Webinar: How to Find and Protect Your Business Identity and Trademarks with Suzann Moskowitz

Cory Miller was joined by Suzann Moskowitz, a Stanford Law-trained attorney who helps businesses identify and protect their intellectual property. This includes trademarks (e.g. brand names and logos), copyrights and domain names. Suzann also drafts and negotiates agreements such as website policies and licensing deals relevant to eCommerce site owners.

Learn how to enhance the value of your company’s intellectual property.

Suzann talked about her experience helping businesses navigate the changing legal landscape of technology and privacy. All eCommerce store owners will find this a valuable conversation.

Machine Transcript

Cory Miller: Welcome back to another Commerce Journey webinar. Today is packed. This has been one of our most popular webinars this year, Suzanne, by the way. We’re going to be talking about trademark and copyrights as it relates to e-commerce operations. I’m here with my colleague and new friend, Suzanne Moskowitz, who is a trademark and copyright attorney that I have personally worked with.

[00:00:23]We’re going to get into all those nuances, but welcome today. Suzanne,

[00:00:28] Suzann Moskowitz: And of course, I’ve got to start with my CYA, which is, I am a lawyer, but I’m not your lawyer. So today I hope to give you general interesting information. I’m going to definitely need some time for questions, but it always seems to work out that sometimes people’s questions are hyper specific to their situation.

[00:00:45] So I’m going to say right now, and I’ll say it again, just shoot me an email, go to my website, go to the contact for it. And I promise you’ll hear from me direct. Okay.

[00:00:54] Cory Miller: Yeah. And I just shared how I like to give those disclaimers for my guests too. And I’ll definitely want to echo that she’s not your attorney. Suzanne has graciously come on the webinar to share her best experience, but I’m going to keep putting her law firm name, your website address, which you just got a cool brand new website into the chat here. And it’ll be in the show notes for those of you later on that are listening to…,

[00:01:16] Suzann Moskowitz: but then also the Keep TM that’s the new site. So that kind of the main law firm site is here and then keeptm.com. We’ll put that in the notes as well. Okay, great. To tell you a little bit about myself, is that I’ve been a lawyer for nearly 20 years now. I’ve been practicing and I’ve had the privilege of doing what I love so much, which is helping brands and companies and entrepreneurs and nonprofits.

[00:01:43]Protect the stuff that they build which is why I’ve veered into my own sub brand. I’m not just the mask boots for him. I’m keep what’s yours. Because you’re putting so much into what you’re putting out there online or maybe in bricks and mortar too that it’s it, it becomes part of who you are and because I’d built that myself about 10 years ago, I guess it’s been about 11 now, about 10 years ago, I started my own firm after working in a few big firms which I really enjoyed.

[00:02:08] I learned a lot, but, I was working with these entrepreneurs and they were, was , they were really running the show and doing things the way that they wanted to, and build building they’re building their own brand. And I thought if I’m working for other people, it’s really hard to do that.

[00:02:21]So I started on my own. It’s been great. I run a lean operation and everyone who works with my firm works with me directly. I’m happy to talk a little bit about how I got here too.

[00:02:33] Cory Miller: Yeah. Yeah. How’d you end up in trademark and copyright law?

[00:02:36] Suzann Moskowitz: I started when I was a kid, I was really into those kind of consumer protection TV shows all about scams and fighting scams and false advertising. And, if there was supposed to be a prize in the cereal box there, it was scam and it was unfair. And I think that led me to what I studied at Cornell, which was called consumer protection. And it was policy analysis and consumer protection and have all rolled up into this consumer economics major.

[00:03:04]What do you do from a major like that go to law school? And because I realized, consumer protection is an area of law and it evolved into studying, learning at the federal trade commission about ads and ad practices, which then evolved into, okay. I think I need to really actually go to law school, which I did at Stanford.

[00:03:22]That was a time when, studying technology law related to technology has been hot for a long time, but it was really hot then. And that got me some internships and some summer gigs that, that kind of put me right in the forefront of e-commerce copyright and trademark. And I really found that if I could do that all day long, I’d be so happy. So that’s what I’ve been doing. And again, I’ve been doing it on my own for quite a while now, which is great too.

[00:03:47]Cory Miller: Okay. So when we worked together specifically on TheVidaBars.com project, and I got to tell you my experience with all this, I’m so glad to work with someone that’s passionate about doing these things and passionate about helping entrepreneurs protect the things that they do and own in the world.

[00:04:04] And you helped me really unwind some things. But I’ll tell you here’s my confession. Okay. I did not. I did not like I’ve been through trademarking copyright issues in the past. Being a part of WordPress is open source software and, but there’s still copyright and trademark issues. Of course.

[00:04:22] And I’ll tell you, when we first started talking about trademarks, I was like, it feels like a hornet’s nest with Vito bars particularly, but any brand I’d go, oh man, you can really stir up a hornet’s nest with this. You were really awesome to walk me off the ledge. So to speak, to go, hold on, it’s not as…

[00:04:40]Suzann Moskowitz: and I will tell you too, the easiest thing for any attorney in any field to say is no, because that’s the real talk about CYA. If there’s any risk at all, I’ll just be like no different name but as somebody who was named things myself and worked with so many clients.

[00:04:54] I know that you don’t know is not a very satisfying answer. And I really tried to find a way to make things work.

[00:04:59] Cory Miller: Because you navigate you, don’t, it’s not just about saying that you navigated this to say, Hey, There’s a way to this. And over the years, I’ll tell you Suzanne this is your domain, right? And I love finding experts and using the experts. But for me, I was like, okay, there’s a hornet’s nest, but you navigate that with me. And one of the big things I’ll say is you didn’t just say no, but you found a way to say, we can figure this out together. And when I was talking to Anna, I was like, oh, this is going to cost thousands and thousands of dollars.

[00:05:31] It’s going to take months a big conversation. And we got on the phone and I was like in 40, I think it was like 30 minutes. I was like, ha, feel better or use the Suzanne and a way to that process for sure. And but having somebody on our side like that to navigate that, which is so good because I have worked with attorneys in the past.

[00:05:52] And so I want to give a glowing endorsement of Suzanne’s work.

[00:05:55] Suzann Moskowitz: Thank you. But I want to answer questions. I want to be helpful to your folks. Yeah. So any nice things about me as you’ve learned, but also I think to be helpful.

[00:06:04] Cory Miller: One of the key things you helped me real quickly was the difference between a trademark and the difference between a copyright share with me, please. That whole difference. Again,

[00:06:16] Suzann Moskowitz: you’re not the only one, even like I’ve been quoted in news articles and we talk about trademarks the whole time. And then they said the word copyright in the article as if copyright is the main heading of trademark. Totally different. It’s actually, I’d to think, once, once I tell people a few times, it’s easy to remember a trademark is really for your brand.

[00:06:34] Okay. It’s a word. It might be a logo. It might be a combination of a word and logo. It might be a slogan. So we’re talking about like a, just do it. It might be even something like the shape of an iPhone, the shape. I represent some, a shape of a bottle, the shape of the bottom of a bottle in the alcohol industry.

[00:06:52]It can, there’s a couple of crazy ones, like the sound like the NBC chimes, but it’s it’s something that says, this is a brand, this is the source of either goods or services. And so I know a lot of the folks here today are they run a service business. They have a site that is a retailer generally in the field of retail.

[00:07:10]But some people who are here might also be putting their name on goods. They’re also by putting their name on the service itself, they may be doing some consulting services or something else. I’m happy to. I’d love to hear a little more specifics if anybody wants to chime in. So that’s the trademark side is the origin of, what you are a name that brings that associates associated with who you are and what you sell, or even what you do.

[00:07:34] If you’re a nonprofit, you don’t actually sell something. A copyright is about content. So what’s content, it could be software code, it could be the entire visual user interface of your website. It could be a painting. It could be one photo you pull from the internet to put on your website, which is causing all kinds of, we can talk about it a little bit later, the kind of grief it’s been causing people lately.

[00:07:58]The idea that there’s images that are online there seem to be free for even on sites called free, but these are all copyright issues. And, there’s then the issue of the digital millennium copyright act, which you probably see in the terms and conditions of the things that you work with, or maybe that you’re actually putting up for yourself or other people.

[00:08:15] These are the things that help people navigate. But again, copyright is content and the, when you hear the word like licensed or unlicensed agreement, that’s all in that copyright bucket and trademark is brand.

[00:08:29] Cory Miller: Okay, that there was a big distinction for me. So when we go back, I want to scroll back to trademark for a second.

[00:08:36] So I tried to read all the stem word logo combinations, both slogan shape. This is so interesting to me. And this is the one I have been before we talked worried like pilling about the beehive, like really stirring up the beehive when I stepped into it. But the trademark is intended to protect something.

[00:08:57]It’s the one I hear about more when I think about legal and my miss communication about, or miss thought about trademark versus copyright is you file for a trademark. But my thought was, my understanding was copyright is when I write a sonnet…

[00:09:12] Suzann Moskowitz: It’s automatically copyrighted so you’re right. You’re right about that. So let me, I’ll do a briefly, I’m going to try not to be too economic because I do, I do talks at universities all the time. It was racking up. Let’s try to keep it more fun, but basically copyright and trademark have something in common, which is, they both exist even without any filing.

[00:09:30] Okay. But if you file and for the trademark, it’s the United States patent and trademark office U S PTO. And the copyright is us Padre mountains. If you actually pay your money in file. And when I say pay your money, if you do it here on your own, your minimum pay amount paid at the U S PTO is $250. Your minimum amount paid at the copyright office is 45 more likely 65, because there are lots of, lots of exceptions that don’t get you the cheapest one.

[00:09:58]If you register. It’s just like getting an extra insurance policy on your brand, but I don’t want to undersell the value of that insurance policy. It’s actually quite good bang for the buck because it gets you things like attorney’s feed paid. It gets you, things like access to federal courts. It puts you into these databases and by being in these databases, when other people like you, via Bowers people that, some of the brands that are here today, if you’re thinking about naming a company or a product, you are going to go into those databases first.

[00:10:31] And if you see that it’s taken, look at that you’ve avoided a whole conflict. You’ve prevented a lot of expensive grief, potentially. There’s lots of other benefits too, but that insurance policy I think is well worth it. And of course the prestige, just being able to go to investors, being able to talk about acquisition, one of the first going, going on shark tank.

[00:10:51]One of the first things they want to know is what you’ve locked down and I’m here to help people lock things down. But I will say the government will take your money for anything. They’ll find every slice and dice combination and color this, that, and what talk to me in the copyright world and the trademark world places like, some of these, I won’t name names, but some of these do it yourself.

[00:11:10]Automated sites for trademark registration. They don’t really add any advice. And so you might as well just go directly to the government site. If you’re not going to get the help of a lawyer, just do it yourself completely. Cause you’re not gonna really get help. I guess those sites might sell access to lawyers too, but that’s an add-on essentially if you’re, if you want to do it efficiently, you might actually, maybe a big firm might, might end up actually costing a lot more. But if you work with a small firm like myself who is still very experienced, it’s not an not going to end up costing you more. And you’re very, it’s very likely that you’re going to end up doing better because I don’t just take your money to file anything.

[00:11:51] I’m going to help you prioritize and not just file everything under the kitchen sink, but figure out the best bang for your buck.

[00:12:00] Cory Miller: Okay, definitely. And now that we’ve been to this process, I have been through it before and we had first use of a logo or a yeah. Logo, no a name. And we ended this is not Vida bar, different company, but we did have it.

[00:12:17] We ended up being able to district demonstrate first use. We had to go through their process and it wasn’t painful as painful for us, but I’m sure on the other side it was because they came after. Okay.

[00:12:28] Suzann Moskowitz: I handle disputes too who likes disputes? I guess some people do, but I sometimes I think I’m I’m too nice, but I’ve I’m just mean enough to resolve disputes and fight them to win as much as I can.

[00:12:41]Cory Miller: It’s this thing of, like you say, when you’re talking about shark tank or whatever, or acquisition and locked down IPA. So when we, when I sold my company let’s see, three years ago, that was one of the things I could say is we had a trademark on our name of our company,

[00:12:52] Suzann Moskowitz: It has economic value. You’re putting together these sheets of all your assets.

[00:12:56] They know some people have factories filled with product, and some people have code and copyrights and trademarks and maybe patents too, by the way I’m not a patent lawyer. I know a lot of good ones, but that’s not something I can answer questions.

[00:13:10] Cory Miller: Yeah. I have a couple of things. So now that we’ve broken out trademark and copyright, I want to ask what are the things as you work with clients that you go, Hey, this is something you probably want to put under the lock and key, or the insurance, kind of thing.

[00:13:28] Obviously I would guess. Company name like you were even asking me about commerce journey, for instance. So what are the things you think of the buckets underneath those that are maybe more important that we should be thinking about as entrepreneurs rolling out our e-commerce stores? Sure. With both buckets, trademark, and then copyright.

[00:13:46] Suzann Moskowitz: So yeah, with the understanding that the government will take your money, a lot of law firms will take your money to file everything. They’ll file a camera’s journey, commerce journey as a logo, even though, you see it behind you, it’s a simple font, even though you do also have the combined CJ logo, right?

[00:14:02] The CJ logo stands on its own. So that might be something to protect, but Commerce Journey in the font that’s behind you. Does that add that much to the trademark, to not just violate on its own the word itself, when you file the word mark for just the word camera’s journey that gives you flexibility. So if you in your advertising, you change your font, you change your colors, you can still claim trademark on it, no matter how you render it.

[00:14:28] So that’s the number one thing is the words the most flexible. But if your logo is unique, if it’s golden arches, if it’s a swoosh, if there’s something so special about your logo, that even without the words, it indicates who you are. Then I would say your logo is just as important to file on its own.

[00:14:44]So those are the main things. Some people say we were actually we’re actually commerce journey, LLC. Do we file that too? And the answer is no, that’s your business name because some people, your business name might be cl 1, 2, 3. And why C maybe how your bank knows you and how your insurance company knows you.

[00:15:03] That’s not what the real thing is. How does the world, and what the things that you sell or offer, would it bother you like enough that you’d want to Sue or at least that you’d want to stop them? What pieces of your property? For example, I talked to people about when you, when I work with a lot of people in the food business and some people selling packaged goods, online, some people with, smaller, bricks and mortar, retail, and they want to, sometimes they start with wanting to protect everything.

[00:15:36] And I say, listen, Starbucks has lots of trademarks, but they don’t protect, dark roast and light roast, even though those are listed as brands. I think they are, but you get my answer, but if they come up with some I’m going to, because I don’t like Starbucks that much, I’m not going to come up with one, but they have some things that have a really unique name.

[00:15:54]So the more unique your name, the more it’s worth protecting I like to tell you a little bit about choosing a good name if that’s okay.

[00:16:02] Cory Miller: Yes. You stole my question.

[00:16:06] Suzann Moskowitz: So by, by the nature of business, Sometimes we’re going to have to be generic in terms of what we are and what we do.

[00:16:14]If you are a foot doctor, I don’t think there’s too many podiatrists on this call, but if you’re a foot doctor, you’re not going to want to protect, put the word podiatry or foot doctor, because you can’t, first of all, the law won’t let you, it’s not fair to let you own the word foot doctor or podiatrist, right?

[00:16:33] So those are generic terms, but lots of people want to protect things that are also weak marks. And again, things like light roast, dark roast. Those are not quite no quite as generic. So then we get into things we’re going along the spectrum from bad marks that you can’t even register.

[00:16:50] And again, why would I take your money to do that? And why would you file that? When even if at the end of the day, you could end up with something the truth is, and again, this gets a little bit academic that there’s a type of trademark registration. That’s not as good. It’s called the supplemental register.

[00:17:06] And if you have to end up on the supplemental register, it’s just, it’s not worth as much. So if you can focus on your making your main brand, be something that’s more creative, more distinctive. Okay. So let’s go down the spectrum with Commerce Journey. So the word commerce, as you can understand is basically a generic word.

[00:17:27] It’s not as generic as laptop, which is, if you’re selling laptops, you can’t call it. Your brand laptops, commerce is a little, it’s a little more suggestive of a broad class of things, but essentially it would be considered a descriptive term when you’re talking about people in the field of commerce.

[00:17:44]But journey is a good word. Unless of course you’re leading journeys like through the Himalayas or something. You’re not this not literal. I’m sorry. It’s not literally a journey, but it’s not literally a journey. I’ll tell you the government’s getting stricter about this. Sometimes they call things literal when you’d say come on.

[00:18:03] And sometimes when we do searches for people and I’ll tell, I’ll talk about the search process too. But we do searches for people. You’d be surprised because they see things that are like how did that person get a registration? Why do you tell me this is not a good brand, but they got the registration and the answer is.

[00:18:19] Government has gotten stricter, much stricter, especially in the last five years, we get refusals all the time. So, my job, yeah. I could get the refusal and then I could charge you more to fight the refusal. But my preference is I want to help you find a brand that’s not going to get the refusal.

[00:18:34] I can never guarantee it, but I do my best to have such a high track record of getting them through the first time, because I’d rather just work with you and your next brand, then work with you on a fight. That’s the goal. So again, the easiest marks to register are the ones that have words, like journey and words that are a little mushier and more creative, but.

[00:18:52] Going further on the spectrum. There’s things made up words, like Exxon words, like Google, where it’s like Pepsi and Hulu. These kind of words. But there’s a trade-off there because the, what’s a Pepsi, of course, you know now, but you’re not going to call, if you have an e-commerce site and that specializes in selling things for teenage girls, you don’t want just like a made up word as your brand for the site, that’s not very useful. You probably want to say teen something or tween something or clothing something. And so I help people. I love it when I’m involved earlier in the process where I can help people, steer people to marks, they’re easier to protect, people sometimes come to me and say I already, I found the domain name or I paid for the domain name, but, I fought for it a little bit. It was a few hundred bucks, but I got it. So now it’s available. It’s my trademark. Well not exactly. So that’s a kind of a common misperception.

But I do work with domain names a lot, and I do want to say that domain names do go hand in hand with the trademark system and having the trademark, having the registered trademark is going to really help you, if you have some kind of domain name dispute, and also disputes related to handles and things on social media. That was me jumping around a little bit, basically saying get a creative mark because not only is it good for search engine optimization and getting the domain name you want, but it’s also much better for getting the trademark protected, but I get it not, everybody’s going to just make up a word I get and nor should they, but if you can combine a kind of a more creative word with a more descriptive word those marks are winners, especially when you’re online and you’re really trying to get people there.

[00:20:29] Cory Miller: Gotcha. Okay. That is great. Okay. Now, so we talked a little bit about trademark. We’ll probably be coming back to that for sure. But tell me about copyright. That was my thing. I wrote something, I posted it on the web. It’s copywritten. But…

[00:20:43] Suzann Moskowitz: Yes. So it is automatically. Okay. So yes. When people say I wrote it down, I mailed it to myself and the point you don’t need to mail it to yourself. The fact is, if you want to prove that you developed something first, then that would be, in the context of a dispute, your computer files are going to be, the forensics are going to prove that you wrote it first.

[00:21:03] Probably you don’t need to mail it to yourself, but what you should do is pay the $45 or $65. And just file the darn thing. If you file a trademark. Timely means either before someone copies you or within 90 days of when you first put it out there in the world, because it’s not 90 days of when you first put it, put your pen to paper.

[00:21:20] It’s 90 days when you put it out there in the world, the publication, if you do that on time, then you’re eligible for what’s called statutory damages, which means that you don’t even have to prove that you were hurt. You’re just entitled to money. If somebody copies you and what happens, especially with websites, and I’ve seen it many times is people don’t think to actually file for the content, the user experience of their website, because we’re using, the truth is we’re using, WooCommerce, we’re using elementary, we’re using these tools, right?

[00:21:52] And we don’t own the copyright in the underlying software, but you put something together that has a combination of images and words and colors and designs. Suddenly that’s something that somebody might. Rip off. And if you don’t have a copyright registration, feel free to send a letter, feel free to do a take down notice under the DMCA digital millennium copyright act, but you’re not going to get much of a remedy unless you’ve really been harmed and proving you’ve, it’s really expensive to prove you’ve been harmed.

[00:22:18] Plus you got to pay your lawyer, plus you gotta pay the, the economist approved the damages. If you have a copyright registration, if you get in the habit of just filing for some of your key assets, especially if you think they’re likely to be copied Then, if somebody does copy you, we’re in a great position.

[00:22:33] If we wait until after the fact, our remedies are very limited. Now I will say some of you may have heard that there’s been some amendments that are coming through about revisions to create a copyright small claims court, but that hasn’t happened yet, but when it does happen, it will provide some rights for people who didn’t think to file something, then there’s an infringement, and then they go after it.

[00:22:56] They’re not going to be entitled to remedies that are quite as good, but it’s something it’s a good step. But on the flip side hopefully nobody on this call has been the victim. And I do say victim of. Copyright trolls who there’s some, there’s arguably, there’s some talk of some entrapment, whether these sites that put up pictures and they say that they’re free.

[00:23:19] And then there’s a lot of maybe there’s fine print where maybe the terms of use actually change where you think you can use it on your commercial website and then something changes. And while you get a letter and then you hear from a lawyer and they demand, I don’t know, eight, nine, $10,000 for one picture that you’ve used.

[00:23:35]If your site’s a commercial website, they’re going to demand more. And even though. I listen, I represent content creators. I represent photographers. I represent people who make a living from this content that’s online. And sometimes I have to represent an artist who’s been ripped off, but I see the other side of it from the small business perspective where they’re using content, they think that they’re using content they’re entitled to use.

[00:24:05] So I call it, it’s essentially innocent infringement. If it’s, if in if infringement at all. And so people get these letters, sometimes they throw them away. Probably not a great idea because it might escalate. But if you’re, and again, I do say victim, because I think so many, almost everyone that I talk to, not everyone, but almost everyone I talked to that’s received a letter like this was completely unaware that what they were doing could possibly be a violation.

[00:24:34] Okay. So there is some concern that these changes to copyright law will even increase the trolling for of this, diminimous innocent infringement. So anyhow, a little bit academic, actually, if you go to my blog, I did write an article about this recently because it’s come up so much this year, so I can drop a link to that at some point, too.

[00:24:54] Cory Miller: Yeah. So I put in a link here to the moskowitzfirm.com and keeptm.com. So you can look through Suzanne’s blog

[00:25:02] Suzann Moskowitz: …with news. I put up all my articles there and there’s more stuff on it.

[00:25:06] Cory Miller: So point of clarification, when you said 90 days, you said if something is very important to you, you might think through 90 days before publication.

[00:25:16] Suzann Moskowitz: Okay. So you can a file at any time before publication you’re allowed to file and that’s a great practice. Now you may say what if it changes a little bit. It’s okay. Because the standard is substantial similarity, as long as, if somebody’s happy is something that’s substantially similar to yours, a few words here and there probably aren’t going to make a difference.

[00:25:35] If you do a wholesale revision of your website, like I recently did, I’m going to file because I, basically just put up my new content. So now the clock starts ticking. So I have 90 days to file it. Or if nobody, if somebody in printers, if somebody copies me within these 90 days then  I get this three-month catch-up window.

[00:25:57] If I wait a few years to register my new content, then I should just hope that I remember to register it before someone copies me. I have to walk people through that part of things does get a little bit confusing. But the easiest thing is, as soon as you create something and if you think somebody might copy it, spend the money, get the registration.

[00:26:18] If you need a lawyer’s help, it shouldn’t be too expensive, but the copyright office is not super user-friendly. I’ll tell you that. A lot of my clients actually have me, work with me for an we set up just that an engagement where I help them set up their own accounts so that they can do it on their own.

[00:26:34] Especially when they’re creating a lot of content. There are some new procedures, let’s say you’re a blogger. You’re creating content on a regular basis. You don’t have to pay $65 for each post. Even with Instagram, things like that. You can register a series of posts, but if you’re taking pictures that are not yours creating names or whatever you can’t really protect that because you don’t own the underlying picture.

[00:26:56] So I walk people through this personally.

[00:27:00] Cory Miller: So what if you have like a directory of different, user-generated content. How would that fall into a potential copyright?

[00:27:10] Suzann Moskowitz: Let me put it this way. Recipes, not protectable. Phonebooks not protectable, but let’s say you and your grandma write a book about Italian cooking together, and it has pictures in it. It has the story of how you simmered the sauce and all that stuff. That part has, sufficient creative authorship. If something is just plain factual, not protectable. Related to that also is sometimes artists design things, maybe designs on t-shirts and things like that are very like, it’s not that they’re simple.

[00:27:43] It wasn’t like, it was easy for them to create. They spent days and days creating it, but the design is simple and geometric. Those things may not be eligible for copyright protection either because they’re too simple. Also short phrases, a short poem, you can’t protect. A long poem you can protect. So there’s a lot of fuzziness and in both the trademark and copyright systems, there’s a human being that reviews your application and they make the decision.

[00:28:09] And sometimes the decision is very frustrating. But again with experience, I’m generally pretty good at predicting if you’re going to be throwing away your money and

[00:28:18]Cory Miller: So you can’t just say corymiller.com, commercejourney.com, blanket copyright over everything there.

[00:28:25]Suzann Moskowitz: You could take all the content that’s on your website on a certain date, do a snapshot of it, put it all together in one PDF and do that. Sure. A series of audio. It’s a little tricky, cause your interviews are on different days. Things like that too. There’s some different rules for like the motion picture part of it.

[00:28:41]Sometimes I have clients who, they do have a lot of content on their website, but let’s say they do some jewelry design or something, and they’re a retailer of their own jewelry, something like that. We might do one registration for the whole site, and then we might have some greatest hits, spend another $65 in a little more attorney time.

[00:28:59] Cause we’ve already created a template and let’s take the page. That’s most likely to be happy with the image. And let’s register that on its own because again, not to get too academic, but because of substantial similarity, you look at what percentage of it was copied and this and that.

[00:29:14] So protecting the greatest hits on their own sometimes is a good idea. Cause you, if you have something really good buried in your story you might want to protect that, or let’s say you do something where you write instruction manuals, but you’ve got this amazing flow chart at the end of the book.

[00:29:28] You might also want to protect the flow chart on its own. If the flow chart is sufficiently, not just fact, but has design elements and things that are copyright involved. This is, this stuff is not easy. I’ve done this stuff for a long time. It’s that I, even though much of it, I can do very quickly and easy.

[00:29:46] A lot of times I have to, refer back to the rules because especially with technology, you don’t want to file multiple postings that were posted together. And if you’ve got issues where you have multiple creators, joint authorship, they can get a little complicated.

[00:29:59] One of the things that comes up a lot when I’m working on a copyright is when you have a contractor working for you, do you own it? The answer is unless you have an agreement that really is clear that it’s either work made for hire were actually assigned to you. If you don’t have those things in your agreement.

[00:30:17] Well, technically speaking, the contractor owns what they’ve created. If they’re your employee, it’s a different story. If it’s an employee of a company, the company owns it. So that’s easier, but for contractors, you better be careful. And sometimes this gets into state law, certainly can’t advise on the law of every stage.

[00:30:33]You may want to consult with a local attorney because we get into issues of employee, local state issues of employment, law, things like that.

[00:30:39] Cory Miller: Yeah, that’s such a good…

[00:30:41]Suzann Moskowitz: that all falls into the bucket of copyright law. I do probably as much work for contractors as the people who hire them. So of course, like I have good language for either situation.

[00:30:51] Cory Miller: Sure. Yeah, absolutely.

[00:30:54] Suzann Moskowitz: Don’t rely on a handshake that’s if you know of any, if I could tell you anything else and I don’t care that they’re your cousin, your brother, your boyfriend, because they, one day they may not be your boyfriend.

[00:31:05]Get things in writing and that’s tricky. And I always tell people just blame a lawyer. Blame me, lead the email with, I know this seems silly, but my lawyer says dot dot dot.

[00:31:15] Cory Miller: Okay, so here I want to transition and we’ve got some questions coming in, which is great.

[00:31:18] If you have questions for Suzanne, please post those in the Q and a button right below this. Okay. We’ve taken the time to find our trademark or, our name we’ve come to you. We’ve done that process. And then it’s out in the world. Okay. Now my, and this is myth-busting I think, but I want to make sure I’m on right here.

[00:31:38]So now it’s out there, but one key is protecting that too, right? Like it’s not enough just to say it’s on file with the USPTO. You have to defend that.

[00:31:49] Suzann Moskowitz: So I do want to say that, a lot of people who file marks. File them and trade on them, essentially, they use them.

[00:31:55]And I, hope that they remember to continue using them consistently. If it’s a logo and you change your logo, you might have a problem renewing that logo you’ll lose your rights to use it or lose it system. But one of the important things that some clients just opt out of is monitoring.

[00:32:12] And that’s the idea of looking at who else is using a similar mark. Now I want to take a step back because monitoring actually looks a lot like what we do before we choose a mark, which is a search, it’s a risk assessment to see who else is out there. I’ve done this with clients for so many years that I’ve gotten it down to a science.

[00:32:30]However, it really is an art of course, because there’s so many databases we can look at We don’t just look at Google. We don’t just look at the databases that they, us PTL. I subscribe to some proprietary databases that helped me get through a lot of information quickly, but it’s certainly not the only way that I do my searching.

[00:32:48] And I’m not a robot. For different types of companies require different types of searching and go into different databases. Sometimes the social media aspect is really important. Sometimes the Hoover’s business database basis and things like that are really important. So it’s case by case basis. But I always offer clients a lot of choices and what one of the things that, that over the years I realized there’s some clients want fewer choices.

[00:33:11] They want fewer decision points. So one of the reasons I put together this kind of keep what’s yours program is because I want to give people an option, especially when they’re, they’re juggling a lot of things and they want to just be given, just tell me what to do, Suzanne. I hear that a lot.

[00:33:27] Just telling me what to do. So I’ve come up with can look at what, like the average of what people do is, and I came up with this package, that’s an average amount of time to do things. And then it includes the searching. It includes the filing costs, and then it includes what you’re talking about, the protection. So what’s the protect. The protect is we actually subscribe to a database where we see every week, all the marks that have been filed that meet the standard of similarity to your mark. And I don’t want to bother my clients with an update every single week about what comes up. As Cory knows, like when we filed something, nothing’s come up yet.

[00:34:04] So there’s nothing to bother you with. Sometimes I write clients and I say, I think this is a really low risk situation, but I’m going to tell you about it. Anyhow. And sometimes I say, oh my God, there’s a real issue here. Somebody filed after you. And I think we should do something about it. And the nice thing about monitoring is we catch it early on because if we only catch it after it’s on store shelves or after their website is launched, it’s gonna probably be a huge pain in the butt.

[00:34:31]But if we catch it early on, it’s going to save you mine. So I built monitoring into my keep packages. Not forever. You got to eventually be subscribed, but a typical, because I don’t have one flat fee, but for every client I do after we talk, I do give them a flat fee in writing.

[00:34:46] And then the invoice will match what’s in the flat fee right now. It’s 2021. A typical key package is a thousand dollars. Doesn’t include your government fees. I can’t include that because I have no idea how many classes you’re going to file in. And I don’t know if you’re going to file the more expensive government way or less expensive.

[00:35:03] Typical government fee started $250. A lot of people want to go custom. But I try to save you money. I try to find a way to get it into the standard classes so that you’ll spend a little bit less. So that’s the long answer to what we mean by protect. And then of course,

[00:35:20] Cory Miller: yeah, you were getting right there.

[00:35:21] Suzann Moskowitz: And I tell my clients, you don’t want to pay me to run the Google alerts. You want to set up your own weekly, Google alerts, they’re free. They’re going to find what’s on the web and people will sell you with these alerts. And I have clients who, want somebody to do these alerts for them and go through the results.

[00:35:36] And, as a firm, I can offer that too. But I believe that for most businesses you should be doing your own free Google, weekly alerts set up a bunch. And for those who don’t know, you just, it’s very easy, Google it. And then you set up a bunch of things in quotes. You, if you’re getting too many results, you narrow it down a little bit and then.

[00:35:54] You reached out to me and you say, do you think this is a problem? And my practice is not to charge you to respond to that email. It’s to say, okay, take a look. Let’s talk. I always give, Kurt, I always give a courtesy consultation beforehand. And then when new things come up for my clients, I’m always happy to talk.

[00:36:12] And then I follow up and say, okay, here’s what I think we should do. We should send a letter. And here’s my flat fee for sending that letter. I don’t know what’s going to happen after that letter, but if you have a trademark registration, it’s more likely than not, or it’s more or less, if it’s your most likely scenario that it’s going to go away more easily.

[00:36:29] Not always. We have to be very careful about sending letters though, because sometimes when you think somebody’s copying, you turns out they came first. Yeah, no, that happens a lot, again, an innocent thing that happens sometimes we can’t, no matter how much searching we do, no matter if you use the most expensive 10 hours of searching and we order a big thick search report from Reuters, which we can do to, for an extra thousand dollars, if you want.

[00:36:55] Even, so we’re not gonna necessarily find every brand that shows up at the farmer’s market, in a small town that claims that they have rights and they do have rights. They may not have nationwide rights, which you get for a federal registration for trademarks, but they have some geographic rights.

[00:37:09] So we do have to be careful. So the first thing that I always ask when we have an issue where monitoring is sure you came first, maybe we need to do a little research on that before we start spending money and raising flags there.

[00:37:23]Cory Miller:  So Katie has that question about first use. And I’m curious about this because there’s one thing that is, it seems like you can do the reverse when you’re trying to start of what you said about monitoring.

[00:37:33] When you’re trying to come up with a name is hit the USPTO. Do a Google search. But there also seems as how do you prove first you use and how do you do your due diligence from a…

[00:37:46] Suzann Moskowitz: Great question. Okay. So a few of the things I do, archive.org. That’s the internet archive. I look at old versions of websites.

[00:37:53] I go to research, but you can just go to any who is site. I like domain tools because they have a little more richer information about the history of a domain name. These are just some of the things that I do. I also work with investigative firms and I call them and they do things like they can legally do.

[00:38:12] Pretexting like making phone calls on your behalf. I have certainly know people who just do it on their own and then they report to me. But, I can’t really recommend that because it’s, a little bit dangerous to start picking up the phone and pretending something. But there’s a legal way to do that, to get information to, from the people who answer the phone to try to figure out who came first.

[00:38:29] And this also comes up with, when you think when there’s a brand, you really want someone has a registration and you’re 99% sure that they’ve abandoned it. And you want to know a hundred percent that they’ve abandoned it. Because if they haven’t, you’re going to be really throwing good money after bad to try to deal with that.

[00:38:48] There are, if they actually have abandoned it, there are procedures that the USPTO as a trademark trial and appeal board, they get expensive. What I always try to do is inform my clients of these sort of these official procedures for getting things canceled and this and that when they’re abandoned, when, if we do the research and determined they’re abandoned.

[00:39:06]But a lot of times a phone call or a letter is a nice cost effective approach where he had a deal. Just have to be real careful about asking for permission, if you want to do something and you’d want to find out because, by calling someone up, identifying yourself, saying you’re thinking about using some brand, you’re really putting yourself out there and it could be really flipped on you into a lawsuit against you.

[00:39:25]Nope. Before you make a phone call, I’ll be sure you do your diligence. I know who you’re reaching out to, and you better be prepared for them to say, absolutely not.

[00:39:33] Cory Miller: Yeah. You talked about like the farmer’s market scenario. We actually ran into this couple of years ago. There was somebody in Oklahoma City, we rolled out a brand for a service-based business. And I don’t know if we had done our, initial those Google searches or whatever, but we were in the same city and had no idea these people even existed. Then they happened to be customers. So they wrote a letter and we ended up changing the name and everything just because they didn’t get into the law, but it’s, that’s what this is why it causes me angst is like the farmer’s market scenario or somebody like you still do your due diligence and or enough of it.

[00:40:09] And somebody shows up on your door and you’re like, oh my God.

[00:40:12]Suzann Moskowitz: You know that you’re raising a really good point that like, no matter how much due diligence you do, sometimes, you just can’t control everything and good news. That’s the same, just like floods. We can’t control in earthquakes and pandemics. Business insurance. Well maybe the pandemics don’t help so much for the business… insurance doesn’t help so much for pandemics. But business insurance is going to help a lot for some of these things, including, copyright lawsuits defending you. It’s part of most standard business insurance now.

[00:40:39] And if you’re starting a company you may not be one of the first questions you ask a potential carrier about it. See if your agent can speak intelligently about intellectual property protection, which is usually considered part of advertising injury protection. And that’s a little bit of a fallback.

[00:40:56] Cory Miller: So when that kind of insurance are we talking about like general liability and pushing in down that, and then asking the agent, does it cover IP?

[00:41:04] Suzann Moskowitz: Does it cover IP is right. Sometimes it’s part of the cyber property, which has become standard in policies.

[00:41:09]I’m no insurance agent either. But I found that in the last few years they’ve gotten much more adept at helping my clients know what they’re protected against.

[00:41:17] Cory Miller: That’s great because thinking about that going okay, there’s been two projects actually in the past 15 years that we’ve gotten, had to change stuff and that’s a lot of energy, time, money, all that stuff to try to change brand once you’ve been through the process.

[00:41:36] Suzann Moskowitz: If you’re an online business, it’s a little bit easier, you’re not, printing a million units of something. Emblazing a name on something it’s easier, certainly. But it still sucks, if nothing else you’re emotionally attached to the name.

[00:41:49] That’s why, I think the heartbreak is a big part of it. A lot of when I’m talking to people, for the first time, sometimes our first conversation is when they’re experiencing that heartbreak and they’re trying desperately, to hang onto that name.

[00:42:01] Sometimes you can. There’s all kinds of deals to be made. There’s all kinds of ways that, depending on where you look at, who’s on the other side and sometimes they’ve got deep pockets and sometimes they’re going to, maybe they’re going to be willing to pay you plenty to change your name.

[00:42:14] And maybe that heartbreak goes away when you realize you can buy a really nice new sign. And so really, really, cool new marketing pieces sometimes not always.

[00:42:25] Cory Miller: Yeah. And then there’s also categories, right? So apple computer is the apple, but then there’s Apple the grocery store

[00:42:33] Suzann Moskowitz: Just because someone says you’re infringing doesn’t mean that you necessarily are.

[00:42:37] We got to really look at the facts and circumstances because of course, like lots of brands can co-exist the problem is that, you can’t really open a Google restaurant. Okay. Just because they don’t have a restaurant because when they’re so famous, And they have so many different things. But Apple is different because the Apple is used by other companies.

[00:42:54] Although, apple is obviously expanded into music they used to have a dispute with Apple Music. And then eventually, the Apple Music, that was the label for the Beatles. And, eventually they took over the music space too, and they got the rights to that. So the more unique, the word is the broader the claim they can have to it.

[00:43:12] But if somebody, if your company is called, United something or elevation. There’s certain words that are really common. And common in the trademark space. Superior this and that. Feel free to shout, Getty. But when my clients come to me and say, I want to go after this guy, I think they’re copying me. A lot of times I say, take a deep breath. Is this really hurting your business? Can you not try to make me be that kind of lawyer because I’ve worked really hard to not be that kind of lawyer. But you’re right. Like people are people definitely overreach all the time.

[00:43:47] Cory Miller: Okay. I want to get some of these questions. Thank you so much for that. Cassandra says, what about if the trademark is your name, this person is in media and entertainment, a performer and online content creator. And wondering if trademark marking, my name is worth it.

[00:44:00] Suzann Moskowitz: You’re asking great questions. If you use your name as a brand. Absolutely. I have many names that are brands.

[00:44:06] Some that are my clients. Some are musicians, some are artists and it’s because on their website, their name is front and center. So if you use your name as a brand, great. There’s a few academic things to note. If it’s only your last name, it may be considered descriptive. And so you have to wait.

[00:44:23] So for example, the Moskowitz Firm, my law firm, has a federal trademark registration for The Moskowitz Firm. But I waited five years because I know that there’s a rule about last names. That last names are considered descriptive until you’re in business for five years, if you don’t, but if you file your first name and last name, that rule doesn’t apply.

[00:44:44] So basically ask a lawyer, but filing a name is a great idea. Now the follow-up natural follow-up question is, what if my name is McDonald’s? Can I open a burger restaurant? And the answer is no, because they came first and even if you’re acting in good faith, it’s hard to believe you don’t know about McDonald’s restaurants.

[00:45:03]So that’s just not gonna fly, but there are some gray areas here where you truly didn’t know about somebody as some business, and it truly is your name. But again, case by case analysis, but protecting your name, you’re using your name as a brand. And if it would bother you, if somebody else came in with the same name then you should have the protection of a trademark who should have that insurance policy, you should have those benefits.

[00:45:25] Cory Miller: Okay. So if one is on that route, that path or someone purchases, domain names of top high school, college athletes, then the athlete becomes a professional NBA player has branding agreements. Does the athlete need to trademark their name to protect themselves for anyone buying their name as a domain name?

[00:45:42] Suzann Moskowitz: Yes. This raises a couple of questions. One is, athletes do protect their names. I work with athletes to protect names and names of, they have their brands their apparel brands, things like that too. But I do want to point out. That if I would, at the beginning of the question, I wasn’t sure if we’re talking about the athlete’s own people, protecting it, with permission or trying to monetize an athlete’s name, hoping it goes somewhere.

[00:46:04] There is something called forget trademark, forget copyright. There’s something called the right of publicity. So here’s right of publicity. Making money from someone else’s name. Okay. So want to make it even worse, put a printed t-shirt with a picture of an athlete and write their name on it and spell it.

[00:46:24]You’re going to be, there’s going to be issues of copyright because of the photo, maybe trademark, if they’ve registered their name and write a publicity because you’re making money from their image. So be very careful, especially if you’re trying to, let’s say you’re blogging about things or you’re putting things up on your social media.

[00:46:41] Be very careful, even deceased celebrities. There are publicity rights in certain states, including, California in places where there’s people who make money from who they are. But that is not just California. And I can’t advise on California law of course, but what I’m trying to say is let’s be very careful and make sure you have written permission for these kinds of uses.

[00:47:02]Cory Miller: Frank asked, should I register the trademark as myself or my company? I am a ESCORP. My wife and I are the only shareholders. Is it better to have it in the corporate name?

[00:47:13] Suzann Moskowitz: Yeah, I’m going to CYA a little bit and say your own accountant might have, there may be reasons for you that you want to shield it in the organization, but I’ll tell you as a general principle in trademarks, as long as it’s legitimately used and controlled by the person who signs by that, by the owner, whoever is listed as the owner, then it’s valid from the day one.

[00:47:37] And you could decide at any point to transfer it into the organization which is not very expensive. There’s a recording fee of $40 per month. If you use a lawyer as a little bit of paperwork to do that. But ask your accountant. If there’s some reason the asset should be in the organization.

[00:47:54] I’ll say from my experience, my clients, we do have the entities would typically use the entities to keep all in one place.

[00:48:01] Cory Miller: Yep. Correct. Katie says in applying for a trademark, is it helpful to have the name’s presence already on Facebook, Twitter, or some social media?

[00:48:12]Suzann Moskowitz:  That’s an issue of timing. Actually , one of my articles that’s coming up, you should take a look at my news page. It has to do with trademark timing because there’s an advantage to filing in two parts. So that’s called an intention to use trademark application. The advantage is you hold your place in line before you go public with that mark.

[00:48:32] And then even if it takes you years to actually launch. You can keep paying extension fees. You can’t go forever. You can go about three years after final approval. You hold your place in line in front of everyone else. This of course, I’m on the flip side of this law too, where someone has great mark.

[00:48:47] They really want to get it. And there’s 10 people ahead of them in line. And even when we think that those people are going nowhere, we just have to wait. And so sometimes I tell clients, you might be able to get this mark, but if you want a mark that you can protect sooner you might want to consider getting something a little more creative. I will say just as a sidebar certainly e-commerce platforms like Amazon used to have a rule that you needed to have the mark registered before you could get into all their kind of brand management programs. Now you can, at least as of the last, they changed their rules sometimes and they have they’re allowed to, they can do that because they’re a private company.

[00:49:19] Just if you guys run your own platform, you can have your own rules too. Their rule now allows for pending applications. So that’s good because you might be pending for a long time. But to get back to your question, the only advantage to filing after you launch is you save money because you do it in one part.

[00:49:39] Yeah. So. By filing in two parts, you can put your flag in the sand, it’s yours, but then you gotta pay something else later. So it increases your legal fees. Yeah. About 25%. But, and then you pay a government fee of another hundred dollars later down the road. So it is a good idea. If money is no object, to file as intent to use before you launch, if you’re trying to save a little bit of money or if you just haven’t gotten around to it, certainly good to file as soon as you’re launched, but launched, in terms of the trademark rule is in use in interstate commerce. That’s for the USPTO interstate means across state lines.

[00:50:19] So it’s not like I have an informational website saying coming soon. It is, I have a real website. And if I file as a retailer of teen girl clothing, that I’ve actually sold something, shipped it. And I can really evidence that and not just like I’ve made one sale so I could get my trademark. Okay. I’m not going to sign off on that for you.

[00:50:44] It’s having a real record of real bonafide sales that you’re really out there. So basically the sooner, the better, but you save, but yes, you do save a little bit of money if you do it after you launch.

[00:50:56] Cory Miller: Thanks. Okay. I don’t know what these acronyms mean, but Lori asks, we just received an NOA to submit.

[00:51:04] Suzann Moskowitz: Yes. The trademark has been approved by the government, so that’s good news, but it’s not done yet

[00:51:11]Cory Miller:  to submit a SOU

[00:51:13] Suzann Moskowitz: statement of use yes. With the

[00:51:15] Cory Miller: logo and website sufficient.

[00:51:18] Suzann Moskowitz: Depends on your actual use. So that’s, is it sufficient for, so I can’t give legal advice, there’s two questions there. One, is it a good specimen? Does it look good? Is it a nice picture, but if, even if you’ve got this great picture of your website up, if the reality is you’re filing in the class as a retailer of apparel, but you haven’t sold a darn thing. Then no, it’s not good. If you sold a bunch, right? If you are an informational website, again, this is the Commerce Journey. We’re talking about commerce, not information and entertainment. But let’s just say you also file in the class for providing information about topics relevant to teen girls. Maybe you on day one, you do provide that information.

[00:51:59] So you can get a registration for that, but you cannot get the registration. Yeah. For the retail commerce part of it

[00:52:07] Cory Miller: Excellent. All right. Suzanne, could you tell us a little about your keep service and I’m sorry, it’s only two minutes until,

[00:52:15] Suzann Moskowitz: so you can go through my main site or you can go keeptm.com.

[00:52:19]Thanks. And so that kind of breaks down to the sort of the quick and simple approach, but I still do everything a la carte also, especially if you come to me and say, I’m considering 10 different names, I don’t know which one to choose. Well you’re not ready to use my keep service because that’s for people who are further in the process and just ready to go.

[00:52:34]If we do that, call me, just set up an appointment in my website and we talk about what’s best for you. And then I put it in writing and then you say, go, and then we go. It’s pretty straightforward because I run the show. I have some help, but really, if I’m doing a search, I’m doing that search and I’m giving you my opinion about registered mobility and the phone call is going to be included. And I’m going to answer all your questions, not something else.

[00:53:02] Cory Miller: Excellent. Okay. Thank you so much. This has been power packed, like gosh…

[00:53:06] Suzann Moskowitz: There’s a lot of information. And I’m sorry if we got a little too in the weeds. I love this stuff. I can talk about it a lot. Hopefully, if somebody’s rewatching, if they can put it in like double speed and if I got to…

[00:53:18] Cory Miller: No, if anything, I need to slow it down a little bit. Cause I’m like, oh, this is great information. Any last takeaways before we say thank you so much. And all that, any last takeaways, any thoughts? Parting thoughts,

[00:53:28] Suzann Moskowitz: Parting thoughts. Slow down. Be careful before you launch something because this is a world where, first of all brands, it’s real saturated. It’s hard to find it. There’s so many people fighting in a limited space, so slow down and remember that not everything’s fair.

[00:53:50] And sometimes bullies are going to keep you from doing things that absolutely are within your rights under the law. But sometimes we have to make business decisions that a name it’s just not worth pursuing. So we have a lot of hard conversations. But if you’re open-minded there’s often a creative approach to get the result you’re looking for

[00:54:12]Cory Miller: Suzanne Moskowitz of the Moskowitzfirm.com keeptm.com. Also thank you for being on this Commerce Journey webinar today, and talking about trademarks and copyrights.

[00:54:23]Suzann Moskowitz:  Great. Thank you so much Cory. Have a great afternoon and hope to hear from some folks.

[00:54:29] Cory Miller: All right. See you all.

[00:54:30] Thank you for being at this Commerce Journey webinar, and you can go find Suzanne and her work at keeptm.com. Thanks everybody.

[00:54:38] Suzann Moskowitz: Bye.