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Intellectual Property Law with Jason Rosenblum

Erik Flegal
All right, everybody, thank you so much for joining us for another session of thought and action. We’re super thrilled to have you. And we’re super thrilled to have Jason Rosenbloom front. And he is a lawyer that focuses on intellectual property law as patents, copyrights, and trademarks. And he’s going to take us through the differences. And I think some really special nuances and hopefully help you spend your money well and protect what you’re creating. And the reason I wanted to have him on is because I know in this 2020 COVID, land, that you know, the entrepreneurial juices for a lot of people that I’m talking to are flowing, and people want to know, okay, now that I’ve created this thing, no matter how small or big it is, how do I protect? And so I want to have Jason, come on and give us some tips and tricks. And we’ll get into your book a little bit, too, because I think that if people want to continue this conversation, it’ll be a good kind of segue into learning a little bit more. So just start me off, what are the different forms of kind of intellectual property when you talk about protecting something? What are we talking about?

Jason Rosenblum
All right, well, first of all, thanks for having me on. It’s always a pleasure to speak about this and help entrepreneurs and businesses that are starting up really understand what some of the basics are, which one of those is what is the difference between the different forms of intellectual property. So we have patents, copyrights, trademarks and trade secrets also fall under that as well. So patents are about an invention, something new that you created. Whereas a trademark covers your brand, it covers the source of your goods or services that you’re providing, you know, and it could be your brand name, it could be your logo, it could be a slogan as well. And then copyright covers, essentially the expression of an idea. So a lot of people think that they can file a patent based off of an idea. But you cannot protect an idea by itself. But a copyright, if you write a book that covers your idea, your story, draw a picture of it, that’s what copyright protects. So that’s the expression of an idea. Copyright covers a lot of different forms of an expression of idea, you know, everything from literature, photographs, graphic design, music, audio and video recordings. So they all protect that. And then the last thing that I mentioned, which is trade secret, and most people know of trade secret from the formula for coke. And the key is, it’s something that’s a secret, it’s a benefit that your business has, that you keep a secret, whether it’s a customer list, whether it’s a procedure. But the key is keeping it secret, and most of that is done through contracts. One of the things to know is very early on, you need to decide, especially if what you have is maybe a procedure is are you going to keep it a trade secret. Because all the other forms of intellectual property, you pretty much need to disclose it in order to protect it. So you don’t file anything for a trade secret. You just keep it a secret and protect it, whether it’s physical means, you know, by lock and key, or if it’s by contracts.

Erik Flegal
So take me through like when is the ideal time to start the process of getting, you know, a copyright or trademark like, can you wait? Are you putting yourself at risk if you wait. You know, what are the what are the benefits to doing early versus later? When should you do it?

Jason Rosenblum
So I think you always should start thinking about it at the beginning. And I think it’s wise to either do some research, or at least speak to an attorney that practices an area of intellectual property to kind of understand what you should start thinking about and start maybe allocating assets to protecting it, or realizing this is something maybe we can’t protect, so don’t even bother with it, and let’s put the funds towards something else. In terms of trademark, though, one of the big things is if you’re coming up with a, you’re naming your business or coming up with a new product, or, you know, platform as a service. You need to make sure that you know, one of the biggest things is you pick a name that you’re not infringing on someone else’s name. So before you even think about protecting your own name, you know, we always say the first step is conducting a search to see if that’s even available for use, or are you going to infringe on someone else’s name, you know. Doing Google searches to see does anyone else use this name and if they’re using it, are they using it on something similar, then actually going to the US Patent and Trademark Office and doing a search there, you can do a basic search. And then there’s some other websites also you can do searches on as well, that are free. And we generally suggest the client do that first, before they even consider moving forward with anything, whether it’s hiring us to do a more detailed search, you know, because we have, essentially, software that we pay for that we do searches on, which provides a lot more than just any of the free searches as well, as well as our analysis of those results. And then the next step would be deciding whether or not to file for a trademark or not to protect it. But the first step is making sure that it’s clear for actual use. So you don’t start spending money, building a brand, and a product and a website that would be infringing on someone else’s rights. So trademarks, especially I don’t think it could ever be too early to start considering. Patents, there is a similar aspect there that you could start creating a product that would be infringing on someone else’s rights, unfortunately, and yeah, I’ll still suggest for clients to try and do their own searches to see if anyone else is selling something similar, or if there’s any patents covering it. But sometimes the cost of doing a clearance search in patents is just so astronomical. Because the amount of time and work that has to go into that, sometimes it’s not worth it. Or sometimes at least at a certain stage, it’s not worth it. I think that is a very case by case analysis, depending upon what the product is, what area, what field they’re in. Things like that, I don’t want to say never do it. Because there is in a perfect world, you would do it every single time. It’s just when you look at it from a business perspective, sometimes, especially for a startup, the cost benefit analysis can be really tough to come up with the fact that you know, the 10 plus, you know, maybe $20,000, $30,000 that are a true clearance search in the patent field would take you know if you know there’s one competitor that you’re just trying to get around their one product, that’s a different story. But if it’s, we’re just coming up with something new when we don’t know anything. But again, oh, before you determine that I would always suggest speak to a patent attorney to just get an understanding of that. So at least you know, you’re making it from a business perspective. And not just saying we’re gonna wing it.

Erik Flegal
Makes sense. Notice, I was talking about this before we started. Your tagline, our signature has a registered trademark. And, and I know I have taglines and I’m sure a lot of people that will watch this have tag lines. Take me through, I mean when you would do, I mean it says as soon as possible is your answer to that before but you know, what happens if you use a tagline and someone else is using? Like what’s the process, or what if someone uses yours? Take me through, something’s registered and someone’s impinging. What does that mean?

Jason Rosenblum
Did you just say if nothing is registered?

Erik Flegal
No, if you have something registered, let’s say someone wanted to use yours, what happens?

Jason Rosenblum
If so if someone’s infringing on so if you actually have a registered trademark, most we file federal, so it covers the whole US. Unfortunately, there’s no one worldwide filing, which is a question we’re asked a lot, you generally have to file within whatever country whatever jurisdiction, you will be selling, or even if you’re concerned that someone in that jurisdiction might use that trademark to counterfeit your product, you would need to file in each of those. But let’s say you have a US trademark registered that covers the whole US. So it’s as if you’re using it in the whole US, and generally, another cannot use it in there or anything similar to it. So if someone’s infringing, usually the first step is to send them a cease and desist or a notice of prior rights and tell them hey, you know, we noticed you’re doing this, stop doing it or we’re gonna move forward with a federal infringement action. You know, and you hope that they respond to that, and you can resolve it. If not, the next step is speaking to litigation counsel and determining, you know, whether or not you’re going to move forward with suing someone. That is one of the things that a lot of people, especially with startups don’t talk about is that having your intellectual property registered, especially at the beginning, when you’re a startup, the real benefit there is that you have leverage, then should someone infringe on your rights, as well as you also have, you hope that others when they go to do their search, to decide whether or not to use it, they’ll see yours and move to something different, then it’ll have a deterrent effect is what you hope also, because generally, when you’re in an early stage, the cost to litigate, the cost to litigate anything is very high. But intellectual property happens that at also a very high cost. As above even maybe sometimes just the regular contract dispute or things like that, just even the nature of it, it’s mostly going to be federal,

Erik Flegal
It would just take a lot of time and money, like you said,

Jason Rosenblum
Yeah, so you know, I like to sometimes equated to an insurance policy.

Erik Flegal
So how much, take me through like the different costs, and then I want to talk about just some common mistakes you’re like, look, this is what people do, and we can avoid them, but take me to a typical price for these because I know we’re talking about, you know, small, like startups doing it. And we’re trying to find the tipping point, where are the cost fall for patent, trademark, and copyright?

Jason Rosenblum
Okay, so trademark, you’re looking at around $1,800, which would include like a comprehensive search, you know, looks at the mark, can you use it, if you use it, you know, can you also register it. And also, that covers generally the preparing an application, filing it, the filing fee. And, you know, pretty much all the way through to registration, assuming there’s no major issues that come up throughout the process. And that would be for one class of goods or services. So I don’t want to go too much into the details, because it’s just too confusing. But essentially, when you file for a trademark, you say, I’m filing for t shirts, and bottoms, or sneakers. But now maybe you’re also using that brand on jewelry, jewelry would fall into a different class, you know, or even if you have a retail store. But you also then sell products under the same name, the actual retail store services, or the online, you know, e-commerce retail store, that’s actually one service. And then the products you sell under the same name, have a different class. So we, you know, also part of our consultation is figuring out, what are you going to get the most bang for your buck? In terms of filing, should we file for two, three classes? Or should we just file you know, for the main product for now, and then at a later date, file to cover the other things when you’ve actually had, you know, some more sales and you have a little more money in the budget to create a bigger portfolio of trademarks. For patent you’re looking at, there’s a wide range of patent patents, because really depends upon what the patent covers, you know, a lot of times there are clients that come to us that have numerous inventions. So an invention isn’t just the product, you know, the iPhone, or any cell phone out there has probably hundreds of patents that are in there. There’s no one patent that just covers, “this is a mobile cell phone”. So sometimes clients come to us and they think, oh, I just have one invention that I need to patent. They have multiple invention. So the costs go up, because all of that. So sometimes what we’ll do is file one application that covers everything, but you can only claim one of those inventions just to kind of be a little more upfront. A higher cost there, but then later on in the stages, you can pull out those other invention. Ultimately, you’ll get a lot more at the end for the budget, but there’s going to be a higher cost up front. And returns of you know, patents, we always suggest they leave some sort of a search before filing to really help a client understand, well, what do we have here? Is there something that’s even patentable? So, you know, we can do a quick prior art search and prior art is essentially everything that’s known before you file. The easiest way to say it, these are the things that would stop you from getting a patent, that the patent examiner would look at, or you’ll hear a lot of cases that a patent is invalidated, you know, after it’s been registered. Sometimes they’re invalidated because there was a piece of prior art, something that was known before that the patent office didn’t look at. But when it’s in a court case, and they bring it up, they say, oh, this really wasn’t a new invention, because this existed before you. So we always suggest some sort of a search, because it also helps us as the patent attorneys draft a better patent application, if we know what we think the potential true invention that is entitled to a patent is. So you’re looking at somewhere on the you know, for the Quick Search somewhere on $1,800. But then to really look at it and come back and say this is what we think we can ultimately obtain a claim for. So that then we can sit down with the inventor for the company and decide, does it make sense from a monetary perspective to file for a patent, if this is what we can protect? Or is this so narrow, that any competitor can get around it, that it’s not worth investing further, that you’re looking at about $3,500 to $4,000, for a search where we do that. Then after that, you’re preparing and filing an application, you’re looking at anywhere from, you know, $6,000, on the low range, up to $12,000 or $13,000, potentially, you know, there’s a really wide range, as I said, because it depends upon what you’re adding in there, How many figures you’re adding in. After it’s filed, I generally say there’s going to be at least another $7,500 that you’re going to have to go through because there’s almost always going to be some rejection that you need to then go and get around. But also when it is finally allowed, there’s fees that you have to pay in order for it to register as well. So you know, somewhere around the $13,000 or $12,000 on the lowest end, but generally it’s gonna be closer to $20,000 is I think, a good estimate for a patent. And for a copyright you’re looking at about, you know, $800 or $850 is what we charge, including our fee in the filing fees, the government fees.

Erik Flegal
Okay, that’s really good. So take me through then knowing what those costs are when someone says, Okay, I want to do this. Take me through some common mistakes that people can easily avoid by either implementing these patterns or timing wise, just take me through something where people are thinking through doing it where they don’t fall in a hole that we didn’t cover today.

Jason Rosenblum
Okay, so I think one of the biggest things with patents is that sometimes, well, every once in a while, I’ll get someone that calls me and says, Hey, you know, I have this invention I’d like to file for a patent. And then when I start talking to them, it’s like something that they brought to market three, four or five years before they ever reached out to an attorney about filing for a patent. You can’t file for a patent if you disclosed it more than 12 months before you file. So what I essentially want to say is, do not if you’re even thinking of filing for a patent, or even before you bring any product to market, that you potentially think if there’s a slim chance you think that you invented something new that would be patentable, speak to a patent attorney, because by taking it public, by trying to sell it, you could lose the right to even obtain a patent on it. So that’s one mistake. That’s a big mistake that I see a lot of people make is they don’t know that. In terms of copyrights, the biggest mistake is people think because they hired a graphic designer, a photographer or a videographer to do something for them, and they paid them that they own the copyright in the material that was created, unless there’s a specific agreement that says you own the underlying copyright. The copyright is owned by the artist, the one that either creates the piece of artwork, you know whether it’s a digital file, whether it’s the photographer that actually takes the picture, the video editor that edits the video, they all would be the actual owner of the copyright unless there’s something that says otherwise. However, if they’re an employee of a company, and that’s their job as a company, then the company would be the owner just because it’s automatically a work for hire. But when most businesses are starting up, it’s usually a friend that’s doing it for you, or you’re hiring, you know, this other company that you know, have to create, you know, your website, even for you. So you want to make sure that you own all the rights in the copyright. So that this way, you can change it at a later date, you know, you can do whatever you want with the files, and you don’t have to worry that that artist is going to come back to you and say, you know, you change that logo without my permission. I never gave you the copyright in the logo, I just created a logo for you to use as is that file was. That’s a huge mistake. And trademarks it’s really just do a search. I mean, if you’re going to be selling on Amazon, go on Amazon and do searches on Amazon, if you’re gonna be selling on Ebay go there. If there’s, you know, Google it. If there is an industry listing, look there, I just feel like there’s a lot of these simple things that people could do to avoid having to change their trademark at a later date, as well as even avoid hiring me to do it. And then me realizing within, you know, very quickly that there’s issues there.

Erik Flegal
Right. Well, I think we did a really good flyby of everything, Jason. Before we go, give me 30 seconds, the book, in case somebody listens to this. I think we did a fairly good deep dive on all of them. But I also know that we’ve been talking for 20-25 minutes. Take me through this book, and how it kind of connects on some of these dots. And, you know, cuz I know, it’s kind of a passion project, or we’re all quarantine, this is your quarantine baby. Take us through what it is.

Jason Rosenblum
Yep. So it’s basically, you know, IP basics, intellectual property basics for building a successful business. And it takes you through a lot of what we’ve discussed, but in much more detail. You know, it doesn’t teach you how to file for a patent, it doesn’t do that. It’s more about helping business owners and startups identify the intellectual property in their company, and start thinking about what they should do about it. And, you know, there’s some of the basic steps that we discussed here about, like, how to do a search, you know, other mistakes to avoid, some simple steps like that. So yeah, the books, you know, we’re editing the last version and working on the cover pages and things like that. So it’s not out yet, it’s, you know, been going slow over these COVID times, but it was something that I feel will help fix a lot of the mistakes that I just commonly see when new clients are coming to me. And sometimes even my own clients who have done work for them when they come up with a different business and start it and I find out about it, you know, a month or two in and I’m like, wait, wait, let’s go back to step one. It’s things that they could have avoided before investing any more money into the business or before going ahead and doing something that then winds up being a liability, because they chose the wrong name, or they infringed on someone else’s rights.

Erik Flegal
Right. Good. Well, I love it. And I thank you for being obviously very knowledgeable on this subject. We’ve had a couple of talks about it and I always learned something every time. So thank you for taking the time to come on and educate me some more and I look forward to seeing you in person when this whole thing gets done. And I look forward to reading your book when it comes out, so thank you very much. Really appreciate your time. I look forward to talking to you soon.

Jason Rosenblum
My pleasure, Erik. Thanks for having me on.

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