Trademarks and Amazon: Why and How You Should Trademark Your Brand w/ Special Guest LegalZoom

Trademarks and Amazon: Why and How You Should Trademark Your Brand w/ Special Guest LegalZoom

Trademarks are both complicated and essential to long-term success for Amazon businesses. Trademarking your Amazon brand is crucial for protection and access to exclusive Amazon features (Brand Registry 2.0), however there is a lot of misinformation concerning what a trademark is and how to best establish one. On this episode of Follow The Data, we sit down with Nicholas Santucci, the Lead Trademark Attorney of LegalZoom Legal Services, Ltd. to break down this confusing topic and shed some light on how you should move through the trademark process.

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Podcast Transcript

CAMERON YODER:

Starting a business can be intimidating, and fear of the unknown can be paralyzing.  In order to confidently proceed with your FBA business you need to know that your company is legally sound.  A registered trademark for your brand is one way to ensure that you’re starting out on the right foot and won’t run into trouble down the road.  Plus, with Amazon’s brand registry program there are serious perks to having a registered trademark for your brand name. 

I’m Cameron Yoder, your host for

Follow the Data: Your Journey to Amazon FBA Success.  In this show we leverage the data we’ve accumulated at Viral Launch from over 30,000 product launches and our experience working with more than 8,000 brands to help you understand the big picture when it comes to Amazon and, more importantly, the best practices for success as an Amazon seller.  In this episode we talk to lead trademark attorney at LegalZoom Legal Services, Nicholas Santucci, about how and why you should trademark your private label brand.  Stop letting complicated legal jargon and confusing paperwork stop you from accomplishing your dreams.  Let’s jump in.

Hey, everybody.  Before we get started playing the interview with Nick I just wanted to talk a little bit about this episode.  There is a lot, a lot, a lot of good content in this episode, and we try our best to just break down and make trademarks understandable because this is generally a confusing topic or topic that sellers sometimes don’t have a lot of information surrounding or haven’t heard someone talk about.  So the goal with this is really to just break it all down.  We talk about trademarks in general and on how trademarks can apply to or do apply to Amazon sellers.  But I’d encourage you, give it a listen, give it a shot.  There’s a lot of stuff here that you need to know in order to set yourself or set your brand up for success in the long run.  So let’s jump right in.

NICHOLAS SANTUCCI:

Let me start sort of from square one with, you know, what is a trademark and what’s the purpose of all of this?  Why are we talking about it?  So I mean first of all I’m Nick Santucci.  I’m the Lead Trademark Attorney for LegalZoom Legal Services, and let’s talk about trademarks.  So very, very up-front.  There’s these three general buckets of intellectual property law protection in the United States that people are going to be interested in, patents, copyrights and trademarks.  So generally if you’re making some sort of new technology or new gadget you need patent protection, okay?  Generally.

CAMERON YODER:

Okay, technology and gadget.

NICHOLAS SANTUCCI:

Technology or gadget, you’re looking in the patent bucket.  If you are a creative and you make money by selling copies of your work, then generally you need copyright protection.  Copyright is literally the right to control who makes copies of your work.  So if you make photographs, or music, or movies, or you write books, or you write blog posts, then you want to control the right to make copies of those because you make money by selling those copies.  That’s copyright protection, okay?  So then we get to trademarks, and trademarks are brand names is the easiest way to think about them.  Of course it doesn’t need to be limited to a brand name.  You can have trademarks that are, you know, less traditional.  Like the NBC chimes would be a sound trademark.  But broadly a trademark is a source identifier.  It answers the question who made these goods or services?  You know, and I’m looking at my watch right now, and it says Casio, and that’s the trademark.  It answers the question who made this watch, right?  So it is a way for consumers in the marketplace to distinguish your goods from those of others.  And having a strong trademark regime is good for the economy because it lowers consumer search costs.  That is the time and effort required for consumers to purchase the same goods or services again and again.  We don’t want to make it hard for consumers to make purchasing decisions.  In fact, we want to make it as easy as possible because it’s good for the economy, and we want to do a bunch of other things.  We want to prevent counterfeiting, and we don’t want consumers to be confused about the source of the goods or services that they’re purchasing.

CAMERON YODER:

So a trademark — a trademark allows consumers to purchase items quickly and confidently?

NICHOLAS SANTUCCI:

Yes, exactly.  That’s a good short way to say it.

CAMERON YODER:

Okay, so who — in this case who — well, are there even more specifics or intricacies to a trademark?  So a trademark has to do, again, with — it’s synonymous with the brand.  And I’m sure it goes deeper than that, but are there different types of trademarks then, or does it go deeper than that, or is it all just kind of –?

NICHOLAS SANTUCCI:

Yes, yes, there certainly are different types of trademarks ranging from — so you know, at the extreme or like the nontraditional trademarks, like a sound trademark like the chimes for NBC, those notes in that order at that tempo are registered as a source indicator of NBC.  And then, you know, it gets even more detailed with pink as a color for fiberglass insulation is a source identifier.  If you like bicycles, Park Tool makes tools for working on bicycles, and they have a trademark for the color blue for use in connection with bike tools.  So when you see Park Tools they’re actually — they have blue handles, and that’s actually a registered trademark.  So you know you can register all kinds of different things if they identify the source of your goods and services.  But for our purposes the two kinds of trademarks that a small business is going to be applying for at the outset are the standard character trademark, which is just the words.  It is the brand name.  It protects those words or characters in that order without regard to font, style, size, color, shape, whatever.  This is the most important application for a small business up front because a logo, if you were to apply to protect a logo, your logo evolves over time, but your brand name doesn’t evolve over time unless you change it.  So for instance, Coca-Cola has a live trademark that was registered in 1928, and it’s still alive and well today, and Coca-Cola still renews it, and the reason they do is because it’s for the standard character mark.  So as long as the name of the product doesn’t change but the logo changes, that registration will remain in force if it’s maintained, and it will remain valid.  So just –

CAMERON YODER:

How long does — like how long until you have to renew a trademark?  So like how long does Coca-Cola, or how frequently does Coca-Cola have to renew?

NICHOLAS SANTUCCI:

Sure.  The short answer is 10 years.  So after the registration date there is going to be a maintenance filing between the fifth and sixth year after registration, and then another maintenance filing 10 years after registration, and then every 10 years after.  So long as the mark remains in use in commerce and the registrant can prove that to the USPTO in these maintenance filings, then a trademark can last forever.

CAMERON YODER:

Now what’s the difference between a — is there a difference between, or what is the difference between a registered trademark and an unregistered trademark?

NICHOLAS SANTUCCI:

Yes, okay, so a trademark broadly is a source identifier.  It answers the question, who made this?  Now in the United States trademark rights are based upon use of a mark in commerce in connection with the underlying goods and/or services.  So it’s kind of like – so once you use a trademark in commerce in connection with some goods or services, you, these rights attach.  You automatically have what are called common-law rights in that trademark, okay?  And those common-law rights actually create the ability to sue and be sued for trademark infringement, okay?  So without regard to a registration there can be lawsuits going on just based on common-law trademark rights and parties use of a trademark in commerce. 

Okay, now the registration comes into play — a very simple way to think about a trademark registration is that it makes it much easier for you to sue somebody for trademark infringement or to stop somebody from using a mark that is confusingly similar to yours.  Now that’s sort of an oversimplification of trademark registration, but here is the analogy that I always use for conducting a trademark search and registering a trademark is that this process is the best that you can get in the United States to lower your risk of encountering problems for adopting and using a trademark, and that will become more clear when we talk about a trademark search.  You know, if you want me to just kind of get into the search [now I’m happy to 0:10:29.6].

CAMERON YODER:

Yeah, yeah, I think that’s – yeah, I’d say we talk – I say let’s talk about trademark searches.  So we kind of went over, we went over what a trademark is in relation to other entities like it, but honestly what stumps a lot of people in specifically the Amazon space and registering for a brand, for their brand, is even knowing where to start with searching.  Like let’s say – well, maybe you should just lay it out.  Like, I mean there are two kind of options.  You can either do it yourself, or you can get someone to do it for you, right?

NICHOLAS SANTUCCI:

Yes, yes, so that’s right.  And so I mentioned earlier a simple analogy, and the analogy with a trademark search is analogous to a title search on a piece of – on a house when you go to buy a house.  So just like a house or any piece of real estate, a trademark is a piece of property.  It’s a piece of intellectual property, but it’s still a piece of property in many of the old sort of common-law property laws apply to trademarks because they’re a piece of property.  So before you buy a house and you invest all the money that it takes to buy a house, you – and it’s mandatory in some jurisdictions – you conduct what’s called a title search, and a title search aims to uncover whether there’s anybody else in the world that has a valid claim of rights in that piece of property because the last thing you want to do is spend all this money on this house if in two years that person with a claim of rights is going to come and sue you for the house because you don’t want to be involved in a lawsuit because it’s a drain on your time and resources, right? 

So that’s what a trademark search is.  Only instead of searching the availability of the house, you’re searching the availability of trademark, of the trademark.  You’re seeking to answer, is there anybody else out there using this trademark with rights in this trademark that would be superior to my rights in the trademark such that they can sue me later on or make me stop using this trademark?  Because you know, even in the simplest example, you know, let’s say you’re a tattoo parlor, and you invest in this trademark and you buy a sign and hang it on your window.  You know, even if the sign only cost you like $100 if you get a cease and desist letter from someone saying, you know, destroy all your materials bearing this trademark or we’re going to take you to court, you know if you don’t want to go to court then at the very least you’re going to throw your sign in the garbage, and then that $100 that you invested in your sign is gone.  I mean in reality, you know, it’s probably a lot more money that you have invested in this name.  So you’re trying to uncover whether you can use it, what is the risk associated with adopting and using this trademark?  Now doing it on your own versus getting, let’s say an attorney to do it for you, there’s a huge difference.

CAMERON YODER:

Yeah.  What does that involve typically?  Like what would you say is – or maybe just break down what the positives and negatives are, like what the risks are for someone doing it themselves.

NICHOLAS SANTUCCI:

Right.  So there are many considerations that go into determining whether trademarks are confusingly similar, right?  A legal standard that’s used to determine, you know, whether courts are going to stop people from using trademarks, whether they’re liable for trademark infringement, so the factors that go into that determination are more than the sort of common person would think, right?  So it’s appearance, sound, meaning, overall commercial impression, right?  That’s sort of a simplified way to think about it.

CAMERON YODER:

Wait.  Can you say those again?

NICHOLAS SANTUCCI:

Sure.  Appearance, sound, meaning, overall commercial impression.  And a simple way to think about this is if you do a simple trademark search, like a direct hit trademark search, let’s say you thought of a great brand for basketball sneakers called Nykee, n-y-k-e-e, right?  If you do a direct hit trademark search, that search is not going to bring up Nike, n-i-k-e, right?  And you’re going to miss that conflict, and then you’re going to move forward, and you’re going to see well there’s no results for Nykee, n-y-k-e-e, so I must be good to go.  But it’s sort of a loaded example, but it’s illustrative because everybody knows you can’t use Nykee, n-y-k-e-e, right?  Nike, the big company, is going to have a problem with you branding your sneakers n-y-k-e-e, not to mention consumers are going to see those sneakers and they’re going to be like, what?  You know, does this have something to do with the Nike that everybody knows?  So that’s one problem is sort of just the scope of the search.  Are you going to be able, on your own, to use the tools that are free and available to you to search for the trademark effectively?  And the simple answer to that question is, well, without educating yourself, you know, sort of – I don’t know, I would say that it’s going to take a lot of work for you to get up to speed and to be able to do that search confidently on your own. 

Now, you know, I invite you go to the USPTO’s website, and the service is called TESS, T-E-S-S.  It stands for Trademark Electronic Search System.  The first option is this basic search option, and it’s great.  It’s a direct hit search, and it’s great for answering the question has anybody applied for or registered the exact mark that I’m searching?  But that, you know, that’s great for brainstorming and sort of getting that initial answer, but you really need an in-depth trademark search to uncover all conflicts that may be similar in appearance, sound and meaning.

CAMERON YODER:

If it goes – if someone wants to do it for themselves, like keep on searching for themselves, is that as deep as it goes, the TESS on the USPTO, or are there other resources that people can use to even just dig a little bit deeper?

NICHOLAS SANTUCCI:

So there are many – so do it on your own, you mean actually run the search on your own? 

CAMERON YODER:

Yes.

NICHOLAS SANTUCCI:

You know there’s different levels of sort of doing it on your own.  For the United States I would say that TESS is the gold standard, right?  It is directly to the USPTO database, and if you can’t rely on the USPTO database, like what database can you rely on?  So I would say that if you search the USPTO database that is the best tool, and you know, beyond the basic search.  I mean trademark attorneys use this database all day long to conduct much more complex searches that involve, you know, operators and, you know, taking into account all the variations of spelling and meaning that a trademark can have.  You know, so TESS, I would say TESS is the gold standard.  Now there is a ton of third-party providers who, you know, run searches for you.

CAMERON YODER:

And what do those go through?  Those don’t just go through USPTO, I’m guessing, unless they just do a more in-depth search on USPTO, but they use other – those third-party applications or services use other search methods, or do they just scrape Google, or what exactly are they doing?

NICHOLAS SANTUCCI:

So any third party that is searching, is claiming to be searching US trademarks is ultimately linking to TESS, is ultimately linking to the USPTO.  And if that third-party is not linking to TESS, then I would say as a trademark attorney do not use that third-party.  I mean what could they possibly be searching if they’re not searching TESS?  And I would not trust it.  I would not advise my clients to, you know, to do that.

CAMERON YODER:

Well let’s say – s TESS is the best way to just even just get an initial idea, right?

NICHOLAS SANTUCCI:

Yes, yes.

CAMERON YODER:

How secure would you say TESS would be?  Like how confident should someone just searching on TESS and that’s it, like how confident should they be in their trademark if they’re just doing that?

NICHOLAS SANTUCCI:

Yes, okay, so here’s the deal with TESS, right?  So it all – we start to get into the depth of the trademark search.  So that first option on TESS, like the direct hit search, that’s when we talked about the two Nikes and how the direct hit, the direct hit wouldn’t find the relevant conflict.  So a trademark search, the value of a trademark search sort of is dependent upon its depth, its thoroughness of searching.  So a comprehensive search – and the term comprehensive is generally used in the trademark attorney or the trademark, you know, industry I guess, to denote to you that this search is as thorough as it could possibly be.  So a comprehensive search would take into account those variations in spelling, right?  So Nike, n-i-k-e, would come up if you ran a search for n-y-k-e-e.  And also maybe Spiky would come up if it’s registered for use in connection with basketball shoes.  So it takes into account the goods and services in connection with which a mark is registered, and it’s thorough.  And not to mention a comprehensive search is not only going to search the USPTO database.  It’s also going to search the common-law sort of set of trademarks that are out there that you need to be concerned of because there is two questions that a comprehensive search is intending to answer.  The first is can I get this trademark through the United States Patent and Trademark Office to registration, or will it encounter some impediment to that during the process?

CAMERON YODER:

Right.

NICHOLAS SANTUCCI:

For the answer to that question, that’s searching TESS.  That’s searching the USPTO database because we want to know has anybody applied for a trademark that could be considered confusingly similar to my trademark before me, and will a likelihood of confusion refusal issue due to that trademark?  So I know there is so much jargon, but the bottom line is that – let’s back up and talk about the process for a little bit here.

CAMERON YODER:

Sure, sure.

NICHOLAS SANTUCCI:

You apply for a trademark with the United States Patent and Trademark Office.  Once the application is received it is reviewed by what is called a trademark examining attorney.  This is an attorney employed by the federal government, the Patent and Trademark Office, that deals with trademarks exclusively, and they examine the application for compliance with a bunch of statutory requirements, and they also conduct a search of the trademark registered for your applied-for mark to find out if there’s anybody that applied for a mark before you that could be considered confusingly similar to your trademark.

CAMERON YODER:

Okay.

NICHOLAS SANTUCCI:

If they find a trademark that could be considered confusingly similar, they’ll issue what’s called an office action, which is just a fancy name for an official letter from the USPTO, and in that office action will be a likelihood of confusion refusal, and it will say hey, I am refusing registration of your trademark because it is likely to create confusion among consumers with this prior registration.  And then that’s where trademark attorneys, you know, come into play a lot because sometimes it makes sense to actually argue against a likelihood of confusion refusal.  Sometimes it does not.  But you know, so this search – back to the comprehensive search – the first question is am I going to get a likelihood of confusion refusal?  That’s what the search of the Patent and Trademark Office database aims to answer.  And the second question is what is my risk of [running a foul 0:24:16.9] of any common-law user of the trademark?  So early in the conversation –

CAMERON YODER:

Common-law user, what exactly does that mean?

NICHOLAS SANTUCCI:

Okay, so early in the conversation we said that use of a trademark in commerce creates what are called common-law rights in a trademark regardless of applying for the mark at the USPTO.  Those common-law rights create the ability to sue and be sued for trademark infringement.  What does that mean?  Well, that means that even if somebody has been using a trademark – no, even if somebody has never applied to register their trademark they can still sue you for trademark infringement.  So just by virtue of using a trademark in US commerce they get rights in that trademark.  So that’s what the second part of the comprehensive search is intended to answer, what is my risk of an infringement lawsuit by anybody who is using a mark confusingly similar to mine that hasn’t applied to register it at the USPTO?  Does that make sense?

CAMERON YODER:

That does.  Now I do want to ask, that first refusal, that initial refusal from the United States trademark office, whoever the first person to get a hold of your trademark application and either accept or deny it, let’s say it gets denied.  How often do denials happen?  Like should people expect for their trademark to be denied, or should they – like should people submit applications expecting for it to be denied and to not be surprised by that, or the should they be surprised by a denial?  What do you think?

NICHOLAS SANTUCCI:

Sure.  Yeah, so like we said, the denial would be in an office action, okay?  And 50%, about 50% of applications submitted to the USPTO receive an office action.  So it’s very commonplace and oftentimes when you’re working with an attorney you will apply to register a trademark, you know, anticipating an office action, like we know that this is probably going to issue an – trigger an office action issuing, but you know, it makes sense for us to apply for your trademark in this manner because it’s the United States Patent and Trademark Office’s sort of responsibility to spot those issues and to issue an office action.

CAMERON YODER:

So what are some of the – do you know, or can you give us some of the most common reasons that a trademark would be denied?

NICHOLAS SANTUCCI:

Yes, so the reasons are very, you know, can vary.  I mean there are so many reasons.

CAMERON YODER:

Of course, of course.

NICHOLAS SANTUCCI:

But you know, and they can vary.  What I’m trying to say is they can vary in complexity.  So you can get a refusal because your goods and services aren’t drafted well enough.  So you have to, when you apply for a trademark, you have to name the goods and/or services in connection with which your trademark will be used in commerce.  So let’s stick with – you know, let’s stick with Nykee, the Nykee trademark, n-y-k-e-e,  and so that trademark is going to be for basketball sneakers, right?  So you would apply for Nykee for use in connection with basketball sneakers.  The description of goods and services that you submit to the USPTO in connection with your application has to meet a bunch of standards.  It needs to be what’s called definite enough.  You know, it can’t be indefinite, and it can’t leave too many things, you know, open to the imagination.  So the refusals that people can receive range from minor sort of procedural corrections that need to be done to the goods and services, you know, to a deficiency in the specimen of use that they submit to the USPTO.  And in order to do that you submit a specimen of use.  That could be [efficient 0:28:37.8].  But when you’re getting to the sort of serious refusals that are, you know, more complex, you’re mainly dealing with a likelihood of confusion refusal or some sort of descriptiveness refusal that attacks the, what’s called distinctiveness of a trademark, and it’s ultimately about information that the mark conveys about the underlying goods and services.  So you may know that generic trademarks cannot be protected.  You know, in fact generic terms are not trademarks, right?

CAMERON YODER:

Right, so when someone tags a generic term, and can you give an example of a generic term?

NICHOLAS SANTUCCI:

Yeah, sure.  So facial tissue is the generic term for Kleenex brand facial tissues, right?  So a generic term does not answer the question, who made these goods and services?  Instead it answers the question, what are these goods or services?  So you cannot protect a generic term.  So I’m looking at the blue mug on my desk, and I cannot register the trademark blue mug for use in connection with blue mugs because competitors need to be able to use the terms blue mug to describe their goods and services, and we’re not going to let people monopolize terms that need to be used in legitimate competition, so getting back to the trademark regime and being good for the economy.  So that goes to say that the term needs to be distinctive.  It needs to have some requisite level of distinctiveness.

CAMERON YODER:

But even if it has, even if you – like because there are a lot of people – I mean, so there are a lot of refusals, right?  So even, like you said, 50% of applications typically – again, it’s a rough estimate but like around 50% get refused.  So we see a lot of people, at least on Amazon, a lot of people giving just random, random names to their brand, spelled in a lot of different ways.  But if you – even if you have a spelling variation of something that’s similar, that’s selling similar goods you still have a very good chance of your trademark application getting denied.  Like even if it’s spelled differently, you know, like there’s an X or something in place of another letter, if it’s similar you still run the chance of getting denied, right?

NICHOLAS SANTUCCI:

Yeah, that’s right.  You know, marks are compared with respect to appearance, sound and meaning.  So when the case of that the factors that would matter would be, you know, sound and meaning.  Although they’re spelled differently, you know, they still sound exactly alike and look exactly alike.  And the same is true for assessing a trademark with regard to its level of distinctiveness.  So back to the example of blue mugs.  If my trademark was blue, b-l-o-o, mugs, m-u-g-g-z for use in connection with blue mugs, it’s still going to be refused as generic because it’s a blue – it’s still a blue mug, and the meaning of those terms is still blue mug.

CAMERON YODER:

Now I have another – I understand, and that’s a really good point.  I have another question that kind of jumps back to a similar – it’s a similar topic.  It’s another topic a little bit, but let’s say someone gets a successful, or successfully trademarks their brand, their random brand name, for a specific set of goods and services.  If they – what happens when they expand outside of those goods and services and they start selling – let’s say the goods and services they applied for and they got approved for are in category A.  Let’s say they branch out of that then into category B and start selling goods and services that are outside of their trademark under that brand name.  What do they run the risk of doing with that?  On Amazon that would be like, you know, you get a – you successfully trademark your brand for selling, like let’s just say fish oil, right?  Like I’ve trademarked my brand to sell like fish oil goods or like supplements like that.  But then you start selling cardboard under your trademark, which you – your trademark brand, which you did not apply for as a specification of goods and services that you’re dealing with under your trademark.  Is that an issue?  Are there issues with that or not really?

NICHOLAS SANTUCCI:

Oh yeah, oh yeah, there’s many issues.  So I think the way to think of it is that it’s a new trademark at that point because we said that the two sort of key components in a trademark application are the trademark and then the underlying goods and services, and when you change one of those factors, here being the underlying goods and services, from fish oil to cardboard, it’s an entirely different trademark, which arguably needs a new search, and it needs a new application.  I mean this is very commonplace for businesses that rely heavily on trademarks and branding to make money.  So when a brand makes one product you apply for that trademark.  You get it registered.  And then when you want to expand to different products that are so different you really need to do the same thing to get the same protection. 

The gray area is somewhere in between where you expand to goods or services that are within what is called the reasonable zone of expansion for this business, right?  So for in the case of fish oil, you know, if Acme makes fish oil and then Acme starts to make, I don’t know, some other supplement, let’s say emu oil, you know, then maybe there’s a question of oh, well, someone in the supplement industry already is making fish oil probably it’s reasonable that they would expand into emu oil.  Now that may or may not be true, but the question certainly arises then, and so where it gets relevant is let’s say someone – so let’s say Acme makes fish oil, and then another person starts making Acme emu oil.  Does Acme who makes fish oil have a claim against Acme making emu oil because it was reasonable that they could expand into emu oil if they wanted to?  Or are these goods and services related to begin with?  But the bottom line is that when you expand into new goods that aren’t covered by your current trademark protection you need to go through the process again, and it’s very commonplace for businesses to have many, many trademark registrations over time, and then this builds what’s called an intellectual property portfolio. 

CAMERON YODER:

I see.

NICHOLAS SANTUCCI:

And then you just manage all these registrations and you maintain them, and it’s big business for, you know, the brand.  And an example of this is Anheuser-Busch.  They make a bunch of beer and beer products.  They make Bud, Bud Light, you know, Bud Light Lime, and then Anheuser-Busch, and Anheuser-Busch is the house mark.  That’s the big overarching company that makes all these brands, and then all these brands have a bunch of registrations for all the different depictions of the brand names.  So not only does Anheuser-Busch have an application, but so does Bud, so does Bud Light, so does Bud Light Lime, and then they have all the standard character and logo applications for all of those brands, so it’s very commonplace to have to file, you know, multiple trademark applications if not very, very many trademark applications.

CAMERON YODER:

What’s typical for Amazon sellers, honestly, is to – I’d say the standard, the standard, what happens most of the time is where people start selling goods on Amazon and they trademark later.  How they trademark their brand later, or they have to change their brand name.  So people are already selling these goods.  What best practices can people put into place to either just insure or increase the chance of success when applying for a trademark for their brand?  Like what steps can people take to just start off well?

NICHOLAS SANTUCCI:

Yes, okay.  So if you wanted to start off, you know, the best case scenario is to file – is to look before you leap.  So you want to know whether you’re going to experience any problems before you experience any of them, and the way to do that is when you’re thinking about using a brand name, conduct a search, get an attorney’s review of that search, and then if you decide there’s an acceptable level of risk, file what’ called an intent to use application.  An intent to use application does not require proof of use to the USPTO upfront.  Instead what it’s used for is to, if you have this intent to use a market commerce, filing that application will bubble up any problems or people who would oppose you as soon as possible so that you can sort of get a sense of the risk of using that mark as early as possible.

CAMERON YODER:

Now one thing that sellers run into is getting trademark ASAP.  Like it takes a decent amount of time to get approved or to hear word back on your application, something like, what, average of, I don’t know, six months?  Is that – what is the average right now in terms of hearing back?

NICHOLAS SANTUCCI:

Yeah so when you submit a trademark application it takes the USPTO about three months to just review the application.  Now assuming the best case scenario, if your application gets reviewed, then it has to get published, and to publish is a 30-day period in which the public has the opportunity to oppose registration of your trademark.  So that’s another month there.  Then if it passes through publication maybe it’s going to register about three months later.  So that’s like the best case scenario.  If you encounter no problems you’re looking at 7 to 8 months before your mark will register.  But much more likely is that, you know, you will have some sort of issue or some back and forth with the patent and trademark [process 0:39:55.2].

CAMERON YODER:

You mentioned that, the intent form.  What was that called, the intent of use form?

NICHOLAS SANTUCCI:

Intent to use application.

CAMERON YODER:

Intent to use application.  So how would that help?  Since sellers are so concerned about getting, just getting their application in ASAP, would that benefit sellers?  How would that benefit sellers?  It would let them know soon that if their mark was going to cause issues or not, but how soon would it let them know?

NICHOLAS SANTUCCI:

Really the best answer I can give you is sooner than it would take if you waited to file the application.

CAMERON YODER:

Gotcha.  So would you recommend – do you think people should jump into that first just to be sure?  Like would that end up saving – because you either have two paths.  You apply for that, or you apply for the trademark directly, and in both cases if you apply for the intent of use application and you find out that your application or that your brand is already being used, then you can restart the process sooner and maybe you spend less money.  However, if you just jump the gun and you end up getting it right with the just straight up application for your brand or your trademark, if you get it right you’re good to go.  What would you say – would you recommend one over the other, or I don’t know, just what are your thoughts?

NICHOLAS SANTUCCI:

Absolutely.  The right way to do it is to conduct a search up front to assess the risk.  If there’s an acceptable level of risk, submit an intent to use application to get the process started because the intent to use application also serves an important function of locking in your filing date.  So what matters when it comes down to a dispute between parties with trademarks is oftentimes who used the trademark first.  The intent to use application, you know, once the application, or if the application is perfected to registration, the rights, the priority rights that [unintelligible 0:41:54.0] that is considered to be when your rights began will date back to the filing date of the trademark application.  So although it takes a relatively long time for a mark to make it to registration, it’s not all that problematic because what matters is the date that these applications are filed, you know, especially in the case of an intent to use application.  So there’s many advantages to filing as soon as possible, and of course that’s what I would recommend doing.

CAMERON YODER:

Got it.  Now there is – I have one more primary question.  So the chances of being denied are pretty high.  Would you suggest that when someone gets denied – I don’t think people should feel surprised just because so many applications get denied maybe the first time, but if they get denied should they be confident in reapplying themselves, or should they just kind of jump in straight to get a lawyer if they don’t have one already to handle the process?  What do you think?

NICHOLAS SANTUCCI:

Yes, so the problem here is that once you get denied, you know, the reason that you could be denied is because you just, you knew so little about trademarks and trademark law that you settled on a mark that had no chance to begin with.  So if you go to a lawyer with that sort of denial the lawyer is probably going to take a look at your office action and say well yeah, you know, your mark is generic.  You can’t register this.  If you had just talked or did some research to begin with, then you wouldn’t have wasted the money on that trademark application.  So definitely the way to go is invest a relatively small amount of money up front to get the search, to get the opinion of a trademark attorney and to anticipate these problems before they arise.

Now if you have an office action and you do have this good brand and you think it’s legitimate, you should not be discouraged.  You know, read the office action.  Do your best to read it and understand what the examining attorney is telling you to do in the office action.  It may be as simple as picking up the phone, calling the examining attorney and telling them well I want to proceed in this manner.  Now it’s important to realize that the process of obtaining a trademark registration is adversarial, just like the court system.  It is attorneys that are reviewing and rejecting your application, and when they issue an office action, you know, it’s going to be a legal writing that you’re reading.  And if you, you know, don’t have training, that sort of training, it can be intimidating.  I would say don’t be discouraged.  Do your best to read it.  You know, contact an attorney.  They’ll help you at the very least understand it.  It might cost less than you think it would cost to overcome the issues in the office action if they can be overcome.  But the bottom line is don’t be discouraged.  There’s things you could do.

CAMERON YODER:

Nick, is there anything – I’m sure – I mean there’s a lot, there’s a lot, a lot on this subject of trademarks, but is there anything else that you’d want to tell listeners about trademarks, whether it’s applying for trademarks, or what you should do in the case of getting denied?  Is there anything else that we did not cover that you would like to explain?

NICHOLAS SANTUCCI:

I think that it is important to understand that investing in this area of your business has immense potential to pay off or potential to pay off immensely, even if that is in the form of avoiding a problem in the future that could cost your business $20,000.  The trademark application with the federal government costs about $300.  It’s a small price to pay to do it right the first time, and I think that if you sort of wet your toes in learning all there is to learn about trademark law you’re going to realize that it simply makes more sense to outsource this work, to pay an expert to do a lot of it for you because it’s going to cost a lot less in time in the long run.  And the other thing to note is that if you mess it up, if you mess up the registration it can end up affecting your rights, so it’s not – these applications aren’t just throw-away.  It’s a legal instrument.  And there is something at stake.  People do experience problems in this regard, and it ends up costing them a lot of money.  You don’t want to be in the situation where I’ve seen clients that they’ve invested in a brand for, you know, four years, and at the end of those four years their decision is to go to court and spend years in court and possibly hundreds of thousands of dollars or to throw away all the hard work that they invested in their brand.  And both of those decisions are extremely painful for a business.  And if you invest a little bit of money up front protecting your intellectual property you could avoid that down the line.  And I think that there are so many options, you know, nowadays to receive high quality legal work that makes sense.

CAMERON YODER:

Now Nick, you’re part of the LegalZoom team, and that is – I mean that is one area that people can go to for whether it’s trademark questions or trademark help.  Can you tell us a little bit about LegalZoom, just what LegalZoom is, what LegalZoom does, what LegalZoom helps people with?

NICHOLAS SANTUCCI:

Sure.  So I work for LegalZoom Legal Services, a law firm.  I’m the Lead Trademark Attorney there, and I work primarily with a product that is an attorney-led product that focuses on trademark clearance and application filing.  And what I mean by that is this attorney-led trademark registration product is a comprehensive search for your proposed brand, attorney review of that search, and then attorney drafting and filing of the application.  So this is focused exactly on what my general advice to people who haven’t done this before is, which is to frontload the work.  Before you go down the path too far with a trademark that’s going to cause you headaches do the search, have an attorney review the search, and then file the application because you want to catch those problems before you even need to address them, ultimately saving you money.  So that’s what the attorney-led trademark registration product aims to do.  It aims to give you a picture of what to expect up front so that you don’t experience big problems down the road.

CAMERON YODER:

I’ll link – since LegalZoom is a really good resource just for people to even check out to, or whether they have questions about trademarks or not, they just want to look into it, I’ll link to LegalZoom in the podcast description, just as a resource for the sellers to check out.  Nick, I wanted to thank you again so much for being on the show, just for talking with us through the ever-confusing topic of trademarks.  Thank you so much for being here.

NICHOLAS SANTUCCI:

You’re very welcome, Cam.  Thanks for having me.  I know it’s a lot of jargon, but it’s all there for a reason, and I hope I made sense of some of it for you.

CAMERON YODER:

No, you very much did.  You very much did.  Unfortunately it is a topic that it’s hard, it’s hard for sellers to wrap our minds around.  But it’s very important to get it right because if you don’t then it can cost you time, and time is money, or it can literally just cost you straight up money if you make a mistake in the trademark application process, or even years down the road.  So again, thank you so much.  It’s been great having you on the show.

NICHOLAS SANTUCCI:

Thanks, Cam.

CAMERON YODER:

That is all for this week.  Thank you so much for joining us here on Follow the Data.  For more insight and reliable information on how to succeed on Amazon, subscribe to the podcast, subscribe to our blog, follow us on YouTube or like us on Facebook.  We’ve got a bunch of different avenues for you to find us on.  We’ve always got news, tips and best practices that can help you build and establish or scale your FBA business.  Your feedback is so important to us, so also if you’re listening on Apple Podcasts, please leave us a review and/or a rating.  It’s as simple as just clicking a star rating.  Whatever your honest review is for the podcast, we’d love to hear from you.  And if you know a fellow seller who needs help getting their brand name trademarked, send them our way.  We do absolutely love to be a resource for sellers in this space, just knowing what they need and delivering what they need as well.  So please tell your friends, spread the word and share the show. 

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