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By J.D. Houvener
Patent Attorney and Founder

Hi Sharks, my name is Woody Sears, and I’m a travel fanatic from Santa Barbara, California. Today, I’m here seeking $1 million in exchange for 5% equity in my company.

When my family and I take road trips, we find ourselves asking a lot of questions about the places around us. We like to know how a small town came to be, what people do there for a living, and the names of the mountains and places we drive by. Wouldn’t it be great if we had a personal tour guide who could share these stories? Introducing AO.

AO is a Mobile Audio Entertainment app for travel that tells stories about the places, landmarks, and cities that we drive by. It uses geolocation technology to trigger these stories by your location automatically. Simply press play, and stories begin based on where you are. Stories like these:

  • Local residents passed an ordinance prohibiting the Horseless Carriage, which was startling and upsetting their horses.
  • It was a stop on the Underground Railroad, as many homes here and in nearby Springdale were as well.
  • Violent eruptions caused the mouth of the volcano to collapse, forming a nearly symmetrical 4,000 ft deep Caldera.

We have over 9,000 stories spanning the US, each of which is told by professional narrators. We have famous voices like Kevin Costner, Phil Jackson, and John Lithgow. AO gives us a chance to be entertained while at the same time taking a break from screens and being more engaged with our surroundings and each other. So, Sharks, who wants to hit the road with AO and help tell our next story?

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They all were like, “Okay, well let’s talk about your revenue, how did you get where you are, what’s the plan?” I mean, for basically a $20 million valuation. Um, so, I want to make sure I have enough time for kind of background, but he, uh, he did say they’ve got about $700,000 in sales. He’s kind of piggybacking on his prior company, which was, I learned, he sold for billions of dollars. Huge, like multinational company based on sort of this AI geographic location. And so, it’s interesting, he has a lot of horsepower and a big connection with AAA. They’re planning to roll it out big, podcast and cool type of thing.

Yeah, I mean, this is one of those kind of applications where good idea, but unless you have the connections and the capital to pull off something where you’re getting Kevin Costner and, you know, Phil Jackson to narrate for you, I mean, that takes some knowing, you know? He’s clearly in the industry. He’s been doing it for a long time, and that was something I wanted to highlight, is I didn’t see anything specifically patentable, you know? There may be something there. He started talking about how you can save an audio and then, based on where you’re at on the GPS, it will start playing, and it actually spaces it out, like in cities, so that’s… it’s not like every second it’s got a story. It’ll kind of… you can play it out. There could be some technology there, IP, that didn’t come up during the pitch, but I wanted to emphasize that. Hey, look, sometimes it just takes, as you said, knowing who and just having been in the industry, knowing all the connections to get that type of product off the ground.

Yeah, 100%. I mean, if I were to start, like, an application like this, you know, would go nowhere because I know no one, right? Who can narrate and do all that kind of stuff? But it’s a cool application or a cool product, and they do have the trademark registration for AO, right? For mobile apps, so that’s… that’s cool. The only thing I would say is that if they wanted to expand their IP rights, you know, outside of the mobile application itself, they should probably look at software as a service because there’s probably some technology on the service side that maybe they’re licensing to third parties. Yeah, that would be something to consider as well.

But overall, I mean, the registration looks good, cool, and let’s say they… let’s say they do want to roll that out, you know, next year. They hear they hear your critique on the Bull Bite show. Would that be a brand new filing if they were going to try to add the…?

Yeah, exactly right. I think they have a wordmark registration. They registered it in 2022, so they have a wordmark registration for AO in class nine. I would say if they were interested in investing in a second application to further expand their IP footprint, you would do like a class 42 software as a service application for a design mark, which is their logo.

Got it. That’s what I would do, that’s what I would recommend. Was there any pushback, do you think, on kind of that sounds like the word audio?

Yes, there was. So they got a big office action. Projections called likelihood of merely descriptiveness issue. So the US PTO said, “Hey, it sounds like audio, and what you’re doing is related to audio,” and we’re rejecting it. And I actually was just looking at the applicant’s office action response, actually very well argued and articulated, and they were able to overcome the merely descriptive issue. So good for their attorney, great job.

Yeah, see they did, and it was… it was a word mark, is that right? They used the design?

Yep, and in this particular situation, that would have been my largest concern too, is that, “Hey, is the USPTO going to ding us for being merely descriptive?” I probably would have encouraged the client to file a design mark, a logo initially in that class, and if we were successful, file a second application as a word mark in class 42, citing the registration in class nine. That’s… that’s probably the strategy that I would have gone with.

Yeah, and just to round out, we had a brief kind of IP 101 kickoff that I did. Copyrights would definitely come into play here, especially if you’re using… you know, actors, actresses, you know, if it’s the recording, you know, the actual audio description of the historical site. That would need to be thoughtful in terms of, you know, who’s actually… Yeah, I mean, you certainly want a copyright attorney figuring out all the different relationships and copyright intellectual property matters, right? Because you’re going to have the right of reproduction, you’re going to have right to the initial recording, you know, there’s like performance and recordings, essentially, and so you would need to have that locked tight.

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at https://boldip.com/contact/