am keenly aware of is it is the reality of being on the internet in this day and age that when things seem to be a success, people copy them. It's software is in some ways, I don't wanna say it's easy to copy, but let's say in some ways it's easier to do that perhaps even fairly anonymously. And I've seen lots of great businesses and great products that have to deal with copycats or in some cases wholesale copying of their website or other things like that. And it's harder to fight back against that. So for me it's very much of a defensive thing and that makes me think to some degree of other kinds of intellectual property.

And so software patents, which are a very contentious topic for software engineers, but nevertheless are a thing that exist. And you look at companies like say Google or Apple or Microsoft, they have these huge patent portfolios, but as near as I can tell, they mainly use it as kind of a mutually assured destruction style deterrence, which is, you know, because Microsoft has such a huge portfolio of patents, Google's not gonna sue them over that and vice versa because they could then go into some cross suing with that. And it's basically to everyone's benefit just to kind of hold their territory unless there is a truly egregious violation.

Yeah, and just to add onto that, Adam, I think the one important thing about the defensive nature of trademarks, especially in the software business, would be the platforms that you go on to distribute your software. So for example, the app store, we had a client recently who, you know, we have trademarks registered for them in US, Europe, Australia, some other countries, and they found somebody in the app store that was basically using their name, okay. And had an app out under their name. And the problem was is the app wasn't really directly competing with them, it was sort of ancillary thing. It was kind of one of these question mark situations as to whether or not it was really an infringement of their trademark. But because we owned a trademark registration, all these jurisdictions, we could go back and basically tell the app store, No, no, no, you can't let this other app use our client's trademark on your platform.

We think it's too close. And you know, Apple's got like a quasi-judicial system, it's not really that great, but sometimes it works. And in this case it worked, in which case we were able to convince the other app owner that, Hey look, you're gonna have a legal problem if you continue to use this name on the app store. And we were able to get that name back and now that's like our clients username and all these other countries where they needed it. So just, again, you're not gonna get into federal litigation over that necessarily, but you're gonna be able to use the registration to kind of elbow your way into user names and different things you need on third party platforms.

Now I know in the world of patents there's this issue of patent trolling. Is that a thing in trademarks or is that just not as much of an issue?

Not as much of an issue because patent trolling and the claims in patents, they tend to be a lot sort of more theoretical in nature. And as Adam was just saying, like you can have this like mutually assured destruction thing where like, yeah, you come after me for this, I'm coming after you for that and you tie each other up in litigation for years and you end up sending a bunch of lawyers kids to college, you know, and stuff like that. So you know, companies tend to be dissuaded from that type of litigation at some point. But yeah, with trademarks, in order to have a right in a trademark and to be able to enforce the trademark, you actually have to be using it in the marketplace. So you can't just go and register a name. You actually have to be using the name for the government to grant the registration.

And if you stop using it, somebody else can cancel your registration on grounds of abandonment. Whereas a patent's just good for however many years, right? And so it's a big difference in the way that the rights are created and ultimately how the rights are maintained over time. So we normally don't have a troll issue. We have people that get like overly aggressive in enforcement, meaning that like two very common examples would be Monster Energy, the Energy drink company, if you file a trademark application includes the word monster, you are probably gonna hear from them. Cause they have registrations on Monster from everything from clothing to jewelry to energy drinks, and every other product or service you could probably think of. And they do a ton of policing around that, which you know, a lot of people would argue is what we call trademark bullying. Because they're basically saying like this word monster, somehow they own it in every space. And you know, a lot of people just don't agree with that. So you have instances like that, but that is sort of what you're more or less contending with, not necessarily like a troll, like a patent.

Makes sense.

I opened up the, what I see is called the GN Trademark Library, tm

, you got the TM up there for sure.

, and you have quite a long list of yeah, bands and sports folks and companies and so on. It's pretty interesting to click through this. Of course I had to click on Apple and they have looks like over a thousand in here, which in some ways almost seems low in some ways. But I'm actually reminded that the kind of notifications of new trademarks actually is also a way that sometimes journalists who are trying to get an early scoop on what's Apple doing or what's Google doing, what some of these big tech companies is by seeing that they have filed an application for a new trademark and then inferring what the product might be from the name, which is an interesting exercise. I'm also noticing quite a lot of these are sort of logo number 103 or something like that. Which does lead me to another question, which is basically the difference between logos and words in trademark.

Yes. So when you are filing a trademark application, typically what we tell clients is you wanna first protect your words. Because if you file a trademark application from use, you know your name, you can then use it in any font, any logo, any capitalization that you want. You just say, I just want the word registered basically. Because sometimes there's this gravitation to clients that will call us and they'll say, Hey, I have this name in this logo, I wanna register it. And they think they'll just file in one application and you can, But then what you've done is you've blocked yourself in to having to use that logo in order to maintain that registration. You know, we were just talking a minute ago about how you have to continue to use the trademark in order for the registration remain valid. Well if you register a name and a logo together and then all of a sudden you change the logo five years later, your registration's no longer valid or enforceable, you have to refile and that restarts that whole process or restarts all the time. You know that three to five year period we're talking about to get more certainty on keeping people from making a claim against you and all those kinds of things. So the very first trademark you wanna file is typically just on your name itself. Then you would file other applications for logos and slogans and things like that separately so that you keep those assets separate. So if any of them change, they're ultimately not affecting your name.

So now I'm curious on this trademark, did you get Trademark Library, generally Orban Trademark Library?

Well, for the trademark application that we filed on this, we did file for the GN trademark library. Okay. And that's because Trademark Library on its own arguably has some distinctiveness concerns. , you know, we talked earlier about wanting to have a really distinct trademark. Well yeah, this is obviously a project we had. This is not something we really make money on. This is kind of a side thing that we do. So we wanted to call it something that would make sense and people would understand what it was. So we chose trademark library, and if you look at our trademark registration on this, the government, US PTO made us put a statement in the application that we're not claiming an exclusive right to use trademark library apart from the market shown meaning that it's.

Distinct enough and we arguably might not be able to keep other people from using that phrase at this time. Now this is something we launched in 2020. Once we get to 2025, which would be five years after launch, we would be able to reapply for this and claim that because we've been using this exclusively so long, we should now get the rights on trademark library pretty much exclusively from there. So we will presuming that that's what happens. But yeah, this was, you know, a name that did not have the elements of uniqueness that one might really want if you were coming up with a super unique brand name. It was just something we thought was kind of cute and catchy and was an easy solution to what to call it, .

Yeah. So I guess one question I think that I asked you, Josh and some of our early calls is, okay, part of being on the internet and being in the app store is near global availability. And so as far as I know, there's no un level trademarks. And so then you need to make a call where to register. And I think some are fairly obvious for us like the US because that's where our business is located and where quite a lot of our customers are located. But how do you recommend to clients typically that they make a call on where to register and how much to be concerned about global coverage, some of which may overlap, right? You can register in an individually you country or the EU as an overall. So there's a lot to think about there.

There absolutely is. I mean, it very much depends business to business. And what we always remind clients is that trademarks are jurisdictional nature, which means that you can have rights in the us you don't have rights anywhere else. You could have rights in the uk, you don't have rights anywhere else. So where do you want your rights to apply? So pretty much around the world, you have to file on each individual country that you would like rights. The one major exception being the European Union where you can file an EU trademark that covers you in every EU country. There's some nuance to maybe wanting to file in some EU countries directly, especially if you're really heavily invested in those particular countries. But for the most part, the EU registration will be just fine. Then it becomes a question of budget. So if your company is operating in 20 countries around the world, or you know, has downloads in 20 countries around the world, ideally you register in all those countries, but there's a cost to doing that.

And so you sometimes have to figure out, well, what's the cost of doing that versus what's the cost of doing it in the 10 countries that we have the most downloaded, right? Or the most customers in? And it becomes just a very practical question at that point. So we just tell our clients, Look, you will price this out for you. And you have to kind of figure out based on, you know, what the government fees are and the legal fees are and file in all these countries, is this something that's acceptable to your company or do we need to get this budget down? And then we kind of strategically figure it out from there. The other good news is it's not just an all or nothing thing. You can do five countries this year and five countries next year. You know, you don't have to do 'em all at once. And as your company grows and as your budgets grow, you can continue to grow your trademark portfolio from there.

Now, can you use trademarks that you've established in your initial jurisdiction as sort of evidence as you go to other jurisdictions? In the case of software, which is quasi global,

It's a real challenge because coming from the us, you know, obviously I'm based in the US , a lot of folks here have a very like world domination perspective that, well, I have a US trademark, doesn't that apply everywhere else? And the answer's always no . Yeah, we're not that special. And so the idea that you have used in the United States and then you go over to Australia, like they don't care. It doesn't protect you down there. What might protect you is if you've used it a little bit in Australia too, and you just haven't registered it, but every country's got its own borders and its own laws. And that's something that folks in your industry have to be very cognizant of. Is this name not only clear to use in my home country and where I'm based out of, but is it gonna be clear to use in all the places that I really want to be in?

And look, there's never gonna probably be a hundred percent place where you can get a hundred countries without a problem. Even Apple computer has problems with its trademarks. You can Google about all the trouble they had in China and other places, but you know, you're always gonna have trouble somewhere. But the idea is, can we get this in enough places that, you know, we feel we kind hit a critical point that we're gonna be pretty good and the last few we gotta chase around are just gonna be that. And that's how you kind of build a global brand as you really try to register it and as many different places as you possibly can that you're gonna do business.

Interesting. So have you had cases where you had clean trademarks in most jurisdictions, but in, I don't know, Australia, there's been some company working there for 10 years that happens to do some special software thing and so you can't, And then what do you do? Do you like not list it in the Australian app store, or do you block Australian, its don't allow Australian credit cards? How does that work?

Well, it depends on the client, but certainly have had that issue. I mean, some clients will say, Well, we're gonna just move forward with this name and if somebody objects to it, we'll deal with it then. Then you have other clients who will take the steps to purposefully not put it in an app store or make it available to customers in a certain country. You know, like we have clients that if somebody tries to purchase a product, you know, might not be a software, but let's just say it's a shirt, you know, and they're based out of the uk, well we won't ship to the UK because that would be a violation of somebody else's trademark. Hmm. So yeah, you can certainly do that in today's world where you basically have to say, Hey look, we're not gonna operate in this country. We're not gonna ship product to this country. Not gonna allow access to our website from this country. And that's not ideal, but that is a solution to working around a trademark problem.

Wouldn't another one be to use a different name within that country.

Yeah. And we have those discussions with clients. I mean, as you can imagine, that is something that a lot of

People, That sounds like a huge hassle.

It's a huge hassle, right? Yeah, exactly. And nobody wants to hear that. Everyone's like, Oh my God, like is it? But we've actually had clients do that, especially more or less clients that have operated overseas trying to come to the US and when they come to us to get the US market cleared, they find a problem here and they had no problem overseas. Well then they have a decision to make, you know, they don't really have any brand equity here yet. Nobody really knows who they are, but they have a good product or good service and they wanna access the US market. Well maybe they're gonna change the name over here. And I've seen that happen.

Yeah, I can imagine that being part of localization, which is, especially for a package product or something, it's pretty common. You know, it's a drink and you need different, you know, nutrition label on the back, depending on what the market is. You're doing that work to print the different label anyways. So maybe it feels like not such a big deal, but certainly it would be confusing for people working at the company, customer support people. I don't know, I just, Sounds bad.

Oh, it's rough. But you know, the other thing that happens is sometimes you go to translate your word into a local dialect or language and you realize it's offensive in that language, right? And so all of a sudden something was mundane here in the US and you go over to China somewhere else and it's like, whoa, we don't wanna use that brand name over there because it's gonna be a problem. So sometimes you even have that kind of issue developed. So it really depends when you're starting a company, if you're really gonna be global fast, you want to consider all these different things. You might wanna run clearance searches in multiple countries. You might wanna understand what the translation issues are in different countries and things like that. But then you have some clients and customers that are just growing organically and they start in one place and then they just look to other countries because that's a natural growth place. And that's when they can run into more problems down the road. Cause they weren't thinking about it initially. And either way, you know, there's not a right or wrong answer, but these are just the problems you sometimes run into.

And I'm curious, mechanically, do countries tend to look like the US where it I, I don't know, costs a few thousand dollars and takes a year or two? Or are there some that are really slick and it goes really fast? Or are there others that are just impossible to deal with?

Yes, . So we basically have such a difference in how things work. So in the us, like I talked about, you gotta figure about a year and change to get a trademark registered in the uk it might be three or four months right now. I mean, it's fast, fast trademark speaking. In Canada, we're up to three years of waiting, believe it or not, to get a response from the trademark office. I have filed things three years ago and I have clients that like, just don't believe me. They're like, How can this take three years to even get a response? And I'll have to send them like all the blog posts that our lawyers have done about it. Just so that, you know, it's like unbelievable. And then you have jurisdictions like China, which you know, seem to basically refuse almost any application that we ever file for a US client because they're a US based business. And then you have to deal with the rigamarole over there. Sure. So yeah, every jurisdiction has its own kind of uniqueness and certainly some are quicker and easier than others. I'll give the European countries a lot, lot of credit. They seem to have this figured out the most, as far as, you know, our experience has been concerned and sort of the slickness and easiness of the process, but yet it varies very much country by country.

Yeah. Well I feel this is a reflection of a larger shift. You know, we talk about making app, some single developer can put something together and have it in the app store and be starting a side business or some solopreneur thing very quickly. And I think in a not too distant past, going into another country as a new market would've been this huge step for any business. Certainly a retail store or something like that. We're gonna expand from the US into Canada, or we're gonna expand from Germany into France was a big, big deal. And now the internet with app stores and just an increasingly global culture, you know, people can use products that are only available in English, for example. The ability to buy things with credit cards and PayPal and other means is much better than it has been before. So the world is getting closer together. You know, this is globalization, whether you are a fan or not, it's happening. And so that the implication there is, yeah, for a small business owner, yeah, that single solo developer that is putting an app together, but now they're thinking about trademark jurisdictions and dozens of countries. It's an interesting collision of maybe an older, less connected world in a newer, increasingly connected world.

Very well put, Adam. I completely agree with that. And I think that's a challenge that you know, we'll just continue to face as time goes on in the world gets smaller and smaller, there's no question.

Well, let's wrap it there. Thanks everyone for listening. If you have feedback, write us on Twitter at meap HQ or write us on email hello and meap.com. And Josh, thanks for taking us on this journey to help us secure the rights to this name that we love so much.

Absolutely. And thank you for having me. Thank you for entrusting me with your trademark and look forward to many conversations to come.