0:31

Welcome to The Virtual CMO podcast.

0:33

I'm your host, Eric Dickmann. In

0:36

this podcast, we have conversations with

0:38

marketing professionals who share the strategies,

0:41

tactics, and mindset you

0:43

can use to improve the effectiveness of

0:45

your marketing activities and grow

0:47

your business. This week, I'm excited to welcome

0:50

Devin Miller to the podcast. Devin

0:52

is a patent and trademark attorney

0:54

and CEO and Founder of Miller

0:56

IP Law. He also runs a

0:58

product development company that helps startups

1:01

and small businesses with developing

1:03

their ideas and products. Devin

1:05

is the co-founder of several startups, including

1:07

a multimillion dollar startup for wearable

1:09

glucose monitoring. He hosts

1:11

the Inventive Journey podcast, where he talks

1:13

to entrepreneurs, CEOs, and

1:16

inventors on their path towards

1:18

their startup success. Today,

1:20

we're going to be talking about the importance of protecting

1:22

your innovations by filing patents

1:24

and trademarks. Please help me welcome

1:27

Devin to the program. Hey,

1:29

Devin. Welcome to The Virtual CMO Podcast.

1:31

I'm really glad you could join us today.

1:33

Absolutely. I'm excited to be here. So thanks

1:36

for having me on.

1:37

Let's kind of kick things off and just

1:39

tell the audience a little bit about yourself.

1:41

Shortest questions always have the longest answer.

1:43

So I'll try and keep it a bit shorter. So um

1:45

I've got uh educational

1:47

wise I ended up getting four degrees which my wife

1:50

always says it was three degrees too many. So I

1:52

have a electrical engineering degree, Mandarin

1:54

Chinese, Masters of Business Administration,

1:57

as well as a Law degree. Um as

1:59

far as um family, so a

2:02

father of four, I have four kids between

2:04

the ages of six and

2:06

10 and uh also been married for

2:08

13 years and then a little bit on

2:10

uh the career side of my of

2:12

my uh background, so I've uh

2:15

I kind of always had two passions. I love entrepreneurship,

2:18

done several startups that have I've grown to seven

2:20

and eight figure businesses, I also love the law.

2:22

And so I always kind of have those I dunno competing

2:24

interests because they work well together. But always kind of

2:26

have those two passions that I chase. Right now

2:29

um as long with some of the startups I do I also

2:31

have Miller IP Law where he help startups and

2:33

small businesses with their patents and trademarks,

2:35

and other business related things. So that's

2:38

just a a quick intro on myself and that could

2:40

be a much longer conversation but I'll

2:42

pause there.

2:43

I really don't get what you do to stay busy, you know? It

2:45

sounds like you have a pretty relaxed

2:47

life. So I'm curious you said

2:50

this is one of several businesses that

2:52

you've started. What was really the

2:54

entree into your path as an entrepreneur

2:57

Did it just grab you early and you just decided

2:59

this is what you wanted to do, or did you stumble

3:01

into it? How did that happen?

3:04

Yeah I mean it's probably always been

3:06

to some degree in interests. And you know what I would say

3:08

the the the real main entrance

3:10

or the real for first foray

3:13

was backing up to undergraduate.

3:15

I kind of was getting towards

3:18

the end of an engineering degree which was kind of a main focus,

3:20

The Chinese was a secondary focus. And

3:22

so I got to the end of that and said you know I like engineering

3:24

but I don't want to be an engineer in the sense

3:26

that I liked working on projects, like understanding

3:28

how thing works seeing technology But I

3:30

didn't want to be stuck on one project for months

3:33

or years on end. Typically the engineering

3:35

industry after work you know 15, 20 years

3:37

of your career to really get up to management, be able to

3:39

see all the big picture and have an impact.

3:41

So it's I don't know that I want to do that So I kind of had

3:43

two kinds of competing interests. I loved entrepreneurship,

3:46

startups, small businesses, and I also

3:48

loved the law, and I thought the Intellectual

3:51

Property patents, trademarks were pretty interesting

3:53

so that's why I ended up just doing double major. I decided I wasn't

3:55

going to choose I just decided to do bowl, and

3:57

so as I was going through the doing the double major,

4:00

just give me a give me a context to talk about being busy

4:02

I was doing two majors so do a law degree and MBA

4:05

I'd had our first kid was

4:07

two years old, we just had a newborn, I

4:09

was working 20 hours as a law clerk

4:11

and then I can't remember I was trying to remember back I never

4:14

really remember It was either an email or a poster And

4:16

I can't remember where I saw a uh basically

4:18

said Hey enter a business competition It's one

4:20

where Bolt I disciplinary different

4:22

people. You all come together nobody knows each other

4:24

You form a team and you put into a business competition

4:27

So I went there thought it sounded like fun,

4:29

we formed a team We enter something the

4:31

first year that made gym bags, less gym bags

4:33

less smelly didn't really go anywhere, came

4:36

back the second year and um

4:38

we were saying okay what can we do we're brainstorming

4:41

self packing boxes and other crazy ideas.

4:43

None of which really would have work and about that time

4:45

I'd ran my first marathon So I'm like wouldn't

4:47

it be cool if you're out of athletics running

4:49

in that to be able to monitor your hydration level.

4:52

And this was in the days before Fitbit or Iwatch

4:54

really wasn't any wearables, so I'd say that'd be

4:56

great If you could have a watch that can monitor

4:58

your hydration level So that was kind of we

5:01

came up the idea, pitch

5:03

it to the Group I actually came home over Christmas break,

5:05

worked on it with my dad that's also an engineer,

5:08

built out the prototype tested it. We entered

5:10

in the competition took second, which is a bittersweet,

5:12

it's a much longer story or a gripe session

5:14

Ion my part. But then I got to the end and I said

5:17

Hey I think this has some our legs too I

5:19

think it can actually go somewhere So I bought out the rest

5:21

of the people that that were partners in the business competition,

5:24

kept going on it and that business in a different

5:26

form is still going today, and that was probably

5:28

the first real foray I got into the entrepreneur

5:31

side.

5:32

So many people have that

5:34

entrepreneurial idea, right? They have something

5:36

and then say, Oh there might be something to this.

5:38

I see a real need. There's something that could be built

5:41

here that could really solve a problem, but

5:43

then they go to sleep and that's the end of it. They

5:45

never take any action on it. And

5:47

I'm sure as you've talked to a lot of startups

5:49

and other entrepreneurs, the

5:52

difference is these people took action.

5:55

Yeah and that's always you know I work with I've done

5:57

I don't know three or four star five star I can't

5:59

remember now how many startups and I've also I

6:01

work with a ton of them on the IP side, and

6:04

the difference is always you know I always say you know ideas

6:06

are a diamond dozen people We sync the hard thing

6:08

with businesses as they come up That one great idea

6:11

There are people that have great ideas all the time and

6:13

some of them really are good ideas And yet

6:15

it's execution It's actually doing something

6:17

with that idea actually implementing it

6:20

building it into something That's the hard part

6:22

So yeah ideas are diamond dozen

6:24

It's the implementation That's the hard thing And that it

6:26

separates It's people

6:28

So one of the things that I'm really

6:30

interested to get into with you is

6:32

when businesses start out, the things

6:35

that they love to invest in are the fun

6:37

things, right? Let me go get my business card, let me get

6:39

my website done, let me do that fun

6:41

stuff, and then yeah maybe somewhere down the line,

6:43

I'll hire an accountant and then maybe even

6:45

further down the line, I'll hire

6:47

a lawyer because all these contracts

6:50

that I'm using, I just downloaded from the internet.

6:52

And, oh by the way we do have a really cool product

6:54

idea but we haven't done anything to

6:56

protect it. When in

6:59

your business do you see

7:01

people you know knocking on that door for

7:04

the first time? What is usually

7:06

the trigger if you will for somebody to come

7:08

and see you?

7:09

Yeah And my quick

7:11

or quick recommendation, do it a lot earlier

7:14

than when do I get all the way to the business.

7:16

I usually see it at two kinds of bands

7:19

or two type of ends, one is a bad time and

7:21

one is a fun time. I'll give you the

7:23

bad time first. Problem I sometimes

7:25

will see is people will say, Oh

7:27

I've been in the business for four or five years,

7:29

and I finally got to where we have a bit

7:31

of money and we're just getting going, getting some traction,

7:33

and now we should go get a patent or we should

7:35

go get a trademark. And And then what's the uncomfortable

7:38

because some of them have deadlines in the US

7:40

and most of the rest of the world, if a patent,

7:43

if it's in the public domain, you know put on

7:45

a website out in the uh out in the public,

7:47

to trade shows, sell it to people,

7:50

you have one year from the time you originally put it in the public

7:52

domain within what you can file a patent.

7:54

If you miss that year, everybody gets to

7:56

use it. And so we'll get people to walk in,

7:58

Oh it's been three years we've been selling this product, just

8:00

finally starting to take off, and I usually have a conversation-

8:03

That's great that you have a great business. That's

8:05

great that you got to get product. I can't help

8:08

you because we're already past that year mark.

8:10

So that's kind of the one thing where they get

8:12

far enough along that they finally decide they'll

8:14

get around to it, and by that time

8:16

it's usually more costly cost of Eric,

8:18

you know more expensive and more difficult

8:20

if there are options. The other time that a lot

8:23

of times you'll see it as when people are getting started And that's

8:25

a better time to really come see an attorney And

8:27

sometimes they're too early Sometimes they have an idea They're

8:29

just working it out but they want to come in

8:32

get a strategy get it And a roadmap

8:34

in place which I think is a great idea If you're starting

8:36

a business even if you're early on Go talk to

8:38

the accountant go talk to the attorney Most

8:40

people will give you and I'll do it And a lot of other attorneys

8:42

will give you a 15 minute consult for free

8:45

Give you at least some ideas of term timeframes

8:47

and strategies And when you should start but

8:49

go talk with them That's when they usually come in

8:51

at somewhere around that The time that I'm best

8:54

able to help them as they're getting going We strategize

8:56

and either Are ready going then or

8:58

we say Hey I'd wait three or six months and

9:00

kind of down the road This is when you'd want to consider getting

9:03

started And that's when they get going So it was

9:05

kind of those two timeframes Better

9:07

is the beginning But sometimes if you

9:09

if you get the cease and desist letter you get

9:11

down the road still go talk to an attorney because

9:13

they can still generally help you It just

9:15

gets more expensive and more difficult

9:18

One of the things that we talk about a lot

9:20

on this program is that most

9:22

products that are out there are not

9:25

truly revolutionary products, they're an incremental

9:27

improvement over something else that is there.

9:30

I want to come to market with a new calendar

9:32

program, and I've come up with this great idea

9:34

that you can have alarms with it, or

9:36

something like that. So you're not reinventing

9:38

the wheel, you're just adding something

9:41

that makes your product slightly different

9:43

or more interesting than someone else's. In

9:45

the world of intellectual property, that

9:48

seems to get really hairy because

9:50

maybe somebody owns a patent on

9:52

a calendar or a widget or whatever

9:54

it may be, but you've done something that's

9:56

taken that in a slightly different direction.

9:58

It's not the same thing, it's slightly different.

10:01

You know without getting into too much

10:03

of the depth of the law here, how do you

10:05

start to figure out what you've

10:07

actually got that you can protect?

10:11

Yeah and let me give me an example then I'll answer

10:13

your question. You know kind of what you said,

10:15

hard to completely create

10:17

something new. Even if you were to say automobiles

10:19

change the world, well there were horses and buggies before

10:22

that, there were trains before that, after

10:24

that there've been airplanes, there've been semi-trucks,

10:26

there've been a whole bunch of things. So transportation

10:28

has always been around and yet there's been that incremental

10:31

horse and buggy was better than just

10:33

riding a horse Right Uh B

10:35

uh train was better than horse and buggy, a

10:37

car or personal vehicles better than that. So

10:40

you know there's always that incremental thing but where are you

10:42

look at It is you know the example I always give is

10:44

you know let's say you Came

10:46

up with the black and white television, revolutionary.

10:49

Everybody needs wants when everybody buys one

10:52

and then somebody else comes along and they embed

10:54

the color television So originally black and

10:56

white color televisions and add addition great

10:58

innovation took a lot of work to figure out how to make

11:00

it in color but it adds on top of that.

11:02

Then the question is is okay If I'm the guy

11:05

that comes up with the television black and

11:07

White I'm probably, Okay, first to create, first to invent.

11:09

what about the black and white or the color television? It

11:11

builds on top of it. It does something new

11:14

And so when you get into that kind of thing, two

11:17

standards is to get into patent or when you

11:19

get into patentability. One is called novelty,

11:21

other one's called obviousness. Novelty

11:24

is basically any is anybody else Eric

11:26

created this invention before they invented it before

11:28

If so you can't get a patent So Black

11:31

and white television, color television They're different

11:33

So if you've got if they're the guy that does the color

11:35

television, you're fine because the

11:37

guy didn't are black and white color guide didn't create

11:40

the color, so he didn't invent that. Second

11:42

question you always have to ask is what's called obviousness

11:44

and obviousness is kind of like well

11:46

no one person has created this but if

11:48

you were to take two or more things already on the marketplace

11:51

combine them together You're really not adding

11:53

anything new, you're just combining two things already out there in

11:55

an obvious way. And so again that

11:57

one is one where black and white television,

11:59

color television while there's really not an obvious combination

12:02

to make a color television. You're taking one thing but

12:04

you're adding something new, so in that sense

12:06

you're patentable. Now the other question that

12:08

oftentimes people get a bit confused about

12:11

is just because you're getting a patent doesn't

12:13

mean you don't infringe on somebody else's intellectual

12:15

property. So you take that same example

12:18

Way Patton's work is if I get if I'm the

12:20

guy that has a black and white television and let's say

12:22

there's three components to my television just to make

12:24

it easy A B and C I get a

12:26

patent and says if you create an invention that

12:28

as a B and C you infringe my patent

12:31

Now I come along and make The The color television

12:33

let's say I need ABC And then

12:35

to make it color I need DNA Why

12:37

you can get a patent because D and D are new They're

12:39

not they're not haven't been previously invented

12:41

They're not obvious So I can get a patent on

12:43

the part that makes the color television but

12:46

I'm still infringing the black and white television

12:48

because mine has a B and C

12:50

So you have to look at when you're getting a patent One

12:52

is you can get something patent that's additive

12:55

you mail It may still not be able to go and produce

12:57

that unless you get a license you get permission

12:59

you acquire it or otherwise work out a deal

13:02

with the person that has the underlying technology

13:04

I know that was a bit of a longer answer but that

13:06

kind of gives A flavor for when they start

13:08

to get into that

13:09

No, I think that was a great answer because I'm

13:12

a huge Apple fan, so I follow them in

13:14

the news all the time, and they're getting sued

13:16

daily for these very

13:19

minor little pieces of functionality

13:21

that somebody has said that they've

13:23

infringed upon. And it it

13:25

goes back to your description there. Its a very

13:28

small part of a bigger product, but

13:30

somebody owns the patent of that very small

13:32

part so they're going after them, because obviously

13:34

they've got a big checkbook, and

13:36

that gets into the whole subject of

13:38

patent trolls and whatnot. But we won't

13:41

go there today. But I think it's

13:43

really interesting, how does this apply

13:45

to software? I

13:47

think I remember back in the days when

13:49

AMD came out with a competitor

13:51

chip to Intel, and it

13:53

basically was a chip that performed the exact

13:56

same function, but as long as they

13:58

built it without ever seeing the

14:00

Intel functionality, that

14:03

was okay. Is that an

14:05

accurate representation of what was happening

14:07

there?

14:08

So the way patents

14:10

work is it's kind of that again that A, B, and C

14:12

so functionality or patents if

14:14

it's a utility patent go towards functionalities

14:16

they take the Intel versus AMD. They

14:19

can have something that in the end does the same

14:21

thing but if it has different components or works

14:23

a different way, they don't necessarily infringe.

14:25

So let's say Intel has again just using

14:27

the simple example A, B and C

14:30

and Andy came out and says, well we really need A,

14:32

we really need B, we don't need C, we

14:34

can do D instead. And so they'd figured

14:36

out basically how to design around it. Well then

14:39

they don't infringe on the Intel's patent even

14:41

though they accomplished the same overall functionality

14:43

of a chip though you know runs a program and run software

14:46

because Intel has a pan on A, B, and C

14:49

AMD figured out how to do it differently

14:51

with AB and D. And so they both have patents,

14:53

neither infringed, both can sell chips.

14:55

And so and then you know the one interesting

14:58

thing that people always you know look at or kind

15:00

of hit on is you know sometimes it's that small

15:02

and incremental variation They're saying

15:04

how can they get a patent on that Well first

15:06

of all the problem is always hindsight Bias has

15:08

always every time after you see how somebody

15:10

has invented at how The After you know how

15:12

the magic trick works it loses his magic

15:14

same thing with an invention Once you figure

15:16

it out Oh yeah that makes sense

15:18

I that And it's a person that

15:21

fierce figures it out creates it test

15:23

it out Does the R and D does all of

15:25

that research puts all the time into

15:27

it then it's you know that's why they get

15:29

a patent on it And so that's why it's

15:31

kind of you know after the fact you see a lot of

15:33

those you're saying Oh those are simple but there was a lot

15:35

of a lot most of the time a lot of time or research and

15:38

effort that went into figuring out that

15:40

minor variation that gives you that much better

15:42

So how does that apply to software?

15:44

Because there are so many programs out there that

15:46

really do very similar things, they have different

15:48

user interfaces, and different ways of doing it,

15:51

so is it the same model that's

15:53

still in effect there, or

15:55

is it because they've come up with an idea,

15:58

something that is very unique within their software

16:00

that there's still something that they can patent to

16:02

keep people from doing the same thing?

16:04

Yeah, software is one of those where it's always

16:07

it's it's it's never the same ,Eric. It's

16:09

always a bit shifting ground So

16:12

you know if you're going to go back 10 years ago it was

16:14

fairly easy to get relatively easy

16:16

to get a software patent They were pretty open

16:18

And then about six or seven years ago

16:20

you had some just really bad software patents

16:23

that got through And they were basically taking

16:25

things that people did in their head or on pen

16:27

and paper They put it on a computer really didn't

16:29

add anything new patent office

16:31

they shouldn't have but they let any way get them through

16:34

And so then you went to get all the way up to the Supreme

16:36

court and anytime you get the Supreme court involved in

16:38

patents they usually Mess it up but they

16:40

you know The So the pendulum kind of swung

16:42

from really easy Then the Supreme

16:44

court took a look at this and these are junk patents

16:46

which they were and they swung the pendulum

16:48

to make it really hard to get a software patent

16:50

And then kind of over you know over the course of the last

16:53

five years has kind of swung back more into the middle

16:55

So where it's not as easy as it once was It's

16:57

not as difficult as it used to be but

16:59

when you do patents kind of what all came out

17:01

of that as in More interpretation

17:04

of what's kind of called abstract ideas

17:06

which is kind of when you get into software there's that

17:08

third criteria we talked about Novelty

17:10

obviousness If you ended up the software you kind of have what's

17:13

called abstraction And basically ideas

17:15

You're not able to patent something

17:17

that is people can do in their head They

17:19

can do And pen and paper they've done for a lot of long

17:22

period of time If all you're doing is

17:24

putting it on a computer or on a device

17:26

if you're As an example you can't take two

17:28

plus two People have always been doing

17:30

math They can't just stick it on Or on a computer

17:33

do two plus two equals four Now because I'm doing on

17:35

a computer you can just go patent that Now

17:37

with that said there's a lot of software pans

17:39

out there that are very good And you take an example

17:41

A few different fields Augmented reality that's

17:43

really run on a lot of software And yet there's a lot

17:46

of things that go into how you make sense or measurements

17:48

how you display things how you rotate

17:50

them how you interact with them Always take

17:52

a lot of in or a lot of inventing a lot

17:54

of time in development with software

17:56

and you had a really software base And so that's another

17:58

one Augmented reality is one

18:00

You take AI or machine learning artificial

18:03

insurance in intelligence or machine learning That's

18:05

another area where you're trying to basically

18:07

train it train a computer How to think very

18:09

difficult takes a lot of work And so you can

18:12

do that One of the interesting ones is even when

18:14

you get into now again Hindsight

18:17

is 20 or 2020 bias YouTube which

18:19

is owned by now My Google came up with

18:21

a patent and if you have most phones you

18:23

can start to watch a video YouTube

18:25

or watch Netflix and you want to scroll out and start looking

18:27

at the internet or looking at your email You can scroll

18:29

out and take the big screen make it a little screen

18:32

and you can then move it around while you're interacting

18:34

Well that took a lot of engineering now a simple once

18:36

you see that but it took a lot of figuring out how

18:38

do you make it Or small how do you make

18:40

it So everything else that you can interact with it how

18:42

do you move it around And so there's a lot of things

18:45

that are incremental So yeah softwares Area

18:47

where the pendulum kind of swings back and forth

18:50

right now we're kind of in the middle It'll probably

18:52

swing one way or the other again but

18:54

definitely room to navigate in

18:56

But one where you do have to have a bit more expertise

18:58

and knowledges Do you what are their criteria

19:00

and how you navigate that.

19:02

You talked a little bit about the year timeframe

19:04

that you have after something has gone public

19:07

in order to file the patent, but

19:09

I know that with a lot of companies, they're

19:12

constantly developing things in the labs,

19:15

things that really never make it into a final

19:17

product. So they're

19:19

patenting little parts of

19:22

products or unreleased ideas. How

19:24

would you say a company should approach that

19:26

if they've got creative things going

19:28

on but then they decide, well this isn't really applicable

19:31

to our product, but maybe

19:33

it's applicable to something because it's a really good

19:35

idea, what should we do with that?

19:38

Yeah and I kind of split that as you

19:40

see the big companies you know and that's where

19:42

when you always hear Hey Apple might

19:44

be coming out with this new feature and they usually

19:46

they'll go look in the pan saying Oh this patent

19:48

has been coming out We don't know if they're really going to pursue

19:50

that because Apple literally filed Thousands

19:53

upon thousands of patents a year And they only

19:55

actually go after an implemented small portion.

19:57

So if you're a big company they're going to take

20:00

the long run of Hey we're doing a lot of innovation,

20:02

we have a lot of engineers trying out new

20:04

things We don't know which of all we'll make another product,

20:06

we'd like to protect that We'd also like to protect

20:08

our other competitors from being able to pursue

20:11

those so that we can leave the option So if you're a big company

20:13

had the budgets I probably go after all

20:15

that harder places When you get into a

20:17

startup small business waste doesn't have

20:20

the big funds that can disinvest in a lot of that

20:22

because As a small startups on business

20:24

you always have more things to spend money on

20:26

than money to spend And so you're always saying

20:28

where do we put the invest the money and that

20:30

case then I would look at it and say if

20:32

you only have a reasonable or limited budget

20:35

look and see what are the critical things that you

20:37

really need to protect And that can be everything from

20:39

trademarks with branding to patents or whatever

20:41

and say if somebody were to copy this as somebody to come

20:44

along what would be the ouch factor When

20:46

would it really hurt your business Somebody else would copy

20:48

that And if you're saying okay we can live with this Yeah

20:50

Somebody else were to come along and make a similar brand

20:52

Really what we do as a product side we

20:55

have the coolest whatever widget And

20:57

that's what we need to protect Then I focus here on the

20:59

other hand you're saying We got a product it's

21:01

not bad but there's a lot of ways They're probably

21:03

just as good but we really are good at branding

21:06

We really get our name out there We have Kashi commercials

21:08

you know we have really great customer service They

21:10

need folks on branding So usually within the conversation

21:13

that's Where is the core of your business

21:15

What is the most seen That's invaluable to you and then

21:17

that's where you start to protect it And then anything

21:19

else that's kind of outside of that as budgets

21:22

allow is you're able to protect it Go

21:24

ahead but start with the things that are critical to your

21:26

business first.

21:28

Hey, it's Eric here and we'll be right back

21:30

to the podcast. But first, are you

21:33

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21:35

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21:37

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fiveechelon.com and

22:12

click on Services. Now back

22:14

to the podcast. I'm

22:17

glad you brought up the whole idea of

22:19

trademarks and what you have

22:21

to protect from that standpoint. So

22:23

you know maybe Joe's Pizzeria doesn't need

22:25

to file anything for their

22:27

business name, but at what point

22:30

do you need to start protecting your brand,

22:32

and to what extent?

22:35

Yeah so kind of to your point,

22:37

if you're a small mom and pop shop or you're a local.

22:40

And I love mom and pop shops so don't take anything

22:42

against that. Um but if you're saying Hey I just want

22:44

to serve the local community, I want to be a small restaurant,

22:46

I just want to be a you know the corner shop, and

22:48

I really not planning on building a brand. I really

22:50

not gonna expand anywhere. I probably wouldn't

22:52

get a trademark. You know make sure you maybe don't

22:54

imprint somebody else's trademark when you do

22:56

so you don't get a cease and desist letter but then

22:58

I probably doesn't make sense to invest that in

23:01

or invest money into getting a trademark If you're

23:03

just going to stay small and say local. Where are you

23:05

going to want to do that as if one if you're you know

23:07

going if your intentions are either now

23:09

or in the future whether it's, Hey we're going to franchise

23:12

we're going to build multiple companies or a model that's

23:14

going to do that or we're going to build a brand name

23:16

around the Business You know you think of all the big companies

23:19

Pepsi, Coke, MnM's, Nike,

23:22

you know, Apple, Ford, Chevy,

23:24

all those are name recognizable brands They built

23:26

a big company, Everybody recognizes their brand.

23:28

Their brand has a lot of value, think about Disney

23:31

or Marvel, and how much money they generate

23:33

from all of the toys that everybody gets a license

23:35

from And so if your intent is is Hey we're going

23:38

to be building a bigger brand than we're

23:40

going to want to protect that. And that's when you're going to get trademarks.

23:42

So I look and see what is the intent of

23:44

your company again to stay small, stay local,

23:46

probably doesn't need to if you're in

23:48

plans or potential is you're going to grow it

23:50

or are you going to be selling It across you know all

23:53

the U S or across Amazon and have a lot

23:55

of sales then you're going to want to protect it

23:57

because it's trademarks as relative

23:59

to other things are usually less expensive

24:01

They can give you a good value The other thing

24:03

I would do on both pans and trademarks is look

24:05

at it not as just a way to protect yourself

24:08

but also as an asset to your company meaning

24:10

it actually is And the reason it's called intellectual

24:12

property it is property but

24:14

it's not something that's visible It's not tangible

24:16

but it's none the less still an asset So you

24:18

would think of it If you wanted to go buy Disney

24:20

or you know you want to do Disney's brand is

24:22

worth a whole lot It's an asset even though it's not

24:24

tangible it's something So it's

24:27

something you can build into your company that you know

24:29

you're trying to get investor dollars So they're going to come

24:31

in that that's an asset that they can invest in If

24:33

you're trying to go out you're trying to do franchising

24:36

Mar or looking to be acquired someday

24:38

or do a merger or an acquisition All

24:40

of those you can start to build assets

24:42

into your company with the intellectual property

24:44

by capturing all of that time and effort

24:46

you put into your brand or into your invention

24:48

or anything of that nature

24:50

I know for a lot of companies that are just starting

24:52

out It's a real challenge to find

24:54

that brand name because obviously everybody

24:57

wants a web domain, right? And all the

24:59

words pretty much in the English dictionaryhave benn taken

25:01

and most combinations of two words have been

25:03

taken as well. So now we're in the realm

25:06

of made up names or foreign names or whatever

25:08

to try to find things at work

25:09

Or you have those.dot

25:11

something And then people are like is that a real URL?

25:14

Because even though there's a whole bunch out there, nobody really knows

25:16

if it's not.com they really don't know what's

25:18

going on.

25:19

Yeah then you get to some software that doesn't recognize

25:21

those extensions and it's all a mess. Yeah, its

25:24

troublesome. But I still

25:26

remember the days when you know

25:28

we used to get yellow pages in the mail,

25:31

and one of the things that you always noticed about

25:33

the yellow pages is that there were page

25:35

after page after page of companies named

25:37

ABC something because

25:39

they all wanted to be in the front of the book. So

25:42

you take a company like Apple which you mentioned,

25:44

there's you know Apple heating and cooling

25:46

and there's Apple oil delivery or Or whatever

25:49

it may be. The idea is

25:51

that you can use a name that somebody

25:54

else's trademark, correct? As long

25:56

as it's not too similar

25:58

or too much in the same industry. How does

26:00

that work?

26:01

Yeah So way trademarks work is

26:04

that when you file a trademark you know you come

26:06

up with the world's perfect name for your product

26:08

and you're really excited about it then you file

26:10

it, you have to you have different classes or

26:12

categories that you file it with the define

26:15

what types of goods or services, what type of products

26:17

or services you're going to use with that mark. And

26:19

so let's say you tar you know you talked about

26:21

you have a heating and air company and we'll name an Apple

26:23

just so it's easy to remember Apple heating

26:26

and air Well that's going to be completely

26:28

different as far as the goods and services and

26:30

smartphones and for

26:32

you know uh compute super products

26:34

such a people really aren't likely to confuse

26:36

app or Apple the iPhone maker

26:39

as likely getting into heating and air Now Apple's

26:41

famous enough Maybe everybody thinks Apple

26:43

anything is going to be with social with the company But

26:45

if you get on a smaller level they're going to say

26:47

okay we can distinguish this prob company

26:49

probably isn't going to get into here The example

26:52

I always use is Nike which does athletic

26:54

wear sports gear and apparel They have it

26:56

there They don't have a trademark on

26:58

automobiles and they don't do anything with automobiles

27:00

So theoretically you could go file on Nike automotive

27:03

get a trademark on it because it's different than

27:05

what Nike is doing So that's how you start

27:07

to even within same or similar and company

27:09

names or product names or logos and those

27:12

types of things with brands If you're

27:14

a far enough to build That you're not going

27:16

to be confusingly similar And that's generally

27:18

the standard is as long as you're not confusing

27:20

the customers as to who's selling which product

27:23

they're able to distinguish it because there are different

27:25

enough in the word or the logo

27:27

or they're different and up in the goods and services

27:29

that it's not confusing then they can all coexist.

27:32

I used to work for a company years ago and their

27:34

logo was exactly the same as

27:37

San Francisco sanitation department.

27:39

And for years they tried to do cease and desist

27:42

get them to stop, but it was

27:44

fine. You know it was a software

27:46

company versus the sanitation company. There was

27:48

really no overlap.

27:50

Exactly I mean most people are gonna say Oh yeah the

27:52

sanitation company is also going to be software

27:54

programmers I ain't going to buy the software from. And so

27:56

even though they may not want other people

27:58

to use it because they're far enough at different

28:01

things and people's spines are gonna say sanitation

28:03

company software company not going

28:05

to be the same people that provide the goods and services

28:07

therefore they can co-exist.

28:09

Your company name ,your brand name, your

28:11

logo They're all technically different,

28:14

right? And each one of those could

28:16

be trademark separately. What about

28:18

things like colors and fonts, can you go that

28:20

far or combinations, where where does

28:22

the line get drawn?

28:24

Yeah the general line and then I'll

28:26

give you a few examples. General line is anything

28:28

that is source identifying every brand meaning

28:30

when people see that whether it's the name of a company,

28:33

logo, color, smell, whatever

28:36

is it's a source identification that

28:38

when they see that, when they see it, when they smell it,

28:40

whatever that they're thinking Okay

28:42

That's what this brand so you're right So

28:44

you can have general ones that most people go after

28:46

is like logo name of a company

28:48

a catchphrase a um You

28:51

know name of a product Those are the ones I generally go after

28:53

but you have a few examples of the different

28:55

ones that are fun ones One is

28:57

the smell of Play-Doh that's been trademarked

28:59

So the actual Well um you

29:01

have the color for and I

29:04

think it's Mary Kay that used to have the pink

29:06

I always get the ones confused but they had their

29:08

if you got so high up in their organization

29:10

they will give you a pink Cadillac And they actually

29:12

trademarked that specific pink for

29:14

a Cadillac because it was everybody

29:17

associated that pink Cadillac with being so

29:19

good or high up in the company Another

29:21

one was I can't remember which football team it is

29:23

now but one of the football teams and it was college level

29:25

They had a red field that was you know a specific

29:27

color red They trademark the red

29:29

football field Because it was everybody

29:31

said when they saw the red football bill thought of there

29:34

So you can do colors and other one

29:36

that's a sound So you can do if you remember

29:38

you know used to be when the company Eric or

29:41

computers would turn on you here Bum

29:43

that was training Or a male

29:45

that was also trademarks So you can do sounds you

29:47

can do colors you can do smells really

29:50

anything that's identified as a source

29:52

identification The people associate

29:54

with your brand It can just be anything

29:56

that you want to trademark but as long as it's associated

29:58

with your brand and what people think of it they think

30:00

your rebrand you can trademark it.

30:02

And what is the difference just so people understand

30:05

when you see something and it's got the

30:07

TM to it or you've got the

30:09

R.

30:10

So R is registered trademark

30:12

went to the government and went to the trademark office

30:15

You went through the process you got to trademark So it's

30:17

been gone through the examination process

30:19

for trademark ability That's what the R with

30:21

the circle around it TM is Hey I think

30:23

there's something here that might be trademarkable

30:25

that I'd like to kind of people but putting people

30:28

on notice better than nothing So I'll put

30:30

a TM there There is some law or common

30:32

law rights you know basically state law

30:34

or just by using it They're Pretty limited rights

30:37

So people generally just put TM there when they

30:39

really haven't done anything but they kind

30:41

of want to see if they can preserve a little bit of rights

30:43

and preserve a little put up people I notice they'll

30:46

do that So it's better than nothing Doesn't

30:48

buy you a ton So I wouldn't rely on it but

30:50

if you're going to do nothing versus a TM go with

30:52

the TM

30:53

Hmm. No I think that's helpful. So

30:55

let's you know switch sides here and let's

30:57

look at the ugly side of this a little bit.

30:59

Sure

30:59

You get the cease and desist notice in the mail.

31:03

do

31:04

Throw it away. about

31:05

it Wait till you get the third or fourth version.

31:08

That's all right That's kind of like when you get the

31:11

this bill is late notice you got a couple more months.

31:13

Don't do that. I'm

31:15

just kidding. You know it But

31:18

there is some truth I mean you get a cease and desist

31:20

letter Some of them you know some places

31:22

they just send out a there in the uh

31:24

in the business basically the we'll we'll send out a thousand

31:27

cease and desist letters Some people

31:29

in the and then it'll say Hey you can either pay

31:31

us this nominal amount or we're going to Sue

31:33

you So sometimes they are just kind of a nuisance

31:35

that they don't really have a legitimate claim but

31:38

they figure if they send out enough of them some people

31:40

will pay them That's not usually the case

31:42

but you know that would be one that you can do And in those

31:44

cases you can probably nor them but you're not You

31:46

know don't just ignore the letter unless you know that

31:48

that's the case Most of the time when you get

31:50

a cease and desist letter you probably

31:52

should at least reach out and respond And I you

31:55

know usually when you get a cease and desist letters because

31:57

somebody on the other side thinks you're infringing

31:59

on something that they've done their trademark

32:01

you know their brand or their copyrights or their patents

32:04

They're going to say you're infringing on us So usually

32:06

look through it see those legitimate

32:08

do a little bit of homework See who's actually sending

32:10

it before you go talk to an attorney do a little bit homework

32:13

and see where it's coming from and what's going on

32:16

Then after that go talk to an attorney Now

32:18

your options are kind of you know you can go talk

32:20

to an attorney They're going to usually tell you well you got a

32:22

couple offers or you got basically three options

32:24

or I'll give you a four One is doing Nora

32:27

No the attorney will say don't ignore it Not a good idea

32:29

Second one will be as you know you can try and go

32:32

take a license You can you know go in and

32:34

work out you know do something of that nature Pay

32:36

sickly Pay what they're saying or do what they say

32:38

in the letter to make it go away That's another option

32:41

A third one is what I typically recommend

32:44

is look for the business Still I always would say look

32:46

for a business arrangement before you try and go down

32:48

the legal recourse because businesses

32:50

arrangement are usually have a better outcome

32:52

They're less expensive and have a better

32:54

a better overall effect or result

32:57

And so that's a lot of times you know some attorneys

32:59

just jumped right to the let's go Sue them or let's

33:01

go fight it But I think a lot of times you

33:03

can find that better business outcome If you take a bit

33:05

of time There's a lot Most people not

33:07

all but most people are pretty reasonable

33:09

They're not trying to go onto everybody They're just trying

33:11

to protect what they have and they wanting to

33:13

just make sure that their businesses are continue on

33:16

And so you can find an arrangement So

33:18

go out and try and find a business arrangement If

33:20

that's not the case then you basically have to go find

33:23

them in court and some some And that and that gets

33:25

into the corridors are most of the time

33:27

the most expensive if you get into a patent lawsuit

33:29

and it goes all the way through which most of them don't

33:31

usually they settle out but you're up you're

33:33

up over a million dollars to get all the way through a patent suit

33:36

If you get into trademark suit you're at least

33:38

tens of thousands If not hundreds of thousands to get

33:40

all the way through And so that's why I said go

33:42

for a business arrangement less expense

33:44

a better outcome But if not you

33:46

don't if they are if they send a cease and desist

33:49

that's not legally binding it's technically

33:51

you don't have to do anything now Well

33:53

most of the time if you ignore it and they are serious

33:55

then they follow it up with the lawsuit You can't ignore

33:57

a lawsuit because if you ignore it you automatically

34:00

lose and they get all the damages So that's kind

34:02

of a general walkthrough a few options when you

34:04

get that.

34:05

Hey as we're wrapping up today the last

34:07

question that I wanted to ask you is

34:10

as an employee What

34:12

are your rights when you develop

34:15

something that the company patents

34:17

or you get into this crazy

34:19

thing where maybe

34:21

you've done some work in the office

34:24

on your idea that has nothing

34:26

to do with the company. What's the dividing

34:28

line and what do people really have to be careful

34:30

with here.

34:31

So the first thing is if you're ever going to work on thing

34:34

do it outside the office. In the sense

34:36

that so generally when you

34:38

do it where you get where

34:40

it's defined that is in your employment agreement So

34:42

when you sign that appointment Agreement that half the time nobody

34:44

reads and they just say how much are you going to be paying me

34:46

How many days off do I get What are my benefits

34:49

And I say Oh that sounds good Okay And they sign it and they never actually

34:51

read it Well if The if you want to protect yourself

34:53

first thing is read the employment agreement see

34:55

what you're actually signing up for because some

34:57

employers are going to be very lax

34:59

and they're not going to have very many restrictions

35:02

Others are going to be very are very restrictive

35:05

and they're going to be very aggressive So Dude

35:07

do take that in consideration when you're signing

35:09

up now Let's say

35:11

you want to you have an idea that's unrelated

35:14

to your business or a hundred related to your

35:16

current employment You want to start a new thing That's typically

35:18

at earth It doesn't have anything to do with them

35:21

Well then one thing is don't do it on your car Or

35:23

company equipment don't do it on your company time

35:25

Don't do while you're in the office because generally

35:28

they have a better reach through if you're

35:30

using any company resources using their

35:32

time you're using their equipment you're using

35:34

whatever So do it at home do it off time

35:36

And then the other thing backing up one

35:39

thing I missed I would also just tell your employer a lot of

35:41

times you know unless it's a an environment

35:43

where they're going to get mad or they're going to be worried

35:45

that you're going to quit but if you're saying Hey I've got this small

35:47

project I'm going to be working on on the side I

35:49

don't think it's anything but just wanting to give you guys a heads up

35:51

Most of the players are gonna say I don't care what you do in your free

35:54

time But do it in writing so

35:56

that you can always point back and he gave him the notice

35:58

They said it was okay That's an easy way to

36:00

start but then once you do that do it

36:02

on your own time And then if you do come

36:04

up with something then that's that's an easy

36:06

way Now the problem is is let's say If

36:09

you come up with something on the behalf of the company

36:12

that you did when they were paying you for it you

36:14

were using their resources They typically

36:16

own it And the laws are most States and it does

36:18

vary a bit state by state California is

36:20

more employee centric and other

36:22

States are more employer centric Um

36:24

but Generally they're going to own

36:26

it if you create it on their time or their dime So

36:29

that's where you're going to have to delineate as

36:31

to when you did it Um they

36:33

own it Even if you're the inventor

36:35

view almost all employment agreements are going

36:37

to have a duty to assign that you have to assign over your

36:40

intellectual property rights and that's part

36:42

of the agreement And it makes sense in the sense

36:44

that if our defendant players if I'm paying

36:46

you to do a job I'm paying you to create

36:48

paying you And I'm giving you all these resources all this

36:50

training you're getting a salary and you happen

36:53

and you create what you're employed to do Then

36:55

I should probably have ownership of it because that's why I

36:57

hired you On the other hand It shouldn't be fair that

36:59

if you create something on your own time and diamond it's nothing

37:02

to do with your employer You should own it .So that's

37:04

a fairly good rule of thumb as to

37:06

who owns it and how you are how you start to

37:08

sift through that.

37:09

So it's fascinating to

37:12

hear about and get your insights on,

37:14

because I think it's something that a lot of businesses really

37:16

don't think about until they're fairly late in

37:18

the game. Devin it would be great If you

37:20

could share with people where they can find more

37:22

information about you and your firm online

37:26

Yeah absolutely So a couple places that I

37:28

would put it one if you want to we

37:30

do free strategy meetings where

37:32

we sit down and strategize chat about a little bit

37:34

what you have going on Answer your questions Um

37:37

you can sign up for that Just go to strategymeeting.com

37:39

that links to my calendar grab a day and time that

37:41

works for you We'll have a great conversation. So

37:44

easiest way to connect up with me is their strategymeeting.com

37:47

Alternatively if you just want to go to the

37:49

website you want to learn more about what our fees

37:51

are, kind of about the firm about

37:54

myself or anything else but just get some general information.

37:56

And we also have a ton of material that you can

37:58

just start to learn about the process about patents

38:00

and trademarks, just go to Law with

38:02

Miller all one word, lawwithmiller.com.

38:05

And that's a great way to find out about the firm, so

38:07

grab some time with me strategymeeting.com.

38:10

Find out about the firm lawwithmiller.com.

38:12

Devin that's great. I'll make sure that we have all of that

38:14

linked up in the show notes so that people can

38:16

find you. Fascinating conversation,

38:18

I really appreciate you coming on the show today

38:20

and sharing your insights with our audience.

38:23

Absolutely. My pleasure.

38:27

Thank you for joining us on this episode of The

38:29

Virtual CMO podcast. For more

38:31

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38:36

to subscribe through your podcast player of

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choice. And if you'd like to develop consistent

38:40

lead flow and a highly effective marketing

38:43

strategy, visit fiveechelon.com

38:45

to learn more about our Virtual CMO

38:48

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