Your Company May Be Unprotected Without a Trademark!

Hey, everybody, Mark Kohler here we are live recording this week's episode of the Main Street Business podcast on trademarks. You could use a trademark. Trust me, this could be a big deal. You want to be a big deal? We're going to help you be a big deal with my amazing co host, Matt Sorenson.

Yeah, if you don't have a trademark, who are you even? I mean, are you even legit? So we'll be talking about when to use a trademark, when it makes sense, how to do it, process fees, timeline. It's all in this week's episode of the Main Street Business podcast.

What's that song? You ain't nothing until you got an llc.

That's Nicki Minaj.

Okay, well, you're not. You ain't nothing until you got a trademark. Welcome, everybody, to this week's episode of the Main Street Business podcast with yours truly, Mark Kohler and the amazing co host, Matt. Oh, Sorensen. Should I say co host? That. Did that sound okay?

That sounds good to me. I mean, I'm with you co hosts.

Just everybody. I. I'm Batman and Matt is Robin. Let's just make sure that we're clear about that.

Doesn't seem right. Doesn't seem right. Well, thanks, everyone, for being here. I'm actually loving this topic. Trademarks is what we're talking about today, and it's so important. We get a lot of questions on it. Some people like, who cares? Do I need a trademark? Well, we're going to answer that for you today, and some of you might be like, what does that cost? How long does it take? I mean, we're going to hit all these questions.

I love. Okay, let's just give a practical example for those watching on YouTube today. I'm not holding a Twinkie. That was last week's episode on bankruptcy and how Twinkie survived bankruptcy and came back to life and is now worth billions. Look at this, what I'm holding right now for those on YouTube. This is my signature drink because I'm a rock star tax lawyer. This is my rock star recovery. Zero sugar, zero carb, 10 calories. Pure love. Just the right amount of. What is it? B vitamins, caffeine, electric. I mean, this is so healthy for you. Anyway, would I want to trademark this? I mean, let's say someone created a rockstar drink 20 years ago, but they never trademarked it, and now Rockstar says, oh, we got a whole line of drinks. We're going to be the rock star of drinks. Well, who gets to use the name the Yahoo that started a Rockstar drink 20 years ago, or the Rockstar company, that's a billion dollar operation now of Rockstar Drinks. Well, we are going to answer that and more today on today's show. Good stuff.

And you know what the nice thing about this episode is this week we actually have a guest on Trademarks that knows this stuff better than Mark and I do and don't just have to listen to us.

That doesn't hurt. Yeah.

So we'll be bringing him on. That's Jared Burgessen. He's one of our amazing attorneys at Kick US Lawyers, does the trademark filings and so knows a lot. And there's. There's a lot to learn here. But it's for you as the business owner, we want to just let you know, do you freaking need it or not? And how to get it done. We got resources to take care of if you want it done, of course, at KQ Lawyers.

Now, I want to point this out for our YouTube viewers. Many more people catch this on itunes and Stitcher, which is great. But we do broadcast this on my YouTube channel every week. For those that are. Some people just love to watch on YouTube. I'm not. I'm gonna make an official protest. Then we'll get on to our topic. This background of Matt Sorensen's. He's in the new Phoenix studio.

Yeah.

And some of you are like, why is there an empty square to the right of Matt over his right shoulder? I mean, you'd think, you know, you got Main Street Podcast. Matt Sorensen, Matt Sorenson.com. well, that's okay. No one thought, you know, maybe we should use that box to put Mark Kohler's name in it. But it's okay. I'm not. I'm not offended. I'm not hurt. I just.

Yeah.

People, this is what I have to fight for. I have to tell everybody I'm Batman just to get a little love, you know?

Yeah. Well, you know, one of our employees just yesterday was referring to the Main street business podcast as Mark's podcast. And I was like, oh, you mean that one I do every week? Oh, that one. Oh, oh, that one. Okay. So, you know, I got some work to do, apparently. So this is what's happening here.

Yeah.

So, you know, you got to come in studio to fight about it. You just.

That's right. You're swinging the pendulum, by the way. You're like, this is Matt Sorensen's effing podcast, so deal with it. Okay, now, let's talk about trademarks first. Now, before we Bring on our expert. Let's lay some groundwork here. Now, this is so important. I want to. Because I was talking to one of my kids. They're in their 20s and they're doing business. And a lot of this LLC corporate stuff is new to them. And even though they grew up going to my workshops and selling books, they didn't pay attention until they were 22 years old. Another parental issue to work on. But anyway, the kids are like, well, hold it. I reserved my name, dad, when I set up my llc.

Yeah.

You know, I set up.

We searched with the state. You guys made sure it was good. The state approved it because no one else had that name.

Yeah.

And so when my kids set up Microsoft Pillows llc, they thought, what's the problem? You know, I got my llc.

Yeah. Well, here happens if you want.

Yeah, get a URL. Maybe you want to go nationwide. Maybe you want to sell this on your website. You want to throw it on Etsy. You want to sell these cool Microsoft pillows all over the web. And, well, your company name has the word Microsoft in it. I might ring a bell with some of you. Yeah. And what do you do? So. So anyway, here's my point then, Matt. I'll let you make your first fundamental point is. My fundamental point is this. You can set up an LLC in any state, and maybe that name's available in that state, but it doesn't mean you have the domain name that you want, and it doesn't mean someone else is not already using that name, marketing it nationwide or even worldwide. So you go to set up your little company that's going to sell these cool pillows or products or services, and you want to do it on a website, and all of a sudden you realize that your little LLC or corporation that you registered, that's cool. The name's available in that state for your entity, but it doesn't mean you protected the name from someone else using that same name to market with. And so that's where the trademark comes in. That's. That's kind of my first fundamental point. What would you say is another kind of a baseline?

The first thing is, is when we think about trademarks, think about brands, because trademarks are not just about your company name necessarily. Like, you could be buying rental properties. Like, should I trademark XYZ Rental Properties llc? No, who cares? You're a rental property entity. Like, you're not building a brand like that name is on a bank account, some leases and a deed, like, who cares? But if you're like, no, I'm Building a brand, a reputation, a product, a service. I got a slogan, for example, that I want to be mine. I'm going to build up. I want people to know me by that. I want to then to identify the product. I don't want copycats coming out stealing all the work I'm putting in to building this company name and this brand or this product or this slogan. So while for many people it is their actual company name, that's the brand that they're trying to build. Sometimes it's a product or service, sometimes it's a slogan. Like I'll give you an example of one of our trademarks. Take control of your retirement. Well, that's a trademark that directed Ira has. That's a slogan. It's not our company name, but it's a slogan we have that we use in our marketing that we want people to know and associate with this. Now, the funny thing is a lot of our competitors use that damn slogan and they're about to get some nasty letters. You know who you are. All right, but guess who's got the trademark?

This guy.

We got it. All right.

All right. I love it. Now let's provide another baseline concept that I think is really helpful because we're going to dive deep once we get our expert on here. So we want everybody on the same page. What's the difference between a trademark, a patent, and a copyright? Let's just kind of bet that for a moment a trademark, I like what Matt said is like a brand. It could be a slogan, but it's typically going to be words and a logo. Sometimes it has. There's a logo that goes with us, sometimes not. But think of it like a mark. It's like literally a mark on a paper. That's where it came from. It's something you can see. Now, a patent is a process, a recipe, an equation. It's a diagram. It's an image of technical use of something. A patent is a whole other world, an invention.

It's an invention of something. It's unique.

Yeah, I like that.

And so you can get a trademark for Pepsi, but get a patent for maybe the way you can your soda

or trademark of the word Pepsi. Like you would trademark that, but the actual stuff in the can and the formula, that might be a patent.

Yep. Now, a copyright is the written word of an article. It could be a book, it could be a play, a movie or whatever, but it's a copyright. You don't really file for a copyright. You just put your copyright symbol and you mark it with this copyright symbol in your name that I created this, this is mine. And if anybody wants to use that without my permission, that would be plagiarism. So if you want my permission, you could use or quote something I wrote or copyrighted, but you just can't go out and take the manuscript of Lethal Weapon 3 and go do a community theater with that. That's copyrighted. You see the NFL on Sunday. They'll go. The content era of today's show is copyrighted by the NFL, not to be

used without the express written consent of the nf.

Yeah, now, but so you've got the trademark of the NFL logo, but then you have the copyright of the actual game and. Yeah, I don't know. Is that helpful?

Yeah, I think that's important. A lot of people get confused on what's a trademark, copyright, patent. Now, patents, you might need to know if you have inventions or technology or new product design and stuff. But really, every business needs to think about trademarks. Is your name unique? Are you interfacing with consumers where you're trying to build a brand? Do you have a product or service you want to have a unique name for it that you don't want people to steal? This important slogan, all these things. That's where I think most business owners. You're much more likely to need a trademark than you are a patent.

Yeah.

Now, before we bring on our expert, who's going to talk about timing and how you protect your trademark and who gets it first? This is where it gets technical and maybe how you get registered trademark. But here's another point, though, I want to make with trademarks. I like how Matt made the distinction of a rental company versus a product. So I want to vet that for a moment. So we actually feel we haven't done a good job of letting our customers and clients know how important the trademark is and how affordable it is. Oh, let's get that out there. We charge a thousand bucks for trademark. Now, there could be a filing fee. There will be a filing fee for the number of industries. You want to reserve that name. We'll talk more about that. But it's around a thousand bucks. You know, we have a special we do once a year. That special is this coming week. It's for about two to three weeks in the month of July and August. You can see it on our website. But anyway, we're going to knock off a hundred bucks, you know, save a little money there. But there's, there's quite a bit of work and research that goes into finding out if your trademark is going to even be reservable, does someone else have it? Yada yada. But anyway, it's very, it's very competitive price and you might find it for a couple hundred bucks on LegalZoom. But did you do the work to figure out is it, am I even going to get it or this or that? So anyway, look, just want to let you know it's not thousands and thousands of dollars to do. But we haven't really talked about it enough with our customers that are setting up websites and marketing a product nationwide. I would think 10 to 20% of our customer clients over the years probably should have set up a trademark. And we're trying to get the word out and going, how's your business going? If you got a name that you're really building out there, maybe we should lock it down nationwide. But for all those LLCs are just rentals or partnerships. Don't care.

Yep, yep.

And what I'll say too is on trademarks and Mark gave the Microsoft pillows example either in my article and we've got some articles on this, lots of other resources. I talk about Paramount Real Estate. Like you might be a brokerage, a real estate brokerage. Let's say you're Paramount Real Estate Brokerage and you're like, hey, I want to trademark that and building this brand. I want other agents and brokers and the real estate industry to know me and my company. I don't want someone else to use that name. So I'm going to go trademark Paramount Real Estate Brokerage. Well, when you go to file that trademark and you search Paramount, you're going to see Paramount Pictures and all these other companies that are going to be have registered trademarks. And you might think, man, I'm out of luck.

I'm not.

Someone else is already using the word Paramount. Well, there's a couple of important things to know there. One is what class is that trademark registered in? So Paramount Pictures is going to be registered in movie production, television, that type of class or category. Whereas Paramount Real Estate Brokerage is going to be in a real estate class of or services. And so there's lots of different classes and categories where you can get a trademark. So you can have. There could be multiple trademarks out there for the same word, but they're used in different business industries. So it wouldn't confuse someone. Someone's not going to confuse Paramount Real Estate Brokerage with Paramount Pictures. People are going to get. Those are different things. And so you could. Those things can both have a trademark.

Yeah. Microsoft Pillows. Microsoft computers.

Microsoft.

Exactly. Yep. Okay. Well, I think this is a good juncture to bring in our expert and really ask some more detailed questions. And we've got some questions from some clients that knew we were recording this and they wanted to have those posed, so. Okay.

All right, now it's my pleasure to welcome our special guest, Jaron Bergerson. He's a attorney, senior attorney and Cedar City office kick us lawyers. He's done hundreds of trademarks for clients, of course, worked with business owners for years, 10 plus years at our firm, and he's been a wealth of knowledge. I've learned a lot from him, all the attorneys. Just the other day we were throwing all of our trademark questions at Jerem, trying to stump the experts. So it's nice we get to have him here on the podcast to give some of his wisdom and trademarks.

And for those of you. Oh, thank you, Jerem. You're going to say.

I was just going to say great to be here, guys. I appreciate it.

I wanted to introduce him a little more, too, and say Jerem, so those of you can relate to this amazing man as a, as a family man. And he's also a children's book author with trademarks on his books. Is that fair to say?

Yeah, yeah, for sure. For sure.

I love. What's your most recent book?

Well, the book that I've written is why Do Witches Wear Black? It's a Halloween book about. About what the title says it is. Why. Why is it that witches wear black? And so it's kind of a fun little picture book for kids and came out last year and I, I enjoy doing that stuff.

Well, he's got a whole series, but he's been really cagey. We've been trying to get him to release the next title, even though I know it's trademark. He's. He's got a promo plan. So everybody, I love it.

Just promise to release it here on the Main Street Business podcast. All right.

That's right. World premieres are always here on the podcast.

Okay. All right. All right. Well, one other thing on Jeremy, he's a broadcast journal major. You know, I was undergrad degree, in addition, of course, to law school. But so, you know, we expect big things from you today on the podcast.

Always big pressure when you talk about a broadcast journalism major. So hopefully I can live up to.

I love it. Okay, here's a question that really, we get a lot from people that are calling up and we. I had this question from a client before we recorded the podcast and to make it short and sweet, essentially, was, what can I trademark? Like, can I trademark my, my logo, or am I trademarking my company name, or am I trademarking this or that? Maybe tell us things, maybe some examples of what you can and cannot trademark.

Right? So I know you guys talked about patents and trademarks and copyrights and their difference between. Differences between those things. But you can always trademark a name, a logo, a slogan, a tagline, any of those things, as long as they identify the source of the products or services. So if it is something that identifies that you or your company is providing that product or service, it can be trademarked. You know, the name, NFL or the football teams names, Denver Broncos, Arizona Cardinals. Those are trademark names because they indicate that the National Football League is the source of whatever it is that's being provided.

Okay, now let me give an example of what you can't trademark, though. Like, what if someone asks you, they're like, hey, I want to trademark this? You're like, yeah, I can't do that.

Yeah.

I mean, there are names that are too descriptive of what it is that you're offering, right? I can't trademark the name soda can if I'm providing soda cans, right? If I'm in the business of making soda cans, that's generic, it's too descriptive. I can't, you know, I can't trademark the name cell phone for cell phones. That makes sense, right?

Because the government's like, when whoever gets this trademark, they get exclusive right to that right? In the soda can business, we're not going to let one company be the only one that gets to use the word soda cans or.

Right.

Selling skateboards. We're not going to let you trademark the word skateboards, you know, so no one else can use it in your industry.

Right?

Now, if you have like the pogo stick, you know, and you invented that and you put a name to it, right? That might be descriptive, that. But that's a product that's unique and new. It's not a generic category.

Right. Nobody knew what a pogo stick was before the pogo stick, right? So that is something that becomes. Right. It becomes so ingrained with what the product is that it, it can become generic. Right? The, the company, the Kleenex company lost their trademark because Kleenex became so ubiquitous for tissues that, you know, Xerox is another one. Xerox copies. Those are, those are ones that actually you become so well known for a particular product that that name can actually lose its distinctiveness.

Hmm. All right. Now, some things you may say I don't need to trademark like we talked about, a rental property business. And I look at Matt's name and logo right over his shoulder. I mean, who would want to trademark Matt Sorensen? I mean, I could just. I don't ever see a reason for that. But I mean, who would want that brand?

I mean, that name is very valuable. Very valuable.

And there's a whole kind of funky body of law. I don't know if we want to get into it, about trademarking. Personal names can be done under certain circumstances. Sometimes it can't. Depends on. On the situation.

Oh, there was a case, wasn't there? Someone that was pissed that they were using their name. And I'll remember it during the show. It was just in the last few years, there's a big lawsuit over. You can now using someone's name, likeness or image. I get it. But there was a trademark over the name as well. Anyway. Okay, so let me ask another question. All right. Let's just kind of talk about time. I mean, I guess that's kind of a common question, like, well, how long is this going to. I already got my llc. I got my website.

Right.

And what do we do? How's that work?

So in terms of timing, I always tell clients, look, we're dealing with the federal government, and the wheels of the federal government turn slowly. They just do. So from the time we submit a trademark application to the time we hear anything back, for the first eight years I was doing this, it was three to four months. We always told people, you're not gonna hear anything for three to four months, right? Now do me a favor, double it, right? It's six to eight months right now until we hear back anything from the federal government. And in a best case, you're at about 10 or 11 months at least until you'll get a registered trademark. From the time we even file the application, if we have to follow up with making arguments about why the mark should be trademarked and other things, it can take years sometimes to actually get the registration.

Yeah. So what happens? I mean, process wise, what do you do, though? I mean, there's the timeline of what USPTO is going to do, but, like, you know, you're going to go look at the name, right? Someone's going to say, all right, this is my business name, or this is this new product I'm. I'm making, right? First, I think the thing is, is you have to be actually using that and show it in commerce, right? You can't just be like, I'm going to trademark every idea. I have a name so no one can go and use them. And I'm going to just claim this whole space and industry. Yeah, you have to be using it or have some intent to use it.

Right. To actually get the registration you absolutely have to show the uspto, here I am, here's a website, a social media page, packaging for a product that shows that I'm using this name or slogan or whatever it is in conjunction with this product or service. So advertising the service on the packaging for the product, you have to do that. Now you can start the process with what the USPTO calls a bona fide intent to use the name. But there are timeframes after which there's basically a drop dead date three years in the future where the USPTO says you're out of time, you didn't use it within this time frame. You have to start that process over. So you can go out there and put a bunch of applications in. It gets expensive, especially if you're doing it for a bunch of products and services. But you can put applications in. But if you don't actually use the name or the logo or whatever it is in a certain amount of time, three years usually, then you're out of luck.

But you can usually say hey, just get it on a website. You know, just get it up on your website, this name so we can at least show it in use because it's a pain in the butt after remember to come back and refile the show you used it. So it's not like you gotta like show that it's gone all over the country and everybody knows your name. You just gotta show it's on a frickin website, a brochure, it's like it's in commerce.

Right? Right. Especially for services that works. Yeah, you know, I just have to show you you're using it to advertise your services. And so that can be on a social media page, that can be on a website. With products, it's a little trickier. I either have to show the mark on the product on the packaging for the product or on a website where somebody can click here and there's a price and they can buy the product on that website. So products are a little tougher services, it's a little more open ended.

Well another thing is I, I would just say this too is that don't worry about the timing people. This is part of the process of really building a brand. How many books and podcasts are about build your brand? Well, part of Building your brand is protecting it. And just start using it. Get the trademark process going. That's cool. You don't have to wait to use your mark to get a trademark. It's better. You just start using it.

Right. You don't have to use it to start the process. You'll have to use it to get to the end. You have to show that you're using it. But you can start the process. You can start the process with an idea. So if you've got something you think is genius in terms of a name, a logo, a tagline for a product or service. Yeah, you can start that process without actually showing. Yeah, I'm selling products and services right now.

Okay, I want to ask this. Matt, forgive me, I got to ask this. I think this is critical. And for some reason, Jerem said, I don't get this question very often because they're already at his doorstep asking for it. But to me, and that's why I want to cover this question right now on the podcast, is why? Why do I need a freaking trademark? Because some people are like, I have the URL. I have my llc. I'm out using it. No one's going to stop me. Damn it, I'm a freaking cowboy. I got my name. I'm doing it. You know, why do I need to trademark? Give us some examples of why.

So there, There are a few reasons. One I actually thought of after we discussed this is it's an asset, right? That trademark registration. You want to sell your business or something down the road, that's an individual intellectual property asset. That a URL isn't, right? That you saying, well, I've used it in commerce and I have common law trademark rights. That's not the same asset as a registration. But the main reason you want to do it is the level of protection that you get for that name. With a trademark, that is presumed right. The law says you've got the registration. We presume in all kinds of litigation that you are the one that has the best rights to this name. Now, the American system is a little funky about whoever uses it first, even if they don't have a registration, can have some rights. But you can take that registration and hammer people with it in cease and desist letters, and you can use it as a shield to tell other people to go away if they're trying to get you to stop using that name or logo or whatever it is. So. And also, the big thing, just really sort of technically in litigation is if you're trying to sue someone for trademark Infringement. And you have a trademark registration. In order to get damages from them, all you have to show is that they infringed your trademark. You don't have to prove to the court or a jury or anybody else that that other user actually harmed your business. You just have to show that they are infringing on your trademark, that they're using something that you have a registration for. And statutory damages can be very lucrative in that situation. And you can use it in a cease and desist letter to tell people, look, I'm serious about suing you and I don't even have to show that you're damaging my business to put you on the hook for a, for tens or hundreds of thousands of dollars in damages.

Yeah, so it's like the uspto, when you get that trademark, they're giving you a huge hammer. I like how you said a shield too. So you have the weapons, so to speak out here to protect your brand and to build on it. And one of the other things I remember, I was doing a trademark. This is over 10 years ago. I actually used to do these, you know, and I remember a client who was a flooring business, he had an SBA loan and he wanted to start a line of flooring. And he was basically having some third party manufacturer. We want to start his own little line of flooring. And he was mostly like, he just sold other people's stuff. Well, we went to go get a trademark for this line of flooring he wanted to do. Someone was already using this name and had a trademark for it. If this guy went and built this thing out, created a product name for it, we didn't go to the work of checking this on the other. You know, if you think of the other way, he could have been on the other end of this because he didn't take the time to search this out and look. And then we obviously went with a different name and had to switch gears. So sometimes there's a lot of value in just knowing if you're going to put a lot of time and effort and money into building a brand. Is this going to be clean? Am I going to be able to build this and grow it up? Or might I be like going totally down the wrong avenue because he had the LLC that had kind of a derivative of this product he was going to call registered in the state, but wasn't going to work trademark wise.

Okay, if I can interject this, Jerem, if you want to comment. Maybe, maybe not. I feel this is advice I give to clients and maybe you want to elaborate on it is a lot of people go, well, I missed the boat. I already set up my entity. I'm toast. No, no, you can have Kohler Enterprises, Inc. Or llc, and then that. Kohler Enterprises doesn't have to be the brand. Your LLC people can just be your LLC or your corporation with a tax ID number, bank account file your taxes, pay the bills, blah, blah, blah. But then your entity can own the trademark, it can own the URL.

Right.

Whenever I talk to a client that's like, hey, I'm going to do something on Etsy or a website. I'm going to sell a product or service. I'm going to go nationwide with this. Then we say, okay, don't worry about the entity name. That's really not as important as can you get the web domain you want and can you get the trademark you want?

Right.

Because before you go spend your fricking money, let's make sure those two match up. And they. And. And I think those need to be really coordinated. Your thoughts on that?

Well, the, the example that popped in my head of what you're talking about, right, Is Google. Google isn't Google. Right. That's not the name of their entity. Their entities. Alphabet. Right. That's the name of their entity. But their trademark, what they do business as, what identifies what they do is Google. So the name of the entity and the name that you trademark or that you do business or that identifies the source of goods or services can be completely different. They don't have to match up at all like that.

All right, Matt, you go. I'm dying to get to timing because I think it's fascinating, but I don't.

Yeah, you don't answer that question.

Well, I'm already hearing from Matt and Jerem. People don't care about it, but I want to ask. But anyway, you do. You. You ask your dumb question, and then we'll come to mine.

Okay.

All right.

They're launched over there yet. You haven't had lunch yet, right? Are you over on your rock stars for the day?

Yeah. Look it. It's empty. I mean, I'm out of control. I'm off the hook.

If I got, like a floor of empty rock stars over there, I'm dangerous.

Or you may say, cut off. At this point, they're about ready to call me an Uber, you know? Yeah.

Okay. What? Tell me. I just kind of want to get back in this process. I want you to understand, like, what's happening. Okay. You're like, all right, guys, I got the name or my product. I want to go, trademark, we're going to go search it on uspto. Let's say I get that trademark and I go see someone else is a year or two passes and let's say I see someone out using that trademark.

What.

How do I. What are the typical things people do to go protect that mark? And so, like, how do you actually use it? And then do I have to do anything with the USPTO later down the road after I have the trademark?

Right. So it's. It is really important that you police your trademark. Right. If people are out there using your name or whatever it is that you've trademarked for similar goods and services, that can cause you to lose your trademark eventually, possibly. So you do want to stay on top of that. Do Google searches, look into people sort of infringing on your trademark. And if they are, you know, you can go more informal than this, but at the very least, you're typically sending them, having an attorney, us whoever, send them a cease and desist letter that says, we've seen what you're doing. That infringes on my registered trademark. Here's a copy of it. Here's. Here's what I do under that name. You need to stop immediately or I'm going to sue you for trademark infringement. Yeah, that. That's really.

I think any lawyer on the other end of that whose client comes then and says, oh, crap, I got this letter from this lawyer saying they got a trademark. The first thing they're gonna do is look at the letter, go to uspto, see if you got a trademark, see if it matches up in the same industry. And they're like, dude, you gotta stop using that, man. This is like, case closed.

Yeah.

And that's the hammer we've been talking about.

Right, Right.

Okay. A couple thoughts. Matt keeps saying the word uspto, so let me tell everybody that is stands for the United States Patent and Trademark Office, uspto. All of you can go to their website and do some of your own searches. And this is where I thought Matt was going to go on the process is, again, you're going to see places out there that'll do trademarks for a couple hundred bucks of that. And you're like, why would I pay KQS lawyers or Jerem 1000 bucks

to

get a trademark done with a law firm and get that service? And when I heard Jerem describe what he does to really help a client through this, I really thought it was powerful. Can you describe that real quick by the way I muted my microphone here because there was a plane mechanical problem, so I couldn't get to the studio with Matt fly in today for the podcast. And, and so I'm shooting outside and there's some birds having sex in this tree over here. So I just wanted to point out, if you're hearing that I muted it because I didn't want to distract the listener.

So those are called lovebirds.

Whatever they are, they're freaking loud. I'm like, I just threw my rockstar can at them. They were a little upset.

I saw that out of the corner of my eye and I wondered what the.

It increased the noise. It did not prevent it. So this guy's like, don't disturb me.

This tree's a rocking.

Don't come and tree's shaking over here. What's going on? Okay, so tell us what you do when you file that or look into that trademark.

Yeah, I mean, the first thing that I'm going to do is, well, initially we're going to, I'm going to have a discussion with the client about does it make sense to trademark this name? Can we trademark this name? Are we going to run into issues where it's too descriptive? Name, logo, whatever it is? So, you know, in a service where you pay quite a bit less not having that discussion with you, then I'm going to do an in depth search for conflicts, right. I'm going to be looking at the USPTO database for names, logos, whatever it is that are similar to yours in similar industries to see if there's a conflict out there, that when we file the application, the USPTO is going to deny it and we can stop the process early on, relatively early on, if that's going to be the case. So I'm doing that research I'm looking into, right. The USPTO has a list of thousands and thousands of approved product and service descriptions. When you tell me what it is your business does and I look at what your website or whatever you have, I'm going to fit in what it is you do under the right product and service description.

Someone else might miss if they're doing it themselves.

Right, Right. And that'll, that'll cause your, your, your application to get denied. USPTO go. That doesn't describe what it is you do. Um, so, so I'm doing that as well.

And you find out eight months later you're like, maybe I should have called Jeremiah.

Right, Right. Yeah. It gets denied because your, your description sucks. Or sometimes, though. Jerem, I know in that process, this is. I've done it with clients I've sent your way is sometimes it's like, all right, here's the name you gave me. That's not going to work. But if you add one more word in the mix or something here, we can get that trademarked.

Right.

Like how you have it now. There's our conflict. Or it's too descriptive. So a lot of times you're like helping modify it to get it approved, which is super valuable.

Yes. Yeah, we can have that conversation. And we do have that conversation as well. Right. If I do some initial research and see conflicts, you know, what are ways we can get around that instead of just going right to the application, getting it denied and having to start over because the USPTO won't let you, you can't amend it. Well, in the. In midstream to go, I'm going to change the name a little bit in this application. No, you're not. You're going to start over. USPTO doesn't allow you to do that.

See, with Matt, with your brand and logo, it probably would work better if you said Matt Sorenson Kohler. And then Jeremy would be like, winner. Yeah.

What are we selling? Toilets and faucets? No. Oh, Mark Kohler.

Oh, fair enough. Touche.

I opened the can.

Yeah.

Might be a conflict with those guys.

Yeah. See, that's a great example. You know. Yeah. We're talking about Kohler Industries earlier. You know, they probably have some trademarks in that plumbing and faucets. You know.

That's true. Yeah. All right, now I've got some funny ones there. We'll leave it alone. Okay, Now I'm going to ask about timing. Some of you might find this fascinating, but I'm going to ask Jerem to explain this for everybody. And I love my Pizza Hut. Example, if I may, Jerry, is it

Papa John's or Pizza Hut? I always forget.

Well, there's both. I've heard the Pizza Pizza Hut case study, but then I understand there's a real. There's a Papa John story, too. Oh, what do you want me to use, Jeremy? Are you familiar with either one?

Either one. Either one is great for me.

I just love the Pizza Hut salad bar. I don't know if they've gotten rid of that. Do they still do the salad bar?

They do. They do it.

So I haven't been in a Pizza hut in the 21st century, so I'm not sure.

Okay, fair enough. We have a non pizza connoisseur answering this question. Okay. All right. So for those, I'm a little older, so I was in the 80s going to the real Pizza Hut.

Me too.

Me too, baby.

It's true. I mean, Domino's was just getting a foothold back then. And if you wanted pizza, you went and sat down and you ordered it and they brought it to you. You're like, nowadays, you're like, that's way too long. But anyway, so back then you go to sit down at Pizza Hut. Well, when Pizza Hut first evolved and started to go nationwide, guess what? The word Pizza Hut isn't that unique. There were little mom and Pop Pizza Huts. And I can't remember the exact state, I think it was down in Florida, some. Some little couple had a Pizza Hut Pizza place. And they had never trademarked it. They just had their little Pizza Hut place. Well, now Pizza Hut, it's freaking now, owned by Pepsi. They were going nationwide. We're opening up Pizza Huts on every corner, and they got the trademark. So to me, this is interesting that this little Pizza Hut in Florida, can the main Pizza Hut send them a letter and go, stop. You can't do that. We already got the name. Get out. You're out of the business. Go change it to Pizza Cabin. You can't have Pizza Hut. Change it.

The Hut is too nice. It needs to be a cottage or something.

Yeah, there you go.

Right?

So, yeah, or vice versa. This little couple in Pizza Hut, they have a family team of lawyers that can go against a huge corporation. And they call up Pizza Hut International and go, hey, we already got Pizza Hut. We're down here in Florida. You can. You can't use the name. And again, this pissing match, right, who wins? What happens? Can you kind of tell us how that plays out? And it did. It played out and right.

And it's a. It's a bit of a split decision. I guess. Pizza Hut corporate will call them. They could send. And they probably would send that cease and desist letter to try to scare mom and Pop Pizza Hut into changing. But mom and Pop Pizza Hut, if their use of the name Pizza Hut for their location predates Pizza Hut's use, Pizza Hut Corporate, their use and their registration, then Pizza Hut corporate can't make mom and Pop Pizza Hut stop at that location. What they can sort of do is put a fence around mom and Pop Pizza Hut and say, all right, your use in Pensacola, Florida, or whatever it is predates ours. We can't stop you from using Pizza. The Pizza Hut name at that location. But if you want to open up down the road, In Tallahassee or whatever, another location, you're out of luck. You know, your use predates ours the way you used it before we did. We can't stop you. But you can't expand your use beyond what you did before we started our use. Does that make sense?

And then vice versa.

Oh, go ahead.

Okay. And then vice versa, they send a letter to corporate and go, hey, hey, we're Pizza Hut. You can't use this. And they'll go, show us your trademark.

Right? And they're likely in that market or in a small geographical area that mom and pop Pizza Hut served. Pizza Hut corporate probably can't go in there, but they can go everywhere else in the country. They have the name for everywhere else in the country.

See, and this example is why even if you're a small business, one location thing or you have a local clientele, why you may want a trademark, because it's not just the landscape you're operating in today and who might be using your name. Like when I was using the name. What do I care? I'm not going to spend the money for a trademark. Well, what about in 3 years, 5 years, 10 years? Your brand has grown, you're growing your business.

You spent all this money on.

You could get locked in, right?

Or right.

Somebody comes along and goes, man, Pizza Hut is an awesome name, right? Big Pete's, Pepsi, Pizza Hut corporate. You have that asset. That's an asset you can sell to bigger company and make some money. All right, I don't want to use Pizza Hut nationwide, but somebody else does. And my name is awesome. I'm going to sell the trademark rights.

Well, and that's an interesting story because I always like to bring in Victoria's Secret. I think that's who doesn't conversation have in any venue. But there's another interesting case study. Seriously, for those that don't know the story, the original founders of Victoria's Secret, they, they stumbled. They didn't get it. They didn't know how valuable it was. And the I think it went through two buyers if I'm. I remember correctly. But then someone got it and they used the brand and the logo and the concept of Victoria's Secret, you know, multibillion dollar operation now. And the original founder was so bummed that they had missed the boat, but they had got the trademark. They had created the brand. They just didn't know how to next level it. One might argue the movie founder on McDonald's. Oh my gosh, Michael Keaton. Just want to kill him in that movie. Oh, my gosh.

Yeah.

You haven't seen that, people. You got to see it. That story of Ray Kroc.

Ray Kroc, yeah.

Oh, so another interesting branding issue because if you remember the two brothers that were. That had the original McDonald's, they were devastated when the corporate McDonald's ultimately. And Michael Keaton played that role. So I don't know, you can see

that this is a big deal, you know. Yeah.

So.

All right, well, let's talk about. I want to talk about maintenance, though, because we brought that up, but we didn't come back to the answer on that. So, like, once I get it approved, don't I, Do I still have to do anything? Like my entity, I got to renew every year or like, what do I got to do?

Yeah, it's not every year, but you're going to have an initial renewal between the fifth and sixth anniversary of when you got your trademark registration. You can also file something called a declaration of incontestability at that time, which strengthens your trademark if you've been using it. If you can show you've used it throughout that five or six year period, you'll then have another renewal between the. I believe it's. I can't remember if it's 9th and 10th or 10th and 11th year after. I think it's 10th and 11th after you get your registration. And then every 10 years there.

How much is that? Is it cost a lot?

There are, there are filing fees and you know, in 10 years they'll be different than they are now. But it is, it is usually a couple hundred dollars per class of goods or services that you have your registration in for the renewal. You know, to have an attorney do the renewal because it's not, it's not crazy complex, but it's not crazy simple. So having an attorney do it can be helpful. You know, we charge a couple hundred bucks to do the renewal work as well on top of the filing fee.

Now, what's fascinating for me on this, Matt, remember, gosh, it was four or five years ago, I think we had him as a guest on our show. Todd Bates, an attorney out of California in his whole law firm. We ought to have. It was interesting, Jerem, I think you remember he. His whole law firm, all they do is file trademarks and maintain them. And you're like, you can make a business out of that, but they do it worldwide. So what was interesting is some of their clients, and he would use the one on our show, they represented, I don't know, General Mills or whatever that Owns Snickers. And he goes, you got Snicker Minis, Snicker with peanuts, snickers with almonds, Dr. Stock, da, da da, da, da. And then he goes, so let's say just with the Snickers bar franchise, just think of that. How many versions of Snickers are there?

Right?

And he was like, there's almost 30 versions of Snickers. How. Where do you want to protect that? So each one of those is a trademark. You're going to have it on a schedule. When are we going to renew it? When was the first one filed? And that's their job at their law firm. And then he goes, we're going to take it out to 185 countries around the world and lock it down. Yeah. Because I don't want to go to Yugoslavia and walk into a little bodega and someone's ripped off my name. Snickers. And so he's like, we're maintaining 30 marks, 30 trademarks in 180 countries. Everybody's on a different schedule. There's an initial filing fee. And he's like, it's big money. And so I was just blown away with that. Yeah.

And you can use your US Trademark in most countries as the basis to get a trademark in another country if you're using the mark for a product or service in another country. So I have done some of that. Not a ton, but, yeah, you can use that US Mark as a basis to get a mark somewhere else. And if you have a trademark in another country that's part of the Madrid protocol, it's called, you can then use that as the basis to get a trademark in the US as well. So across most countries, that works.

Where can we really. Where would Matt Sorenson really get traction?

Well, not Yugoslavia, because I don't even think that's a country.

It's not a country. Yeah, it was in the 80s. We're going back to the 80s.

Pizza Hut throwback. Fair enough. Maybe. Maybe in, like, some South American drug cartel country that Matt Sorensen, you know, people are like, that's. That says laundering money to me. I want that trademark.

Exactly.

I have nowhere to go on this. I just feel like I'm back in the corner right now.

Body blow. Body blow. Body blow. Yeah. This is so much fun. Usually Matt Soreness has got some little. He puts me in my place. I'm.

I'm like, I know I'm down on the ropes here.

Someone bring him a rock star.

Yeah.

Or.

Or am I like, you know, am I suckering you in you know, you don't know.

It's true.

A little rope, a dope. You don't know what's coming.

I'm going to get hit with this letter. Okay, all right. Well, I don't know. Was there any other questions? Jerem, you've been wonder.

Well, let me ask this, Jerry. I said a couple rapid fire questions. Maybe we can do the rapid fire round. I don't know, Mark, if you can hang on that.

Yeah. Okay, Rapid Fire, go.

Okay, Rapid Fire. So what is the filing fee for a trademark?

It's $250 per class of goods or services that you're registering. About 50 of those classes.

Register in multiple classes?

Yes.

How often do you do that? Is it common or.

I would say 30, 40% of the time we're in multiple classes.

Okay, Rapid Fire, when can I get an appointment with you?

I think as soon as next week.

Okay. How much is the retainer? And what happens if we don't do the trademark?

I think under the special it's 900 bucks. It's usually 1,000 bucks. And then if we don't end up filing the trademark, I bill for the time and doing research and putting together answers for you and then we refund the rest.

All right, Rapid Fire, when is your next book coming out?

I hope this fall.

Okay, cool. What is that thing on your counter behind you?

The tiger.

Is that a tiger?

It's a tiger.

I was hoping you asked about that prime rib.

Well, somebody else said it was a sausage when I was bringing it in. It is a tiger. That was on my grandma's coffee table when I was a kid and I thought it was the coolest thing in the world. And when she passed away last year, I told my mom, I want one thing from grandma's house. It's that tiger. My wife wouldn't let me take it in the house, so it's in my office.

Man, with that windup of a story. I was about to make fun of it, but I'm not going to.

You know, I grandma

going to touch that one even though it is the Wagon Wheel from Harry Met Sally. But I love it. Okay, now, Rapid fire, how many get approved? Average that you submit?

Out of the ones I submit, I would say 80% get approved.

But sometimes you'll tell someone too, right? Like, hey, this one I don't know.

Yep.

I think you give a good idea. And I think, well, that's part of the consult is like, I'm feeling pretty solid on this. Like you're some people. It's like hey, you might not want to put a lot of money into building that brand or that product name because this. You're on the fence.

Possibly. Yes. I send that email a lot or that memo a lot. Hey, this is a toss up. Here's a conflict. I can see arguments on both sides. We can proceed if you want. Most of the time, people say, yeah, let's proceed. And those are the ones that oftentimes don't make it.

Do you send cease and desist letters?

I do.

Do you ever get cease and desist letters other than from your wife?

Well played. Yes, I do. I do see them, yes.

Do you send Matt Sorensen cease and desist letters?

Not lately.

Okay. All right, I'm trying. Rapid fire Matt. Anything else, man?

No. That was awesome, Jerem. And remember, you can get over to kqslawyers.com right now. There's a trademark special for a limited time, but if you're catching this, of course, later on, that's great. It's a thousand bucks. There's an attorney involved. We got some other attorneys besides Jerem working on these too. So think of that brand. And I want to just say, when we're thinking about trademarks, don't think about the money. I mean, there's money to be spent, don't get me wrong. But think about the time and effort you're going to put in building a brand or product. And this is not for every business owner, but for those of you that are doing that, and I think the trademark seems like kind of 101 to me. It's like, don't leave that amazing protection, that process, to know it's yours. I can build on this. No one's going to come and steal it from me in the future. The thousand bucks is well spent if you're in that category.

I love it and I love how Matt's trying to get off the show. He's just body bloat here. But I will say no. I think the brass ring is bringing the synergy of your URL and your trademark together, people. That's value. I mean, I've got some website domains I reserved a year or two ago that people are sending me emails. I want to buy it.

I'm like, really?

I haven't done anything with it yet. They want it. And so now if I could put it in use and create a trademark, boom, baby, now we're getting value. So I think people, as you're thinking of your brand, really hone in on that domain too. Because I think the synergy those Two. Would you agree, Jerem?

Absolutely. Yeah. I mean using them together, if you've got both. Yeah. It can be exponential the value when you've got everything in place.

Yeah. The trademark Google for a search engine is pretty worthless if you don't have google.com. not every business has that connection. Sometimes it's a product and we talked about it could be your business name is already in existence and it's generic but you're going after a product or even a doing business as type thing.

Yeah, I think Twitter™ Elon Musk thought I want that for 54 million. I changed my mind. Yeah.

44 billion.

I thought it was 54 billion.

54, 20 a share, right. I think that's.

Oh, that's right. That's where the 54 was.

54, 20 cents a share for 20.

34 billion.

Yeah. Evil Industries has 8 billion of revenue this last year. Don't you think we should ask for a little more?

I love it.

Okay. $1 billion.

1 billion. Well, Matt, you're amazing. You look good. Jerem, you're great. I love your comments. Excellent. And everybody, thanks for listening. Please share this with a friend or business owner that you know is building a brand. Make sure they're aware of this, that they're working on it. If you want an appointment with Jerem, you can look at the link below. Get over to kkoslawyers.com kkos lawyers l a w y e r s dot com and you can click right on there. Make an appointment, get things rolling. Hope to see you all on the backside. And next week for another amazing episode of the Main Street Business Podcast. It.