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By J.D. Houvener
Patent Attorney and Founder

Hey everyone welcome to our bold today show i’m jd hoovener managing partner and owner here at bold patten’s law firm this is a live questions and answer session you’ve made it i’m a patent attorney uh registered to use pto i’m here with you to answer any of your live questions that come in over the next 20 to 30 minutes i’m excited to share with you we’ve got a guest today you may have seen the title up above inside bold series so what happens who is it who are the people behind bold paths um you’re going to get to meet the head honcho our new chief legal officer coming up here in just a little bit so if you’re new to the program or maybe you’ve been with us a long time i don’t um i don’t mind showing off a little bit of our agenda and i offer a free screening session to any of you would feel like hey now is the time um this is the time to get going i wonder if my invention is is worthy you know is eligible um is it uh something that you know patents does that make sense to me my business plan um if you’re not sure but you’ve got enough pieces put together and you want to be serious about it i will be providing that link um right now so this is a uh it’s a free screening session with one of our non-attorney advisors and for taking action i’m giving you a copy of the this book right here old ideas the inventor’s guide to patents it’s a quick hundred page tutorial walks you through everything from what a patent is difference between a provisional non-provisional design patent trademark copyright all that good stuff so get your hands on that get a free pdf download for taking action and scheduling today after we’re done with this quick intro again we’ll talk with our guest top employee here uh legal officer uh we’ll be answering our questions so if you’re tuning in watching this after the fact and you’ve asked a question from avo i’ll be addressing three questions uh i didn’t see any patent questions but there were three trademark questions so i’ll try to get to those uh at the end of the show um that wants to jump in live uh you’re gonna go right to the front of the line so i will be taking live questions first okay um all right i do want to offer this disclaimer here before we get anyone here joining live uh this is not an attorney consultation okay so as we’re trying of course i’ve got disclaimers but do not share any confidential invention information uh what you’re discussing with us today is not going to be protected obviously it’s shared it with a public forum so if you want to get um you know confidential discussion going you’re ready to move forward click that link above and schedule your free screening session today all right we see one live viewer out there thanks for joining uh give us a like on our page share this with your folks on social i want to get the word out uh got attorneys up here talking to you uh fielding questions i’m here every week and usually with the guests every wednesday 9 a.m pacific and noon on the east coast so um if you missed us this week we’ll be here next week all right so let’s do it uh first order of business i want to introduce our uh i’m proud centrist our new chief legal officer his name is michael dodd and he’s with us here i’ll bring him on stage michael welcome to the show hey jd how you doing doing really good um awesome and uh surely asked right off the bat are you the supreme us supreme court attorney i am not that would be pretty amazing i don’t think i’ll ever be in court in trial um surely but uh know that we are reading the case law and that that’s what we’re up to so i appreciate you making uh that question and uh humbled by that so the first thing you know we’re not uh at least i haven’t argued before the supreme court might have you uh i have not i became a patent attorney so i did not have to go to court absolutely all right very good well okay let’s let’s get started so we’re uh um welcoming you to the to the firm for sure but you are no stranger to patent law if you would please share with uh share with me and our audience here what got you into patent law and what brought you to paul uh sure so i started out as an engineer i went to auburn university got my electrical engineering degree graduated from there in 1991 uh worked as an engineer uh for six years total uh the last three years of that was at the knoxville police department in knoxville tennessee um and i kind of got interested in the law through that um applied to some law schools uh ended up at the university of utah uh enrolled there in 1997. uh initially thought i might be interested in criminal law from working at the police department but i did a criminal clinic and quickly realized that was not my calling um wouldn’t didn’t jive uh with what i wanted to do uh started kind of looking around for if that’s not it what is it uh my dad is a patent agent um and had been a patent agent for about a decade um around the time i was getting out of law school um so thought i’d try that um obviously that matches well if you already have you know the technical degree so um got into patent law through that through my dad uh worked at a medium-sized ip law firm in salt lake city after i graduated decided to stay in salt lake for all the outdoor activities i like backpacking hiking skiing things like that was at that firm for 12 years uh wanted to try something different at that point went out on my own in 2012 did that first six years uh then i had a unique opportunity to go in-house up at a company uh to be there not only their first patent attorney but their first attorney at all uh did that for a couple years they had some financial problems not related to patents but uh anyway i was i got separated from them um was kind of looking around see what my next step might be um i’d always thought kind of the the solo inventor market was somewhat underserved by firms in general uh so when i you know you guys had a posting i believe i saw it on indeed um seemed interesting um applied and that’s kind of um how i ended up where i am awesome awesome good stuff man yeah so you i mean as a lot of you know inventors may not know people that are not involved in the patent world most patent attorneys or scientists engineers right technologists first and then go to law school and you know go on with this journey of sort of remaining technical and yet understanding a lot at the same time so absolutely you’re no stranger to that with an electrical degree electronic engineering degree and so that story also of kind of going with the bigger firm um and then coming into uh having your practice you know certainly has a lot of expertise that um our firm and certainly our clients can benefit from so it’s a real pleasure to have you as part of our firm and leading the firm um we’ve now got uh seven patent attorneys uh as part of our team and i think of ourselves as a boutique right and so it’s important that we i think we’re always gonna be that way because that’s how i think inventors solo inventors but their makeup a lot of who our bold adventures are they need that they need that personal attention that one-on-one control or you know personal relationship and hand-holding so um yeah awesome well good to have you here and so again i’ll say one one thing um additional you know is uh for you mike michael we’re having to uh you know try to be involved right as a firm we’re no longer the startup brand new you know brand new startup law firm we’re trying to become you know the next thing in your mind where do you see the firm growing the next one to two maybe even three years um down the road um you know i could see us doubling in that time frame you know as far as i i don’t know what how you want to quantify it i guess you know number of patents drafted or clients assisted um you know one of the things having been in pretty much i i’m trying to think i’ve been at a bigger firm i’ve been in a solo firm i’ve been in-house um you know bringing all those to bear in the environment of bold where we’re primarily helping like you said solo inventors and smaller inventors you know they’re not going to get that a lot of places they’re not going to get someone who’s been through all those different trenches and then comes along to help them out i’m really excited about that i like you know there’s there’s a plethora of really creative people out there and uh you know they should be able to get their inventions protected even if they don’t work for a huge company and that’s exciting to me to work with them awesome well michael thank you for staying with us and we have three live viewers and i got some nice praise there from matthew winslow as well on linkedin thanks matthew for that um we’re doing our best so michael i’ll put you backstage as it were and if we get any questions we’ll bring you back on toward the end of the show but thank you so much for being on uh for this short bit yeah thanks for having me all right yeah like i said so if you have those questions you uh you saw michael and give me questions for him specifically um you can fire those away right in those comments um and also if you have questions for me particularly um you can send those right to my email and also send a text only uh question to that phone number flavia you’ve got a question there uh the bold patents acquiring high quality team absolutely flavia good to see if others with us almost every week um yeah i mean this is incredible i mean i’ve forever found patent attorneys to join our team that are more experienced than me but my goal really tops tops at all uh he’s bringing an incredible background and sort of moving us to the next level of being able to really serve more and more inventors uh nationwide so take this moment here to jump to our our questions and what i’ll do is i’ll share three that came in there were five total this one comes from seattle washington it’s a little bit lengthy i haven’t pre-screened these so hopefully they are pc all right let’s see if that comment fits in the question box

and this is related to trademarks there it is it covered my face up okay if i create a trading card game app will my work be protected without a trademark so i know that there would be automatic copyright of the overall design of the cards upon creation hey good for you but would there also be protection of the game name for example let’s say i create a video game and the game entails playing a new and unique trading card game and let’s say part of the card design is that they have a logo with a cube and the words relentless war could anyone else create a similar card game or use the logo well that’s an action-packed question um i may pull michael back in to help me with this so a lot going on here so trading card game app okay software application let’s just take this in stride um so i would say that okay first of all my mind goes to patents i don’t know why right both patents okay so an app is a software application so i would at least take a moment to consider uh is this application is what the what the game is doing the method that each player follows the system uh maybe the way the data is stored uh given the graphical user interface itself is that unique okay take a bit and perhaps hire a patent attorney if you think that you come up with something unique in terms of gameplay methodology or the way that it looks to try to protect the application the software uh with pat protection all right first and foremost consider that and you hit the nail on the head as soon as you create content whether it be video words um you know artists artistry right i mean think of like magic the gathering one of the most famous games ever they’ve got tons of you know artistic works that are as you said as soon as you fix that into a tangible format you do have common law copyright absolutely and you certainly could go seek registration at the library of congress many artists do that on their own certainly you can also hire a law firm to help you with that trademark is actually quite different as you probably guessed and the trademark has to do with protecting um what consumers see right how they acknowledge your goods or services and so if you are you know um trying to protect and be um be a brand if you can show that you’re you’re distinctive meaning whatever words or colors or logos you’re using to represent your goods or services in this situation that’s a game if it’s unique very distinctive within a that specific class let’s say game play right card games in an internet digital no game play then you can get protection all the way back to your first sale okay so the us trademark office they want to only reward uh entrepreneurs they’re actually using their brand in commerce they don’t just let you squat on a name for very long anyway so yeah that’s trademark while you should pursue that again a similar approach where you’re going to connect a surge to make sure you really are a distinctive unique mark and you can get registration in there so i think all three areas of ip apply let’s explore patentability you mentioned something’s novel and unique about it let’s see if we can also protect the copyright in terms of the content they have artistry um the storyline uh how to play the game and then as well uh the trademark with branding on the logo and the word mark again those are two separate types of marks i mentioned that before in previous shows where the word work right you see you know bold patterns it’s got the colored logo right this is a design mark up here the words alone without the fancy font this the words is actually called a word and you get a bit stronger protection with the word mark so i tend to urge entrepreneurs to look into protecting with the word marks first because you’re going to get um you know additional rights around sound alikes or misspellings of the name others that try to rip off your goodwill and name by just changing a little bit you’ll have better luck with that all right hopefully it’ll be good uh we’ll bring uh oscar i’ll bring my client up michael would you add anything else to that uh i know it’s kind of a interesting question is it possible to put the question back up on the screen again that was a question it was big yeah there it is

yeah i mean

yeah so i mean you could get all three types of protection on that depending on how you framed it right i mean you could copyright the actual you know implementation on media paper etc um you could trademark what you’re trying to call it and then if there was a unique way to the way the game was played you could possibly try to patent that as well i mean uh i guess one thing to think about with games just know casinos are always going to find a way to patent games and a lot of times you can go into their patents and look at the way they’re approaching things um based on the current subject matter eligibility rules and you know go go try to go in a similar direction so yeah love it awesome good uh good good thought on the casino stuff too especially on seven seven right and we’re not quite at 70 i’m looking pretty fun okay surely zelle’s got a question and it’s a live question so i’m going to pull it up first thanks shirley for tuning in if i wrote my project proposal years ago you know 2008 then share it across the top leaders of tech giants who didn’t respond to me directly after they are following and robbing me and attacking each other at the expense of the innocent how can i protect my project and the people my goodness uh yikes you know certainly i’m sorry if this happened to you um this is you know this is something i do here uh unfortunately from you know a few inventors entrepreneurs that are out there just trying to make a difference um sounds like you had sent um you know some sort of document or information out to companies or individuals years back and you believe that they are now robbing or taking your invention your idea um you know it’s it’s one of those things that although a really hard answer to hear the truth is um the patent office does not want to reward inventors for just keeping their ideas right to themselves or just trying to sell them on their own they want to incentivize you to file right file your inventions that way we can all become smarter right that’s the whole patent system is so you know the governments can give you a monopoly upwards of 20 years from the date of filing um for sharing what you’ve come up with but if you kind of keep it to yourself and try to tell others about it and try to make a deal behind the you know closed doors and keep it as a trade secret there’s a certain amount of risk to that and one of those risks is that someone else comes up with the same invention or the same exact innovation or idea and brings it to market and of course if you can actually point to right evidence showing that they derived the invention from you okay and acknowledge write receipts and you can trace individual right ip addresses right and you know getting into forensic you know research here then there is a path okay and if they did seek patent rights and you can make it honest to get this evidential claim that they derive the invention from you there is a proceeding now to help you with that that pristine did not exist in 2008 exists as part of the american events act it’s called a derivation proceeding uh but those are extremely rare circumstances in almost every case it’s it’s going to be almost virtually impossible to prove that you know someone else saw your invention and then went to market with it later the truth is our truth is you must file your invention first right patent office is not going to reward the first to invent anymore okay after 2013 the law changed so it’s not about who invents it first it’s who files with the patent office to get the rights first hope that’s a lot shorter flavio’s got a question the acronym fto uh can you say the meaning of it yeah uh right there freedom to operate fto freedom to operate this is where someone is approaching our firm and they’re just trying to sell something okay they just wanna they wanna know hey jb is is there any chance that someone else has patents on what i’m trying to sell and what’s my likelihood of being sued okay basically you know they’re being wise before i go out in the market can you can you check for any trolls under the bridge right make sure there’s no one that’s going to come after me or even if they do tell me what kind of grounds i might have for defense uh in terms of trying to validate their patent and what how much risk am i taking uh and going into operations so there you go fabio mto we’ll do one more question on the trademark side and then we’ll we’ll wrap up here i really like that trading card game question all right this question this is number two out of dallas texas let’s see this one is a little lengthy as well

the dba trade name


i’m trying to determine if dba must include service provided if any marketing material has service included as well let’s say that an llc is a new engineering firm and wants to operate under the name phoenix or phoenix engineering okay can business cards read phoenix engineering but marketing apparel on the website that may just be phoenix can the registered name be just phoenix the single word for the sake of not being too specific but the cards read phoenix engineering

and there’s some more on that question this is a fairly straightforward answer here i’m glad i could answer it it looked like it was more challenging but the answer is the business name right that you form with the secretary of state right the actual name of the llc has nothing to do with the eventual trademark okay often they match right some of the words match but they don’t have to at all and one of the most famous examples is google right the name of the company is actually alphabet alphabet corporation but of course the name you all know of is google okay google is the brand that’s the trademark right they’ve got who knows how many trademarks and they renew that all the time um under the name google it’s all about what the customers see okay and there are lots of companies that have several brands i mean just think of like procter and gamble you know they got tied and away and all the different elsewhere good home good products certainly procter and gamble you know that is actually is registered separately but what they’re actually selling is their products right the actual the names of their brands like type detergent so uh no they don’t have to match um and oftentimes i mean each state is different but the secretary of state when they approve of a specific name they’re just looking to make sure there’s no exact match right a true english character exact match as long as there’s no true exact match on the state registry i believe you can then secure that llc name but in terms of going to market you’re going to want to conduct a more robust i mean nationwide federal search certainly if you’re going to be selling interstate if you’ll be selling to customers outside your state you’ll want to connect a search to make sure you’re not stepping on the toes of someone else it uses a same or similar mark for the same classification okay all right thank you that question of dallas texas um we did not make it any direct questions for you but i just wanted to uh again thank you for coming on the show and um you know hopefully we’ll bring you back on in in future weeks but welcome to the firm thanks for sharing the inside hold uh but what’s like being our chief legal officer yeah old lady i look forward to being on with you again all right take care everybody have a good rest your day go babe go bowl bye

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