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This is an introduction to the “Law & Business” podcast.
My focus in my law practice is on intellectual property. So, I wanted to discuss a series of questions that a potential client asked me on the phone earlier in the day: What do I need to do to protect the trademark? What is a trademark, actually?
These are a few thoughts to introduce the “Law & Business” podcast.
Here is a lightly-edited transcript of the podcast episode:
Hi there. I’m Anthony Verna. Thank you for listening to the Law & Business Podcast.
This first entry, consider an episode zero. It’s an introduction to what the Law & Business Podcast is.
I am an attorney. I practice intellectual property: patents, trademark, copyright, trade dress and advertising and promotion law.
I wanted to create this podcast to discuss issues of law and
business because most of my clients are business and we see a wave of
entrepreneurship in today’s world and it’s, it’s a wonderful wave and I think
many business owners have this idea of barging into business, into the business
world, like a bull in the China shop. You need to be a little more gentle than
that sometimes. And that’s the point of this podcast: to discuss issues that I
see as I practice law and as other colleagues of mine see as they practice law
and I’m going to have guests and I’m going to be able to discuss issues fully
that the intersect with what I do and intersect with what my colleagues do.
I look forward to having fruitful discussions and I look forward to having um,
your interaction. You can reach me at anthony@vernalaw.com
I’m the managing partner at Verna Law, P.C. in Rye, New York, outside New York City. This may be considered attorney advertising. You can reach us at (914)908-6757.
If you have any questions, don’t hesitate to pick up the
phone and call. My first topic is really going to be a little on the basic side
with what I do. And that’s because somebody asked me a question today and that
question is, well, when, when should I trademark something and when should I
tell my clients about trademarks? And, and want to unpack that a little bit. A
trademark is anything that relates back to a business.
And that can be a name, it can be a logo, it can even be a
color or a sound. And that relationship back to the business is so that
consumers understand quality of goods and services. So number one, I don’t want
businesses to wait until there’s a problem cause usually if there’s a problem
then by then it’s too late. I don’t want that to happen. That’s issue one.
Issue two is understanding that a trademark is a noun not of her and that
trademark rights are in fact created when this name, logo, slogan, color or
sound is associated with goods or services that our business provides to consumers
and whether the consumer is a person or another business, that’s okay. So I
don’t want somebody to just sit there and say, “I’ll wait till I’m in trouble”,
because by then it might be too late.
One of the first steps that that we take and, and I advise all businesses to,
to, to really be diligent and being defensive because there are so many other
businesses out there. There are so many competitors. And in this particular
instance, the first step that we do when a client gives us a trademark or a
proposed trademark is a trademark search. I want to find out what’s out there
and I want to see what possible competitors, I don’t want an infringement
lawsuit for our client. They’re nasty. I handle plenty of trademark disputes
when somebody comes to me and they’re not in the middle of the dispute. The
idea is: Can we not be in one? I want to find out what competitors are out
there with something similar. I want to see what outside of the industry, because
trademarks are divided by industry. I want to see what else is out there that
might bleed into this industry.
And I’ve advised clients, that they might want to change the trademark. Why?
Because if it’s early on, you can see that there is an ability to change the
name of a product, change a logo, make changes to avoid a conflict. There are
times when that’s not possible and certainly during the life of this podcast
we’ll be talking about what happens when a business gets sued. But right now,
that’s not something that I want for business. When a business comes to me and
says, can I use this trademark cause use and registration go hand in hand. If
you can’t use a trademark, you’re not going to be able to register it. And if
you’re not going to be able to register it because there’s some, you know,
prior mark or might be a famous trademark out there or it’s just descriptive. Chances
are you can’t register it. Use and registration go hand in hand. If you can use
it, you can register it. If you can’t register it, there’s probably a reason
why. And so you probably should not use it. So from those particular
standpoints, I try to be defensive in the beginning because my goal is to
protect the client and that’s always going to be, um, a goal. And even when
we’re, we’re in a trademark dispute of any sort, I don’t want that to happen.
Our goal is to protect a client.
I would say another issue in trademark law is people not understanding the
process. And I understand that as a trademark attorney, this process can be a
little elongated. Sometimes it can be up to us. And so from that particular
standpoint at that, that’s one that’s why we’re here as trademark attorneys.
But also I want the client to understand that the process, despite being a long
gated and despite having dead air doesn’t always um, you know, seems so
Byzantine. And that’s because trademarks are divided by not just the marks
themselves, but also how it relates to the goods and services. And the
trademark application process is just that. It’s a process. It’s an
application, it’s not a rubber stamp. And the patent and trademark office can
reject the application and that’s a real difficulty. And then third parties can
object to an application. And if a third party is objecting to your
application, it’s practically a lawsuit.
So you want to go in with information and that’s what this trademark search
does. It allows us to create information. And I, what I really like about it, I
see the information and I can create a roadmap and I can say this mark is going
to cause an issue. But here are your defenses or this Mark’s going to cause an
issue and here are your defenses. I give the client the information and then we
can act upon that information. Doing the work up front helps the work in the
back. And that’s really the key when it comes to creating a new product, a new
line of services, a new advertising slogan. That’s what we’re looking for. We’re
looking for due diligence because there’s flexibility and trademark law. You
can change the trademark. Trademarks are optional and there are federal cases
that blatantly say trademarks are optional. You don’t have to stick with one if
you do. And there are others out there, there are consequences, but they’re
optional. So my first issue is let’s do the due diligence. Let’s get our
trademark search. Let’s see what else is out there. Cause it helps us to
protect the client.
That’s what’s on my mind tonight. And that’s as an introduction to this
particular podcast of, of some of the topics that we’re going to cover. I have
thoughts on other topics to cover. I wanted to cover charity marketing in the
future. I want to discuss securities with the colleagues. I wanted to discuss
tax issues with a colleague and these are important topics. I am going to have
friends. I’m going to have guests on this and I can’t wait to have fuller
episodes and have fuller discussions. I, I’m going to have little tips like
this as well, down the road, but that’s the idea, is that this podcast is just
that it’s going to be about law and business and hopefully there’s a lot of
good information, uh, to anybody listening. My name’s Anthony Verna. Thank you
for listening and we’ll have episode one soon. Thank you.
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