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By J.D. Houvener
Patent Attorney and Founder


Welcome to bold patent live q a i’m your host jd hoovener with our very first ukulele interlude hope you enjoyed that um you might have seen it up there on my shelf i don’t pick it up too often so i did practice that little interlude for a bit i am a patent attorney believe it or not and i’m the owner here at bold patton’s law firm um and i’m your host uh here every wednesday at 9 00 a.m pacific noon on the east coast um and uh of course all those in between the time zones we welcome everyone entrepreneurs business owners inventors people just curious about what patent law is all about i welcome all of that i do offer a quick disclaimer this is not a legal consultation unfortunately and so i we encourage you to not share confidential personal subject matter on this channel on this live broadcast i welcome you know hypotheticals you know process-based questions i want you to bring those on um and i’m excited i’ve got two awesome guests uh rockstars within our law firm here at bold patents they volunteered to uh to make time for you and to just share their story about what got them into the law what it’s like working at bold patents and answer any questions that you’ve got as we move along um so again i’m jd hovener owner here at the law firm and i’m here every wednesday so know that this is not a legal consult but we are going to go through live q a so i will uh i will feature those live questions first we’ve got a bit of an agenda so i’ll put this up here for you to look at we did the introduction already if you missed that please do rewind those are my ukulele skills uh in the making um and if you uh if you are here from avo uh i do have six questions with me we probably won’t get to all six of those and i get to those at the very end so if you are in a hurry and you want to just fast forward to the segment and you’re watching after the fact feel free to do that that’s what we’ll be getting to those available questions um and then we’ll uh we’ll offer a free screening session in just a minute here and uh for those of you that are inventors right out there thinking about inventing i’m not sure if it’s the right moment if this is the time to move forward with this new project you know you’re tired of seeing your ideas you tell friends about show up on the shelves a year later and you want to take action i’m going to reward you for doing that i’m going to give you a copy of this book right behind me bold ideas the inventor’s guide to patents you’ll get a pdf downloadable version for taking action and we have a free screening session where we’re going to qualify you and make sure that you’re a good fit help you think through hey is this the right time for moving forward with an invention or a brand whatever it is you’ve got going in your business so that is the link i just put that in the comments um click the link and get scheduled today to speak with one of our non-attorney advisors they’ll take your information down and if now is the right time they will introduce you to one of our patent attorneys that will do the consultation for you and do a deep dive learn about your invention and get you some advice moving forward okay i’m going to skip right ahead to our guests we have two wonderful guests and i’m going to feature uh huda huda alzheimer is a patent attorney uh she’s our managing attorney here at bold patton soho welcome to the program thank you jv happy to be home to have you thank you for being so brave to come on um and you’ve been working together for what four years five years now yes at least yeah since 2017. yeah well and so first of all thank you for uh you know for that and for helping all those inventors i want to take it back a little bit because some people don’t really understand what goes into becoming a patent attorney and it seems like and with you for sure and most patent attorneys there’s kind of a you know a bit of a meandering path and it’s what led you to this career choice can you walk us through how how you got into that and your bit of your background there absolutely yes well i uh born and raised in texas and i grew up in dallas texas and i didn’t really want to stray far for uh college so i stayed in dallas and i attended southern methodist university um in my undergrad i studied a mechanical engineering with a specialization in environmental engineering and um i was i really enjoyed engineering it was very interesting program but i always had interest in the law and so you know law school is a graduate program so after graduating uh from college with my uh bachelor of science in the temple engineering i i decided to you know take that plunge and went to law school and in law school i became familiar and warned that there actually is a niche area of the law for individuals who have an engineering or a science or a technical background and that you can combine that with the law in order to represent individuals who are seeking patents you can become a patent attorney um and that it you need to have both that engineering and technical and scientific background as well as the legal background and so i do have both as do all of our patent attorneys here at at gold and our patent agents as well there is always going to be a requirement that they have an understanding of science engineering have this technical background by law that’s required and so once i completed law school i took two bars so it’s an added level of challenge for attorneys because i took the texas state bar unfortunately that was fine and passed and everything and then also studied for the patent bar which is a separate type of bar in order to show that you understand the complexities and the ins and outs of patent law and what’s required to represent individuals who are seeking patents and so i have been practicing patent law for 14 years and then in addition i went back to law school because i wanted to get even a broader understanding of intellectual property not just patents and so i have a master’s in law called an llm in intellectual property law from the university of houston and so i was fortunate to be able to delve also into the world of trademarks significantly and get a better understanding also of copyright law and trade secrets and some other elements that make up intellectual property law so intellectual property law covers a myriad of topics patent law is one section of that whole group of intellectual property law and so yeah patents are a type of property they are an asset to our clients and just like you know real estate um is a type of property that you can buy and sell and license rent out as needed uh you can do that with patents and it’s really fascinating that the us um but the us constitution has had it since it’s early since it first was written that inventors should be rewarded for their time and effort and it should be they should be uh granted a patent if they have something that’s new and significant and so it’s great that our system embraces innovation and contributing you know in such a positive way and i’ve always just been a very curious person i love learning a little bit about everything i think that explains my trajectory going into engineering and then law and then doing another master’s i’m just that way and so i think that’s what’s fascinating about this area that it also promotes innovation and um improving in as many different areas as possible so that’s a little bit my background and then i’ve been uh with bold patents for four four plus years honestly and i really love it and i’ve grown from being an associate to now i’m a managing kind of attorney we have a fantastic team of individuals that work with us from our attorneys and agents to the business advisors to our financial and technical support people everybody i would say has such a wonderful attitude and really love what they do and they really will go above and beyond to help our clients and the people who consult with us that’s amazing amazing that was incredible i didn’t even have to ask the questions you just moved right into it and you covered a lot you want to back up for just a moment yeah unbelievable background um i didn’t i haven’t noticed you got an llm you have an llm as well that is incredible okay so walking back so when you got the engineering degree okay and i did as well what does what i mean after going to school for four years being an engineer what made you want to go into law was there someone something something that motivated you to get into the law help us help me through that absolutely yeah i think again it goes back to i mean i always was interested in science and math and all of that but i wasn’t completely sure that i wanted to be a full-time engineer i wanted to explore the law which involved you know how do you represent people what are the basic foundations of a society how do you you know determine um what laws apply and how to solve some of the issues that come up i was just curious about it and so i was very motivated and i think when you’re 21 22 i mean yes you are ready to start a new career but i also wanted to give myself time to do this because i knew with a grad program i wanted to take care of it and get out of the way and so that’s really it was just my own motivation to go back to school and to go into law and it was challenging i mean pivoting from engineering to law they’re very different ways of teaching and of working through the pro you know in engineering you really don’t write that much and it’s all numbers and formulas and things like that so in the law it’s completely different you know you’re writing really long briefs you’re reading really long cases and you’re learning how to analyze things the way lawyers do and so i really enjoyed it um made some wonderful friends that i still you know taught you this day but i really do i’m so glad that i went through that path and then in the law school is where i became educated about what’s patent law and how it actually is not a disservice in any way that i have an engineering degree i can actually use both and combine them in my future career like which is what i am doing now yes absolutely and quite well we could go on for a long time i do want to give our next guest a little bit of air but what an incredible background thank you for sharing it with our guests um are you open to an email if i post that here for anyone as curious want to ask more questions yes

so you can be tutored there for additional questions i’ll put you backstage okay because i want to yeah i’m going to probably need your help with this patent question coming up here at the end so thank you so much for coming on dude it was great talking to you you too thank you all right we have uh a second attorney brave bold patents attorney coming on and this is matt cole seth matt welcome to the program hey thanks jd glad to be here awesome to have you and as you guys can probably see matt is not a patent attorney we secretly offer trade work ah the jig is up so um yeah and matt is our go-to here at bold patents we’re doing trademark work so um matt i’m gonna ask you some similar questions okay i want to kind of you know how did you get started you know when she went through you know college how did you start thinking about the law what led you to where you’re at now yeah no that’s a good question and who does a hard act to follow so i’ll i’ll do my best but um yeah so i’m matt colson i do trademark work at bold ip i’m a trademark attorney and i’ve been practicing for just over a decade and i live in minneapolis and minnesota and how i got interested in the law i you know i think i always had in the back of my mind that i want to go to law school even since i was a little kid but in college and i went to the university of richmond virginia uh i studied political science and leadership studies which basically means you’re going to go to law school yeah so i had no choice i had to go to law school and so i took a year off i traveled in africa while i took the lsat studying to go to law school and then i went to law school back here in st paul minnesota and i had the displeasure of going to law school during the recession and so i wasn’t lost from 2008 to 2011 or so and uh basically yeah yeah jd that the market was going to be really difficult for a young attorney and so when i was in law school i focused on the thing that i immediately gravitated towards which was intellectual property and so i think i took 11 courses in intellectual property from trademarks to copyright trade secret patent law and uh really kind of just you know um hung it all out on intellectual property and really focused on trademark law because that was something not having an engineering background that i knew that i could do coming out of law school and uh i also just i love technology and uh although i’m not an engineer i like to play one and so i really enjoy you know working with technology and people who are technologists and people who run businesses and so i gravitated toward trademark law came out of law school went to work for the big firm and uh you know cut my teeth doing litigation trademark litigation trademark registration and then ultimately you know have wound up and been fortunate for the last few years to be working with you and the whole team at bold but uh love trademark law i find it really fascinating i think beyond an llc or patent registration it’s the next most important legal asset a company has and uh as much as i like working on trademarks i i enjoy working with our clients even more because our clients are so passionate about what they’re doing and if we can be a small part of their success that you know that’s that’s important to me absolutely so matt so i mean tell me uh kind of clients you work with at bold patents are the most part bigger companies like amazon microsoft and google or are they kind of more smaller clients yeah fortunately not large corporations um we work generally speaking with individuals small businesses and some medium-sized businesses um you know folks who know what they need from an intellectual property standpoint potentially but um don’t necessarily want the [Music] the expense of working with you know a large brick and mortar firm to be totally honest and but know that they need that expertise and so i worked with a lot of those small medium-sized businesses and um coaching them through the trademark process we do search reports legal opinions application preparation and if we need to we can help them litigate enforce their trademarks awesome well i mean just one quick final question what would you say is kind of the biggest you know misconception or the biggest aha moment clients you work with for the first time uh find out after they start working with you yeah i think one of the misconceptions about trademark law is that it’s quick and it is not and so what i always tell clients um especially in in these you know challenging times of coba that we live in is that the uspto process is a bit longer than it used to be and so that’s why it’s important to you know contact your intellectual property attorney i would say early and often because if we you know can file your trademark earlier before you go to market or launch that next great product you know we can save you a whole lot of time and money you know being proactive with our trademark application than if we were reactive and you’re going to market next week and we need to file a trademark and now we need to wait you know upwards of nine months to a year for that registration so i would say um that’s one of the biggest misconceptions about um trademark law is that you know it’s potentially fast it’s not so you know if we can get clients you know in the door early that you know that ultimately works out best for for the client yep awesome that’s perfect advice i think a lot of people living on the patent side you know the vendors come in hey i want a patent on this so people hold on let’s take a moment let’s see what you’ve got let’s see if it’s eligible to see if it’s patentable and following probably similar approach on trevor and say hey all right let’s see if this something is even registerable and then let’s see if there’s anything confusingly similar uh sort of putting you know getting not getting the horse they caught before the horse

you know the worst case scenario is if you have a client that walks in the door you know they spend you know ten thousand dollars or more on branding website development logo design um business entity formation and they say here’s my brand you know and i’m opening my doors next week what do you think and um we find issues right we can’t register the trademark or we find somebody else who’s unregistered but doing something similar with a similar identical name you know that’s a problem for the client um and we need to work through that you know whether it’s you know rebranding the the company or you know potentially trying to work around that issue um but that can be avoided if you get in touch with us earlier than you think you need to um i always tell clients if if you can if you can get a hold of me six months before you go to market um you know six months before you launch that next product um early in the product development cycle you know that’s the best time to be contacting your intellectual property attorneys awesome great advice great thank you matt all right i’m excited to get some of these questions here i know we have a couple live viewers so if you have any questions anybody out there please shoot them out i will prioritize those um we’re going to go to our alvo questions now and so matt will put you backstage and then bring you on to help me answer some of these so matt thanks again for coming on

all right uh and here’s some note and matt i’m gonna put your email down hopefully that is not an issue for you anybody wants to reach out to matt who has questions about trademarks i’ve got his email address in the comments there so let’s go to our office questions thank you for those who’ve been waiting patiently uh we’ll go to our patent question first we just have one that came in this week this one is out of seattle washington uh my former home so i’m not too far away from where i’m at in uh moses lake washington so i haven’t pre-screened these so these are white as if they were live um i do a quick read-through to make sure there’s no obscenities all right very good we did have that previous week okay so here is a here’s the question and i’ll put it up on the screen so we can all look at it okay all right so do i need to be a us citizen or should i reside in the usa to be permitted to file provisional fat application if i’m not living in the usa can i apply for the ppa if yes please can you give me any tips about this subject thank you great question i love it so um i think i could take this one and i’ve got huda here to back me up uh so um no no you do not need to be a u.s citizen to file for patent protection in the u.s you just have to declare where you’re from in in terms of there’s an application data sheet and you’ll indicate who you are as the inventor um or if you’re the owner you’ll be the assignee and you’ll apply it if you’re a foreign individual um you know it may make sense for you to also file in in your country of origin but that’s not always the case uh sometimes the u.s market is the most lucrative most interesting and so that maybe you’re the only country you file into um so uh um yeah the answer is yes i’ll bring huda on to see if she has any other you know insights or things she wants to add to that um no i mean that’s completely true i think that’s such a good question misconceptions about that yeah a hundred percent true perfect all right well good i got good confirmation there well so what we’ll do is um we’ll go to our next question which is trademark related uh and this is a

there we go we have five trademark questions matt let’s do a rapid fire okay this person’s out of bronx new york

now this is actually not this is interesting i think you might like this one matt um

you know because these trademark questions kind of involve some some business law concepts as well maybe i’ll bring you on the show all the time matt this is nice okay so hello i’d like to start a skincare business i wanted to know if i should start my llc before the trademark i’m not sure how to start my llc and i’m not planning on selling our products until the end of next year nice six months out i like it doesn’t make sense to get my llc now uh matt i’m gonna bring you on um what are your thoughts here yeah this is an awesome awesome question so you are my favorite client uh whoever asked this question because it gets to what i would say is like the correct order of operations when it comes to starting a business so with regard to the llc you know the trademark application you know what do i do when what i would say what i prefer clients to do is before they even register their llc they contact us so that we can do our trademark search and opinion and make sure that the mark is clear so that they can register the trademark now once we clear the trademark meaning that we don’t find any issues with registration or infringement by somebody else’s brand at that point we’ll advise the client to register an llc typically it’s going to be in the state in which they reside so once they register the llc typically then we’ll use that new newly formed llc to own the trademark applications which we submit to the government um and if you’re not going to the market toward towards the end of the year or six to nine months 12 months later we’ll file what’s called an intent to use application which will actually hold your spot in line at the government and give you pre-approval before you can go to market so that is the ideal situation when it comes to starting a new business trademark uh search first llc trademark application perfect who had anything to add to that you’re welcome to jump i think that was great thank you matt um yeah honey i think matt hits the nail on the head the thing to be aware of why do you want to clear the mark sometimes you want to use the mark also as the name of the llc but that’s not always the case because you could have a different name for the llc and maybe you also need to check if that’s available if you’re going to start using that as a brand as well so before you before you assume that that mark is clear for you to use as either the name of the lc or as a trademark for a product or service it’s definitely best to clear that to make sure and to do your due diligence and have a search provided for you because there are many cases where people launch file in their state have websites get spend all that money on flyers and marketing and everything and then guess what they get a cease and desist from somebody so we can hopefully help you avoid that in advance by checking in early awesome excellent okay i’ve got one quick question here this might take us all the way to the end of the segment it’s got a lot of stuff in here this is coming out of miami florida and here it is it’s kind of a two or three part question it takes a second to load in all right i’ll put this up it’ll block our faces for a little bit and then we’ll all unhide it i’ll read it all out so if i trademark my business can someone profit from my company name if they buy a domain with my company name in it i’m looking to expand my business and i was told that i should buy all the domains right this is common with my company name so that nobody can create something with my business name and profit from it i was also told that if i were to trademark my company name and logo that no one will profit from using our company name this includes an internet domain name with my company name in it and they go on a little bit further um let’s see if i get the next little chunk of it

all right energy’s been coming in a minute looking for the right way to protect my company okay um we’ll go to you first matt what do you think yeah good question um so here’s what i will say about that um at a very high level if somebody owns a domain that is similar to your registered trademark um and they are selling similar products from that website domain yeah they’re in violation of your trademark rights assuming of course that you have better senior trademark rights than they do um now if they’re using that name in conjunction with a different service or product they’re not going to be in violation of your trademark rights um now one thing i will say about domains is that you know when i was you know fresh out of law school younger 10 years ago you know domains were a lot more important than they are today you know with the um the advancements in you know google search technology and things like that folks can find us no matter where we are online and so your domain doesn’t matter as much as it used to so this idea that we need to potentially register dot uh for any similar you know name um i’m not sure it’s as important as it used to be jd [Music]

you’re muted

there is something that’s called the udrp uniform domain name dispute resolution policy and so we’re going to jot that down with that again yes udrp administration okay through wi-fi registrar and registrar examples like godaddy or something like that they’re required to participate in pdrp so what happens is there are bad actors that let’s say you don’t do well and you have a successful online website and you sell products uh it’s usually for products but it may be for services as well and then you get the sneaky person who changes he takes a domain name very similar or buys you know the same main uh phrase dot net or something like our dot biz or they change it a little because what are they trying to do they’re trying to take your customers move them to their website or they’re trying to force you to buy it from them at a higher price they know their squatters right and so matt is right when when the internet really took off several years ago this is very common i’m going to buy up this domain name and then coke is going to buy it from me or probably buy it from me i’m going to make so much money out of it well they came up with the bodies that be something called the uniform uh udrp uniform domain name dispute resolution policy so basically if you can prove that you have a trademark and you are the registered trademark holder and somebody has no legitimate interest in this mark they’re using it in a confusingly similar way online and in bad faith then you can file a complaint with the wi-fi agency and say that domain name needs to be either canceled or transferred to me because i recorded and this person is squatting and trying to either profit from my goodwill or to force me to buy it from them at an exorbitant price for example and so in a way so matt’s absolutely right you don’t have to buy up every domain name i do know some clients that will want to have two or three of the more important ones just so that they don’t have to get into these too many arguments with with people and so if it’s sort of financially possible for you to do so and it’s reasonable you may want to but um this is also an alternative option for you that pursue the trademark vigorously enforce your trademark police regularly as a trademark holder you have to police you have to keep an eye out on there on social media and and i don’t want to run too too much on the time there’s something maybe you could talk about in the future jd about the duty of a trademark holder to to maintain you know that yes how would you want to get to this i’m sorry but i want to get to this one live question daniel ritchie uh our live questions so we have one minute left so you may have already answered this but what happens if the domain name was registered by another entity another company before your mark is registered who wins who has the priority yeah great question pretty simple answer assuming if it’s registered and not being used just parked and you come along and register a trademark that’s similar you don’t have much recourse unfortunately this is kind of what hood was getting at when we talked about cyber squatting and internet trolls basically you know unfortunately if you go look for a website domain today you’re very likely not going to find what you’re looking for it’s going to be registered by a large company in the united states elsewhere in the world who’s holding on to it hoping that you paid them you know one thousand ten thousand dollars for it um which is why again i’m not sure that domains are as important as they used to be because nobody’s able to get the uh the domain that they’re really looking for these days but you know if they have the domain registered before you register your trademark and they’re not diverting your intended customers to their website or to a competitor from that domain the only recourse we really have is to purchase the domain from them which is something we can certainly help broker um but you know for the most part you know my 10 years of experience doing this has told me that it’s better just to go find a different available trade or a available domain that you can purchase for ten dollars a year awesome awesome stuff guys we’re at the end of our show we could talk for hours i can tell this is good and we’re going to have you guys back on this has been awesome thank you matt thank you huda for being on the show and being a part of this journey with us so we’ll put their contact information at those who are on you want to hear more from matt when i message them email them directly they get provided that in the comments here um so for the uh for the bold patents and and our program here our bold today show we’re going to wrap up i’m jd hoover the owner here at bold patents and i’ll be here next week wednesday hopefully with some more guests and i welcome you to to join uh join us next week and by any of your friends that may want to know more about patent law or ip so have a good rest your day everyone take care go big go bold

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