How to Get a Trademark with Rian Kinney

Intro: Hey everybody and welcome to another episode of How I Built It! Continuing our series on How You Build a Business, today I get to talk to Rian Kinney about the legal side of things. She’s been on Office Hours to discuss contracts so I wanted to talk about IP – copyright and trademark. It was a very educational episode for me and I hope it is for you too! We’ll get into that in a minute, but first, a word from our sponsors…

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And now…on with the show!

Joe: Hey everybody. Welcome to another episode of How I Built It, the podcast that asks how did you build that. Today my guest is Rian Kinney. Rian, how are you?

Rian: Fantastic it’s an absolute pleasure to be here.

Joe: Awesome. Thank you so much for being on the show. We met at Word Camp US. Officially I had seen your name around so I’m really glad that we got to hang out with the same group of people because we got to talking and you mentioned that you are a lawyer that is kind of embedded in our space a little bit, and I, serendipitously, wanted to have a lawyer on this show. So, why don’t you tell us a little bit about who you are and what you do?

Rian: Well, I am an intellectual property attorney that works with businesses to both launch their business and accelerate their growth. So, I handle everything from contracts, privacy policy, terms of use, helping them with their eCommerce, to vendor/consumer disputes, and intellectual property, trademarking their names, copywriting their content. Pretty much anything they need to run and succeed in business.

Joe: Awesome. And that’s fantastic because I know a lot of developers, a lot of free lancers listen to this show, and I feel like the topic of having a good contract, or how to do a good proposal has been done a lot in our space right? I believe you talked to actually Carrie Dils on Office Hours about stuff like that, so I don’t want to rehash that content, but intellectual property stuff like copyrights and trademarks are something very interesting to me and to I suspect anybody starting a business right? Because it’s easy to buy the domain name but there’s no legal protection behind just owning a domain name right?

Rian: Right. Yeah, absolutely. So, I mean, it’s definitely something that I come across. Even the most experienced and established businesses really don’t know the difference between copyright or trademark and the necessity of protecting that. So, it’s something that I go over on almost a daily a basis so I’m happy to cover with you.

Joe: Awesome. So, why don’t we jump right into that right? So, the show is called How I Built it first of all, and so I think the thing that we’re talking about here is building a good legal strategy for your business right? So, we’re going to assume that as a business owner you have a contract in place that you perhaps need, but as far as the startups behind having a good copyright, having a good trademark, that’s the thing that we’re going to talk about building today.

So, why don’t we start with, I think probably copyright is a little easier and maybe lower cost to understand. So, why don’t we start with what exactly is copyright? How do I know when I have it? Do I need to explicitly state that I have it somewhere on my website or in some kind of document?

Rian: Certainly. So, copyright is the protection afforded an expression of an original idea. This is something that automatically attaches as soon as you fix it in a tangible meaning. And I understand I’m speaking in legalese right now, so I’ll break that down a little bit, but what I want you to know is you have copyright protection as soon as you create something. So, as soon as you record this podcast, as soon as you draw your picture you have copyright protection, but taking the affirmative step for instance of putting copyright, all rights reserved at the bottom of your website is an additional step to put the public on actual notice that you’re claiming copyright in this. Do you have to put that notice at the bottom to have that protection? No, but it adds to the level of notice that you’re providing.

The necessity and/or benefit of registering your copyright with the Library of Congress and formally registering your copyright is the legal ramifications and being able to actually protect your copyright. In order to initiate a lawsuit to protect your material against infringement you have to have a registered copyright anyway.

So something that people don’t know is there are additional benefits, legal benefits for registering your copyright within three months of publication, and they’re quite substantial. It’s the entitlement to statutory damages and attorneys fees, which a lot of times if you’re looking for an attorney that might take the case on contingency, if you don’t have the ability to retrieve attorney’s fees you’re going to be at a huge disadvantage in pursuing and defending your rights.

The statutory damages, the benefits of, again, copyrighting within three months of publication. If you don’t and you don’t have those statutory damages you’re merely entitled to actual damages, and if you’re a small business if somebody, for instance would, god forbid, would take your podcast and distribute it or misappropriate it in some way and you’re only entitled to actual damages you have to prove the accounting how much they actually made from infringing upon your rights versus statutory damages, which can be punitive, or can be a larger dollar amount.

So, copyright can be anything from musical notes, music, architecture, choreography in some instances, but definitely all of the content on your website, and as particular for your listeners and developers there is copyright available for software and coding, again, I know we work in the open source community but there are certain functionalities that you may as an agency own that and license that to your clients, and then there’s copyright for the content. So, it’s all things to consider both in your contracts that we’re not discussing here today, but also in wanting to actually formally register that copyright at the Library of Congress to make sure that you’re able to protect and defend those rights.

Joe: Gotcha. Cool. Very cool. So, as far as having a registered copyright, you know, let’s say I blog everyday, I don’t and I wish I did, I have the copyright notice on my website, would I need to register each blog post individually with the Library of Congress?

Rian: No. Not necessarily. I mean, it’s completely laborious, but no, you can copyright the content on your website as a whole, and if you’re doing a series you can also do it as a series or compilation. So, I mean, it really is a case by case basis. I mean, I’d need to look at what you’re considering copyrighting to be able to advise you on what’s best, but that’s a good general answer.

Joe: Gotcha. Cool. Very cool. And so my other followup about that is you see every year, right around the time we’re recording, we’re recording towards the end of the year, people are Tweeting “Don’t forget to update the copyright year on your website.” Now, I’ve read that it’s actually better to have the year you started your blog as the copyright year, or a range right? So, if I say “Copyright 2018.” Let’s see, that claimed date, the affirmative step of saying “This is when I started my content.” It’s now 2018. Is that accurate? What’s the best way for me to say “Copyright, all rights reserved.” And then have a year attached to it? Does that make sense?

Rian: Yeah, absolutely. So, there’s not a one specific way of denoting your copyright as an attorney I would think the range would be the best way to go because you’re establishing when you first claimed ownership in that copyright through the fact that you’re currently providing new content material. What the faux pas is having something from 2015, not a range, but something from three years ago it looks like an overlooked attention to detail and especially if you’re a developer or you work in the online eCommerce community having something from 2015 that’s not a look you want to present to people you’re working with.

Joe: Gotcha. Cool. Very cool. So, that’s nice. I’m going to make sure to update the copyright to have a range now. Awesome.

And then my … Oh, maybe I didn’t have anymore questions about that. I think we answered all of the questions I have about copyright, which is cool. So, is there anything else that we should know maybe about copyright?

Rian: Certainly. I mean, I have a blog post on my website kinneyfirm.com regarding proper copyright notice. Something just for your listeners to note, putting all rights reserved is something for international copyright. It just, again, puts people on notice that you’re reserving all of your rights and are looking to pursue them. So, it’s just to add a little touch that lends credibility to your claims and your ownership.

Joe: Gotcha. Makes sense. So, based on what we’ve talked about here the idea generally speaking, maybe not specific to everybody, but what I will probably put on the bottom of my blog based on our conversation is “Copyright, Joe Casabona 2003-2017” 2018 when the calendar turns, “All rights reserved.”

Rian: Correct. Yes.

Joe: Cool. Oh, and actually one more question about this, when you register your copyright with the Library of Congress is that a costly act or is that like filling out a form?

Rian: No. I mean, filing fees are typically $35.00 or $55.00. This is something that there’s a lot of content out there so whether you’re recording, or copyrighting a CD, or your website, or things like that, this is like cost of doing business, a low filing fee, and if you’re hiring an attorney to do it to make sure you do it correctly the first time a lot of times you’re able to find that on a flat fee basis as well.

Joe: Cool. Very cool. Yeah, so that’s a pretty low cost there. Now, perhaps something that is in my mind a lot more expensive, which is why I haven’t necessarily pursued it yet is trademark. For example, there is a, I’m not going to call it a competing podcast because we don’t compete. This podcast blows me out of the water. It’s an NPR podcast called How I Built This. As far as I know they have the trademark on the name How I Built This. My podcast came out a few months before theirs, it was just kind of unfortunate timing.

So, here is a, maybe a teaser for a few minutes from now, but why don’t we start with trademarks. What are they? How do I attain them? Is it super expensive?

Rian: Sure. So, a trademark, as differentiated from the copyright. The copyright is your content, your original ideas, the trademark is an indicator of source. This is telling people where your product, your goods or services come from. So, if you’re thinking about Nike, the name Nike, or the Nike Swoosh, or even the words “Just Do It.” Those are different iterations of trademarks that indicate that this product is coming from Nike.

So, Nike is the word mark, the Swoosh is the design mark, and “I’m loving it.” Is a slogan. All of those things are able to be trademarked.

So, something that I have been asked by different people in even upper level management is “What’s the difference between a trademark and a service mark?” Legally there’s no difference. The distinguishing factor is whether you’re offering a good or a service. So, if you’re selling shirts it’s a trademark, if you’re offering chiropractic services or something like that you can use service mark. So, the distinctions visually are TM or SM, but they really have the same legal ramifications.

Something that also gets asked on a regular basis is “What’s the difference between TM and RM and when can I use them?” The trademark, or TM you’re able to use when you’re claiming like copyright when you’re claiming ownership in that intellectual property, the R you’re only allowed to use when actually registered Federally. So, once your registration issues with the US PTO then you’re able to denote that it’s registered. So, that’s a good distinction to make as well.

Joe: Gotcha. So, if I say I do go through the application process for How I Built It, and again, I’m teasing towards something more, but let’s say I don’t have any legal trouble with getting this trademark, when I put the paperwork can I start using the trademark and then when the paperwork is approved I can use the R? Or are there two separate confirmations where the first confirmation is I can start using TM, and then the next confirmation I get to use R?

Rian: You can start using TM now. So, without going into the legality of everything, there’s common law rights in trademark as well. So, even prior to filing Federal registration application you can use TM if you’re claiming ownership in that intellectual property.

Joe: Interesting. So, I could update my logo today to include TM?

Rian: You could, but again, I would want to visit who owns intellectual property that might be confusingly similar to what you’re looking to claim status in.

Joe: Gotcha. And how would I do something like that? Is there a website that I could look up or would you recommend that we hire someone like you to do the leg work for us?

Rian: Well, yeah, I mean obviously I’m going to recommend that you talk to an attorney because this is kind of a convoluted area. So, I mean, I could talk to you about the different stages, or different tests that they use to determine whether a trademark is copyrightable, whether there’s dilution, whether there’s infringement, things like that, but it gets convoluted and it gets a case by case basis.

So, you’re able to look up who has a trademark, a registered trademark by going to USPTO.gov and doing a trademark search. You’ll find when you’re in their search system it’s somewhat complicated as well to find how to search for certain design marks and things like that, but that’ll tell you who’s claiming rights currently. Whether it’s going to be confusingly similar, whether you have a likelihood of actually getting registered or things like that, that is something you’d probably want to consult an attorney for.

You were asking what the price of trademarking is, it is more substantial than a copyright. There’s $275.00 is the filing fee, it’s non-refundable, so if you make a mistake on your application it’s something to consider. Yes, you’re able to amend certain things, but certain issues you’re not.

Joe: Gotcha. Okay, so there’s the filing fee and then there’s the strongly recommended fee for hiring an attorney?

Rian: Yeah, and again if you’re hiring an attorney to assist you with filing a trademark make sure that you know what services you are being provided for that fee. A lot of times there’s a difference between hourly or a flat fee. Being a smaller business, making sure that you’re getting a flat fee and what’s included in that.

So, I’ve come across different clients of mine that have worked with other attorneys that will charge a flat fee for the initial preparation but switch over to an hourly rate for any kind of communication, and something to note is there’s absolutely going to be some communication with USPTO. When the examining attorney is appointed they’ll review your application and then get back to you, and I’ve never come across an application that hasn’t required some at least slight revision so to charge an hourly rate for that above and beyond when I know it’s expected that there’s going to be that communication is something that I feel personally is unfair.

Joe: Right.

Rian: But I include standard communication in what I do, but again I want your listeners regardless of who they go with just to make sure to ask the questions. If you’re doing this for a flat fee what’s included? Is the correspondence with the USPTO included? And things like that so they really know what they’re getting.

Joe: Yeah, that makes sense right? And I want to get dinged for every email that you send because you are probably going to have to send emails to somebody.

Rian: Yeah, exactly. And you’re going to receive emails from them because they’re going to confirm “We received your application. We’ll be getting back to you three to six months.” I mean, there’s at least five or six communications that are a part of every standard trademark.

Joe: Gotcha. And so you just mentioned another question I had which is how long does the process take?

Rian: Yes. This is a long process. So, the great news is your ownership and/or rights attaches at the date of filing not as of the date of issue. So, if you know that you are going to be claiming a trademark status getting it filed sooner rather than later is a very wise thing to do, but the examining attorney is typically assigned three to six months after filing.

So, after I as an attorney file it the USPTO will give me an immediate “We have received your application. A trademark attorney will be assigned within three to six months.” And then three to six months later they’ll let me know who’s been assigned. I have a very specific person that I’m dealing with with the USPTO, they review the application and let me know if they want to see any language changed, if there are any conflicts, what needs to be amended, and we go from there.

After we go back and forth and we have the application to where the examining attorney wants to see it it’s published for opposition where anybody that might have or take issue with the registration has 30 days to oppose the mark, or file for an extension to oppose. If no one opposes it then it’s published for opposition and typically you receive your registration within 45 to 60 days after the publication you actually receive registration.

So, the process can be anywhere between six to 12 months with something that is standard and not opposed.

Joe: Gotcha. Which brings me to this big question. This is a question I have personally, but I have How I Built It, that’s the name of this podcast. I never filed for a trademark, this was just kind of a side project that I thought wouldn’t go anywhere. I’ve been proved wrong here in 2017.

So, if I wanted to file today I could still file, but I suspect because of the similarity of the NPR podcast and the fact that it is also a podcast makes the odds of me being granted that trademark pretty low. You know, just generally speaking. I won’t accept your word as legally binding or whatever, but based on your expert opinion is that what you think?

Rian: Yeah, I mean, I think that they have a case first of all if they want to oppose your mark. If they affirmatively state that they have an issue that they have a good case for that because there potentially is a likelihood of consumer confusion, and they have different tests that they use to determine.

So, an interesting thing is even auditorily sounding the same. So, changing the way something is spelled. You know, if I were to do Nike with two E’s, or Nikie that’s not going to register because it sounds the same.

So, I can’t tell you affirmatively one way or the other, but I think that there is a likelihood of consumer confusion here and it might be a challenge, yeah, particularly because you’re both podcasts.

Joe: Right.

Rian: And that’s something to note as well. Just because somebody owns the name in one space doesn’t mean that you can’t own it in another. Something such as Michelin Tires versus the Michelin Star rating system for chefs.

Joe: Right.

Rian: You know, you can have McDonald’s food and you can have a McDonald’s carpet cleaner you know? So, it’s just really that kind of brings me to international classes, and that’s something I didn’t state.

So, the Federal filing fee is per international class, and what that means is where your goods and services fall. So, if you were to have an online website that might be international class 41 versus tshirts which is international class 25. It’s the same mark, it’s the same name, it’s the same slogan that you want to trademark but you have them on different goods and services, so that would be an individual filing fee for each class, the shirts and the website.

So, when I’m working with clients and I know that they’re building their business and may not have the filing fees for five different international classes even though they have the intellectual property to support that we want to go for the broadest, the legal strategy is going for the broadest protection possible. So, if the basis of your business is a website going for that website protection and branching out into the ancillary products like shirts as you grow your business.

Joe: I was going to ask you about that too so I’m glad you kind of segued into that. You know, I have the podcast, lets say I miraculously get the trademark. I get it for the podcast name. If I want to put the How I Built It logo on a tshirt that’s a whole other, as you just said, a whole other trademark class?

Rian: Yes, it is a different class that you would need to file in.

Joe: Now that’s not to say that I can’t put my logo on a tshirt, it’s just that I’m not as protected without the trademark class right?

Rian: Right. You’re not as protected, and obviously you want to keep other people from acquiring rights and going in that direction in tshirts or any other product or service. Yeah.

Joe: Gotcha. So, now if I do get the trademark for the podcast and then somebody puts in the trademark class for a tshirt with a logo that’s similar to mine can I still oppose that and say like “Hey, that’s my logo.”?

Rian: Absolutely. That’s a part of the registration process. So, you have every right to oppose the mark and state your grounds for opposition.

Joe: Gotcha. Cool. Very cool. Now, since we’re on tshirts right? I know a lot of people like to make like parody tshirts you know? I see like the Disney parody tshirts for example. Disney is big on protecting their intellectual property, rightfully so. So, if I wanted to make an R2-D2 tshirt how quickly do you think Disney would track me down? Would they send me a cease and desist first? Things like that.

Rian: Well, not having personally worked with Disney attorneys I don’t know what their turnaround time is, but I know with all of the companies that you want to mess with their intellectual property they’re probably the most vigorous in pursuing, and rightfully so. Parody is actually a defense to trademark infringement.

So, if you can establish that it’s in humor, and parody, and there’s no commercial intent behind it you’re not making money off of their intellectual property, you’re not selling these tshirts, the likelihood that they’re going to pursue you for making your own parody tshirt is very low.

If you’re using their intellectual property to sell your tshirts that’s a licensing issue. You absolutely have to have permission from them to use their characters.

Joe: Gotcha. That makes sense. So, that’s interesting, like parody it’s a defense and not a protection? I’m glad you specified that. So, that is interesting. I could talk about this forever.

Awesome. So, we’ve talked about copyright, and we’ve talked about trademarks and registered trademarks, and we are coming up on time so I will ask you the question that I do like to ask every guest, which is do you have any trade secrets for us beyond everything that you’ve just told us here?

Rian: I mean, trade secrets are find an attorney that works with businesses that can answer your questions that works with your budget. I feel like especially in working in the Word Camp spaces and in open source a lot of people still have the misconception that in order to get an answer to a question or speak to an attorney you’re still looking at the old school $15,000.00 retainers and things like that, and the internet has changed the game for everyone so there’s a lot more availability and flat fee pricing available to business. So, don’t hesitate to ask a question. Find a person that’s willing to work with you on your budget and always ask before you make these decisions.

Everything you can think of I’ve run across with intellectual property from people that have spent five years and $100,000.00 investing in a trade name that got trademarked a year before they talked to me. You know, they put it off, they think it’s expensive. You spent $100,000.00 investing in your business but you didn’t $275.00 to protect the name that you’ve invested the money in?

Joe: Yeah.

Rian: So, that would be my tip is make sure that you’re asking questions from a professional that can help you, that’s what we’re here for, and find somebody that’s going to work within your budget.

Joe: Gotcha. Very cool. And everything that you’ve talked about is on the Federal level right? So, I don’t need to hire a lawyer in my State perse?

Rian: Yeah. Trademark and copyright are both Federal so that’s something that it doesn’t have to be a State specific attorney for. Correct.

Joe: Cool. Very cool. Thanks so much. Where can people find you?

Rian: I’m on kinneyfirm, K-I-N-N-E-Y-F-I-R-M, .com. And I’m also on Twitter @thekinneyfirm if you have questions or would like to get in touch with me.

Joe: Awesome. Well Rian thank you so much for joining me today. Its been highly educational for me, and I hope its been for everybody listening.

Rian: Oh fantastic.

Outro: Thanks again to Rian for joining me! It was an incredibly educational episode for me and I hope it was for you too! As a result, I’ve decided to finally pursue some trademarks I’ve  been sitting on. This was a great episode, not just for people who are starting a business, but for people who may not have gotten trademarks because the process seemed intimidating. So thanks Rian for that. I’ll link all of her stuff in the show notes.

And Thanks again to our sponsors – make sure to check out Liquid Web for managed WordPress hosting. I use them on all of my important sites – they are that good! They are at buildpodcast.net/liquid. They’ll give you 50% off your first 2 months just for being a listener! If you want to save your clients (or yourself) money through recovering abandoned carts, check out jilt. They are over at buildpodcast.net/jilt. And finally, if you want to solve the pesky problem of good conference calls, check out Vast Conferencing. They are over at buildpodcast.net/vast/

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Continuing our series next week, I’m talking to Nicole Kohler about Content Marketing and Strategy. This is important for everyone, and it’s not always the easiest thing to do. We get into…well a lot so make sure to listen! And until next time, Get out there and build something!