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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 Patents Law Firm. This is a live questions and answer session. You’ve made it! I’m a patent attorney, 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 Patents? You’re going to get to meet the head honcho, our new Chief Legal Officer, coming up here in just a little bit.

If you’re new to the program or maybe you’ve been with us a long time, I don’t mind showing off a little bit of our agenda. And I offer a free screening session to any of you who feel like, “Hey, now is the time.” This is the time to get going. I wonder if my invention is worthy, you know, is eligible. Is it something that, you know, patents—does that make sense to me, my business plan? 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 right now. So, this is a free screening session with one of our non-attorney advisors. And for taking action, I’m giving you a copy of this book right here, “Bold Ideas: The Inventor’s Guide to Patents.” It’s a quick 100-page tutorial that walks you through everything from what a patent is, the 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, our legal officer. We’ll be answering our Avvo.com questions. So, if you’re tuning in, watching this after the fact, and you’ve asked a question from Avvo, I’ll be addressing three questions. I didn’t see any patent questions, but there were three trademark questions. So, I’ll try to get to those at the end of the show. If anyone wants to jump in live, you’re going to go right to the front of the line. So, I will be taking live questions first.

Okay, I do want to offer this disclaimer here before we get anyone here joining live. 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. What you’re discussing with us today is not going to be protected. Obviously, it’s shared in a public forum. So, if you want to get a confidential discussion going, you’re ready to move forward, click that link above and schedule your free screening session today.

Alright, we see one live viewer out there. Thanks for joining. Give us a like on our page, share this with your folks on social. I want to get the word out. Got attorneys up here talking to you, 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, if you missed us this week, we’ll be here next week. Alright, so let’s do it. First order of business, I want to introduce our—I’m proud to say—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.

Awesome. And 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, surely. But know that we are reading the case law and that’s what we’re up to.

So, the first thing—you know, we’re not—at least, I haven’t argued before the Supreme Court. Might have you?

I have not. I became a patent attorney so I did not have to go to court.

Absolutely. Alright, very good. Well, okay, let’s get started. We’re welcoming you to the firm, for sure, but you are no stranger to patent law. If you would, please share with me and our audience here, what got you into patent law and what brought you to Bold?

Sure. So, I started out as an engineer. I went to Auburn University, got my electrical engineering degree, graduated from there in 1991. Worked as an engineer for six years total. The last three years of that was at the Knoxville Police Department in Knoxville, Tennessee. I kind of got interested in the law through that, applied to some law schools. Ended up at the University of Utah, enrolled there in 1997. 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. Wouldn’t jive with what I wanted to do. Started kind of looking around for, if that’s not it, what is it? My dad is a patent agent and had been a patent agent for about a decade around the time I was getting out of law school. So, thought I’d try that. Obviously, that matches well if you already have the technical degree. So, got into patent law through that, through my dad. 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, wanted to try something different at that point. Went out on my own in 2012. Did that first six years. Then I had a unique opportunity to go in-house at a company to be their first patent attorney, but their first attorney at all. Did that for a couple of years. They had some financial problems, not related to patents, but anyway, I got separated from them. I was kind of looking around, see what my next step might be. I always thought the solo inventor market was somewhat underserved by firms in general. So, when you guys had a posting, I believe I saw it on Indeed, seemed interesting, applied, and that’s kind of 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 are scientists, engineers, right? Technologists first and then go to law school and go on with this journey of sort of remaining technical and yet understanding a lot at the same time. Absolutely. You’re no stranger to that with an electrical degree, electronic engineering degree. So, that story also kind of going with the bigger firm and then coming into having your practice certainly has a lot of expertise that 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. We’ve now got seven patent attorneys 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 going to be that way because that’s how I think inventors, solo inventors, make up a lot of who our bold adventures are. They need that personal attention, that one-on-one control, or, you know, personal relationship and hand-holding. So, awesome. Well, good to have you here. And so, again, I’ll say one thing additional. You know, for you, Michael, we’re having to try to be involved right as a firm. We’re no longer the startup, 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 down the road? You know, I could see us doubling in that time frame. You know, as far as I—I don’t know how you want to quantify it, I guess, you know, number of patents drafted or clients assisted. You know, one of the things, having been in—I’m trying to think. I’ve been at a bigger firm. I’ve been in a solo firm. I’ve been in-house. 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 a plethora of really creative people out there, and 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. 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 for this short bit. Yeah, thanks for having me. Alright, yeah. Like I said, so if you have those questions, you—you saw Michael, and give me questions for him specifically. You can fire those away right in those comments. And also, if you have questions for me particularly, you can send those right to my email and also send a text-only question to that phone number. Flavia, you’ve got a question there. The Bold Patents acquiring a high-quality team. Absolutely, Flavia. Good to see you. If others are with us almost every week, 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—it tops at all. 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 nationwide. So, take this moment here to jump to our Avvo.com 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. Alright, 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. I may pull Michael back in to help me with this. A lot going on here. So, trading card game app, okay, software application. Let’s just take this in stride. So, I would say that—okay, first of all, my mind goes to patents. I don’t know why, right? Bold Patents, okay. So, an app is a software application. So, I would, at least, take a moment to consider—is this application, is what the game is doing, the method that each player follows, the system, maybe the way the data is stored, given the graphical user interface itself, is that unique? Okay, take a bit and perhaps hire a patent attorney if you think that you’ve come up with something unique in terms of gameplay methodology or the way that it looks to try to protect the application, the software with patent protection. Alright, first and foremost, consider that. And you hit the nail on the head. As soon as you create content, whether it be video words, you know, artistry, right? I mean, think of like Magic: The Gathering, one of the most famous games ever. They’ve got tons of 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 what consumers see, right? How they acknowledge your goods or services. And so, if you are, you know, trying to protect and be a brand, if you can show that 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 that specific class, let’s say game play, card games in an internet, digital, no game play, then you can get protection all the way back to your first sale. Okay, the US trademark office, they want to only reward 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 the 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, the artistry, the storyline, how to play the game. And then, as well, 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 mark, right? You see, you know, Bold Patents. It’s got the colored logo. This is a design mark up here. The words alone, without the fancy font, this, the words, is actually called a word mark. 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, 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.

Alright, hopefully, that’ll be good. We’ll bring Oscar. I’ll bring my client up. Michael, would you add anything else to that?

I know it’s kind of an 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 implementation on media, paper, etc. You could trademark what you’re trying to call it. And then if there was a unique 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 try to go in a similar direction. So, yeah, love it, awesome, 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, Shirley 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 shared 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, yikes. You know, certainly, I’m sorry if this happened to you. This is something I do here, unfortunately, from, you know, a few inventors, entrepreneurs that are out there just trying to make a difference. It sounds like you had sent, 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. You know, 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. 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 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 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 evidence showing that they derived the invention from you, okay, and acknowledge receipts and you can trace individual IP addresses and getting into forensic research here, then there is a path, okay? And if they did seek patent rights and you can make an honest 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. But those are extremely rare circumstances. In almost every case, it’s almost virtually impossible to prove that 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. Can you say the meaning of it? Yeah, 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 want to, they want to know, hey, JB, 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 in terms of trying to invalidate their patent and what, how much risk am I taking and going into operations? So there you go, Fabio, FTO. 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. Alright, 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.

Okay.

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 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 Tide and Away and all the different elsewares, good home, good products. Certainly, Procter and Gamble, you know, that is actually registered separately, but what they’re actually selling is their products, right? The actual names of their brands like Tide detergent. So, no, they don’t have to match, and oftentimes, I mean, each state is different, but the Secretary of State when they approve 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 conduct a search to make sure you’re not stepping on the toes of someone else who uses a same or similar mark for the same classification. Okay, all right, thank you for that question of Dallas, Texas. We did not make it any direct questions for you, but I just wanted to, again, thank you for coming on the show, and um, you know, hopefully we’ll bring you back on in future weeks, but welcome to the firm. Thanks for sharing the Inside Bold. But what’s it 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 of your day. Go Bold, 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 https://boldip.com/contact/