Patent Attorney and Founder
Hey everyone, welcome to the Bold Inventor Show. I’m J.D. Houvener, your host, and my co-host Matt Kulseth is over here. Matt, good afternoon. Well, hello! How’s it going?”
“I’m going good today, thank you. You know, it’s a Wednesday. I missed you yesterday for the Bold Lawyer Show. Sorry about that. I was out wining and dining my wife. It’s our 14-year anniversary, so we were celebrating.”
“Oh man, that’s great. Don’t be sorry about that; that’s awesome. I was happy for you.”
“Yeah, it was great. Awesome. So, let’s see here. We’ve got a good show today. I’ve got a guest, a family friend who is into the Internet of Things. So, you may have heard from the title for today. Seth Baffer is waiting backstage. I’ll bring him on in just a few minutes. He’ll be able to share a lot of cool, interesting stuff about devices, compliance, and some of the things that I think a lot of inventors and entrepreneurs forget about. It’s kind of like, you know, if you forget to get a patent and you just go start selling a product, you might end up in trouble, infringing someone else’s patent or other things. So, that is on the way.”
“We have three pre-loaded questions throughout the week. We’re broadcasting to Facebook, Instagram, LinkedIn, and YouTube. Someday, Instagram—I’ve got to get like 200 more followers, Matt, then I can do lives on Instagram. Right now, they won’t let me in. Does Twitter do—I’m sorry, X does X do live streams or anything like that?”
“Oh, X, the new Twitter. Is it called X now?”
“I think it’s called X. Oh man, I saw the funniest thing. It’s a terrible brand. Alright, we’d love to talk about that. Quick little legal disclaimer: we’re not your attorneys. We are lawyers, but this is not a privileged, confidential discussion. If you want to move forward and have a discussion with us, I’ll provide a link here to do that. And then I’m going to share a really funny post that I saw. So, that’s your link if you want to see if now is the right time, do a free Discovery call with Dallas. It’ll be great. And that link will give you a copy of this book behind me, ‘All the Ideas: The Inventor’s Guide to Patents.’ Have you seen this? I know the WWF only because my daughter cooked a frog one time and felt really bad about it. So, as amends, we made a donation to the WWF.”
“Oh my gosh, did she do the slow boil thing, or was it just completed?”
“No, I think she just found it, found the toad, and I had a fire going. She decided to hop the toad in the fire. Four years old at the time.”
“We made a one-time donation to the WWF. Okay, what about him?”
“I’m going to—it basically showed the progression of Twitter’s logo over the years. Right, it started with a different bird, and they changed it to a fatter bird with a small beak. Then it was kind of more of a clean line bird. A lot of it was the same. The last one was the X, right? And it was kind of along the lines of ‘Don’t let this happen to endangered animals.’ So yeah, wild change there. But yeah, it’s ill-advised. Some might say, would you say?”
“I would say. Can you account for more than some? You know what I mean. Elon Musk has made a lot better business decisions in his life than I have, so I mean, who am I to say that’s a deficit? We’ll see. Very well. Okay, we have—we hope we have some live viewers. We have some on LinkedIn. But when we do have a live viewer, we will prioritize your question. Of course, you can send them out throughout the week. But if you’re here live with us, we’re going to prioritize it. So, bring on those live questions—anything at all related to patents, trademarks, copyrights, intellectual property, and of course, the subject that our guest is coming on for, IoT devices and compliance regulation. So let’s bring Seth on. Seth Bafford, welcome to the show.”
“Thank you. Hey, guys. Hey, Seth.”
“Yay. So good to have you. Heard donation to the WWF, and I was thinking like the People’s Elbow in the World Wrestling Federation, right? It might be the same organization. I don’t know. I didn’t like taking locations.”
“I don’t know. Love it. Love it. Let’s get to it. So, we have an inventor community, entrepreneurs listening, business owners. When I hear compliance regulation, I start to kind of just get sleepy. But no, tell me, tell me what are people missing? Give us a little background on your technical upcoming and how you found yourself in this role as a consultant.”
“Yeah. No, so regulatory and compliance is probably one of the least exciting portions of, let’s say, engineering. And sometimes some of the most invisible. It can be likened to insurance for anybody—like a consumer or business, for that matter. Until you need it, you probably don’t think about it as much as you should. So, it can be the most invisible and then also the most visible part of your reality at times. Regulatory, for that matter, particularly as it would pertain to inventors or manufacturers that are trying to design the coolest product to get it on the market and sell it and change the world, make money, whatever you want to do. If there’s a legal thing that needs to be addressed from a regulatory standpoint, it can be a gating factor from you actually getting your product launched. IoT devices, as I would describe them from the industry that I’ve worked in for many years, it’s really talking about gating engineering factors to getting your product launched, such as the wireless technology. So, you’re seeing wireless radios getting in every kind of product—you can imagine toothbrushes, obviously, their cell phones as the most easy example. But sports equipment, video gaming accessories, hunting and backpacking tools, wireless solar panel chargers, you know, up in the middle of nowhere, a lot of track and trace stuff like that. Matt is trying to contain his—was it an emu or ostrich out there? Oh, peacock, peacock. Yeah, put a wireless internet of things on them. Yeah, there you go. Logistics is huge. I mean, a product you want to track foods going in containers going all over the world, you know, inventory, whatever it is. There’s all these different wireless technologies that are being utilized, and it’s a highly regulated space. So, if you were to design a product, say, ‘I want my product to have Bluetooth in it,’ there is some work you should do just as early ahead of time as possible to kind of assess what you—you know, what you will need to legally sell the product. Who do you call? I mean, do you call someone like you?”
“Yeah, Ghostbusters. This is even on my radar; that’s just wild. People are inventing stuff. We’ve patented stuff like this before, and I didn’t even think to advise or give recommendations for, ‘Oh yeah, you might need to make sure it’s legal to actually go sell this.’ My question to you when we were chatting a couple of weeks ago was, does someone like Amazon, do they even care? Can you just list stuff on eBay? I don’t know, can you sell things online without having gone through some of these hurdles or certifications?”
“It’s a little bit of the Wild West, I would say. The first thing any designer or manufacturer should do is think about the country you’re going to sell the product in and the intended environment. So, is it—the USA is an easy example; is it for residential use, commercial use, medical, aerospace, defense, automotive? Because you’re going to have legal requirements based on the country and the intended application or environment of the product. If you want to sell a Wi-Fi product into the house, the federal government is going to control the radio spectrum. So, that’s the FCC. Most of us probably think of the FCC if you ever listen to Howard Stern because he argues with them for the last 30 years, trying to shut his free speech down, right? But the FCC really controls wireless technology like a freeway—northbound and southbound. There are different lanes of the freeway that are allowed to transmit things and other lanes that are not. So, one of the first things I would say if you’re going to design a wireless product is you’re going to be buying that technology from somebody. And that’s your first place of guidance—wherever that supplier is for a radio chip going into your product. They’ll have documentation and guidance to provide for you, but they’re not going to do the work for you most of the time. They’re going to say, ‘Here’s some information, but you need to really consult with an agency or third-party testing and certification laboratory.’ There’s a passive market for that. Any tinker or designer could just Google FCC testing or FCC certification, and you’ll get a million hits on Google. There’s a big market of people, and really, the biggest recommendation I would say—you know, people in relationships make the world go around. So, do your best to get to an actual person, a subject matter expert that can help walk you through what you need to do. Would you say that most prototyping design or manufacturers know these FCC testers pretty well? It’s kind of across the board because what you’ll see is a software company deciding they want to move into hardware, and it’s a brand-new world. Or you’ll see a hardware company that maybe they made some industrial mechanical thing for so long, but they don’t know anything about electrical engineering design and wireless as an IoT application. So, it’s a little across the board. Really prevalent brands that we would all know about that you’d see up and down Best Buy, they’re pretty well locked into what those needs are. But, you know, I’ve worked with a lot of independents designing a product—people tinkering in garages to somebody who got some seed money from an angel investor. And, you know, from my observation, their focus is really on designing a cool product that can sell and make some money. But if you don’t check some of the regulatory boxes from the beginning or at least have an awareness of it, it can be problematic. So, one really good piece of advice is if there’s a similar product on the market, go look at what it has. You know, literally either physically flip it over. You know, it’s not too difficult. I mean, everybody’s got, like, a bricktop power supply. That’s not an IoT device, but there’s all sorts of regulatory labeling stuff on there—some earbuds, you know, whatever it might be. That’s not a bad place to check. So, assessing similar products. And then, you know, as far as pitfalls go, you know, if you’re designing a product, if you can think about what are unique engineering technologies I’m putting into my product that could be of concern. And this is everyday people can think like this. So, lithium-ion batteries have been in the news forever, right? Fire hazards, it’s a big safety concern. And carrying them on the airplane, right?”
“Yeah, in fact, I was in Denver going through the Denver Airport years ago when I think it was like Samsung. It was having a battery issue, and they announced it across the airport. If you have a Samsung device, you cannot bring it on the plane. I mean, it was rough PR, right? National broadcast and all the major airports and millions of people. So, things like lithium-ion batteries, if you have any kind of light source that’s non-indicator, like a flash or a laser, people are concerned about those with your eyes—optical radiation. We talked about the wireless radios; it’s one of the most highly regulated—”
“—regulatory things really in the world. So, you know, these are things to consider. Also, you mentioned like Amazon or Best Buy or whomever. So, with an IoT hardware device, there’s regulatory stuff to be considered, but also your distribution channel or end customer. You know, you may want to get into a big retail environment, and they may have specifications that they want you to meet too in order to play in their realm. So, there’s a lot to be assessed in this environment. There’s a lot of consultants out there for IoT hardware devices and design, and there’s a lot of third-party testing laboratories out there, such as CSA, a very famous one in Canada. Intertek is a very famous one too. Underwriters Laboratories, there’s a whole market of third-party agencies and test outfits out there that should be able to support.”
“Seth, just to jump in here. So, like, say, I am bringing an IoT device to market, right? And I have not gone through any regulatory agency or consulted anyone. What’s the downside to not filing to get some sort of certification? Are there FCC police?”
“Not necessarily FCC police, but there is market surveillance. So, I’m not saying that this would happen. Again, I’m just here as an advisor. But there are—we love to trade hypotheticals here.”
“That’s right.”
“I was going to do a headphone example, but no, this is excellent. Magical.”
“So maybe this will be the point if I spot a competitor and I want to get them because I feel like they’re not complying, can I go rad on them?”
“Yes, this is something that happens. In highly competitive environments, manufacturers will take products off the shelf. They’ll see if they’re doing what we’re doing, since we’re doing a similar type of thing. So, that is one area of concern if I were a designer of my own product. But also, just market surveillance with governments wanting to protect their spectrum, their wireless IoT spectrum—you know, things that transmit in 2.4, 5 gigahertz. Wi-Fi, Bluetooth—these are what they call unlicensed bands. Not to get too nerdy, but there’s everybody transmitting in them. They all have to play nicely according to the rules. So
So, they could pull a product, and then they’ll notify you, um, and try to work through it. And, you know, you don’t want to ignore the federal government when they come close. Okay, well, that is to say also just as one little last bullet point, this is something that’s very doable, so it shouldn’t be something that should be of high concern. Manufacturers, designers, tinkerers get through it every day. Uh, well, let’s talk about that. I mean, give me big round numbers. Let’s talk investment, how much money, and how long is it going to take? I’ve got a new set of headphones I just designed. I’ve got them all built out, all engineering specs. I’m ready. Who do I talk to? How long is it going to take, and how much money?
Yeah, uh, 10 million dollars? No. Um, it really depends on what your product is, where you’re selling it, and what government, right? It’s a very difficult question to answer. You’re selling headphones in the United States. I don’t want to pinpoint it and make a little U.S only. I want to sell it online only, US online only, US only. It’s a pair of headphones. Uh, and let’s say they’re Bluetooth. Oh, you’re probably looking anywhere in the range of, uh, five to ten thousand dollars just to address FCC-type considerations. Okay, there’s mostly layers to that onion. Sure, there’s other things you got to worry about too, you know. California has its own set of regulations.
Say that again. I let the Prop 65 stuff. You know, everything causes cancer besides water. Well, there’s that. There’s Prop 65. There’s, uh, the Europeans have their own versions of that. So again, it’s really one of those things you gotta start at a building block level. It’s like where are we selling this? Where do we want to make money? And then we’re going to tailor all the regulations you got to address to it, and some are simpler, you know, than others. There’s some that are actually even kind of voluntary. See now, so you have to—you need a partner to navigate that.
Okay. If someone wanted to reach out to you, um, are you open to me sharing your email address?
Yeah, perfectly. Also, you know, I’m on LinkedIn as well. Whatever you want to do. I’m in.
Alright, um, dude, you’re full of information. I want there to be enough time because I like that stuff. 2.4 gigahertz, I don’t even know. Yeah. Oh yeah, oh this is awesome. You’re not so hard. I love that analogy where there’s the highway of stuff, and you’re probably gonna buy someone else’s chip, so maybe it’s our—you can buy something that’s already been pre-certified, right? Meaning, instead of me having to start fresh, like can I bring in a buy a chip or to buy everything that’s already been tested on other devices?
As a matter of fact, if it’s a new thing, a new channel, yeah. Right about 70, I would say, uh, just of any wireless device is going to be leveraging a pre-certified radio module, what they call it. And there’s still some due diligence you have to do, but it takes the burden of all that regulatory off the end product guy, the guy that’s making the—you know, smart sports ball, you know, that wants to put Bluetooth in it. There are things that you can do to, uh, really take that burden of cost down. So one thing that—what’s the timeline? How soon or how much before I go to market with the product and IoT product do I need to be talking to you or filing some compliance work? You know, earlier the better. If you have a design, like a, like a, what they call them, duty or, uh, you know, a beta version of the product—you know, the sooner you can communicate with a third-party test lab or consultant, the better. Um, just because, uh, you know, what you don’t want to have is a hard launch and have some hiccups and gotchas prevent that occurring. So say you want to launch in July but you have maybe you have development samples ready several months before that, you know, as early as possible that you can reach out to a third-party test lab, the better, an FCC lab if you will. Okay, South, we’re gonna have to be back on. I’ve got a ton more questions. Go to our next segment, the Bold Bite. Um, so there’s the sets emails right there, uh, [email protected]. If you have questions for him, we still have 10 minutes left. So, if you have any questions and you’re watching live, send them in right now, we’ll get to them before we wrap up. Um, Seth and Matt, will have you guys mute your microphones. I’m gonna hear what’s mine over, and we’re gonna go to our, uh, Bold Bite here. Okay, check, check, present.
I tried to find an IoT—you know, this thing is not so techy, and I know for Matt, at least, we’re, we’re nearing that five o’clock hour. So, five o’clock somewhere with respect to this pitch. Matt, can you confirm the audio is working good? Okay, here we go, next up is a product designed to keep you cool. [Music]
Thank you, hey sharks. I’m Chase, our company is Chill Systems, and this is the Chiller. It’s a portable beverage cooler with freezing gel built-in.
Hey sharks, this is Brian. Sorry I’m late. I had to buy ice. The Chiller doesn’t need ice, man. I had to stop at the inconvenience store. Now I gotta break this up. I put [Music]
Good thing we at Chill Systems are offering a more sustainable solution. Choosing a Chiller reduces waste of clean water and single-use plastics, and we proudly donate a portion of every purchase to support clean water projects around the world. And you can too, partner with us. We’re seeking 150,000 for 10% equity. We can change chilling forever, sharks. You each have samples complete with chill drinks. Chill, so this doubles. You can either do cans, yep, or you take the cans out like I just did, and then it’s for a bottle. That’s right. It’s incredibly versatile. It only holds three cans. I mean, I don’t know about you, but I’ll get through this in about 45 minutes. Sure, and you know, Kevin, we’ve heard that feedback, date that’s over the last two years. We started with a Kickstarter campaign. We did 51,000 on Kickstarter. Um, what’s the cost? Okay, uh, the Chiller you have in front of you, uh, its our product cost is offered. Never ever start. I understand, let me, let me get there. Let me get there. That was about 18 a unit to build. Now then, we had to import the units, 350 a unit. So, if we hire up to 22 bucks, we added those sleeves at 11, another 11. Okay, now you’re up to 32 dollars, all the way up to 37 for that one that you’re having fun. Make it to make it a cost, yeah, good. Listen, the reason it’s not just because we want to make a difference. It’s also because we want to learn, and we’re in Google, we’re at Google and Apple. We had great jobs, and we’re thinking to ourselves, every night when we come home, we’re not learning enough. We’re here at the office, and we’re doing the tasks that are being sent our way, but we’re not learning enough. So, it wasn’t just about making differences, the nicest guy in the world, but your story has so many lapses of credibility for me. Who’s your competitor? It’s ice. Like, seriously, we know there’s a lot of competition in the cooler marketplace.
Then the story pivots to sustainability, and your product is made of plastic and plastic forever.
And then to buy the bag of ice, well, that’s not really the story. It’s about learning something. I wasn’t learning enough at Apple and Google. Look, putting all that aside, it was a bad presentation. All right, you guys. Ouch. Robert gave it to you. Burn. That’s cute. I know we focused on Robert, so, uh, initial take, um, Matt, let’s go to you, and then we’ll trademark perspective, yeah.
I mean, it’s a bad brand, right? Chill Systems. When they tell me Chill Systems is the brand, it’s like, okay, one, you guys are obviously, you know, nerds because you include the word system in your, in your product, but, uh, two, I mean, it’s descriptive. Chill Systems. I mean, like, I know what you’re doing. You’re in the refrigerated something, you know, category. Um, so they actually, they did receive trademark registrations for CS Chill Systems for their non-electric portable coolers, but was it a word mark? It’s a word mark and the design mark, but they have to disclaim the words Chill Systems because it describes the quality or feature of the products. So, I mean, at the end of the day, they own CS. Okay, ah, all right. All right. If you guys want to start a product company and manufacture these for half the cost and call it Chill Systems, we can because they don’t own that, yeah. They just missed a mark all over the place. I mean, you heard the cost per unit, 37 a day. 37 to produce that, I don’t know. Yeah, they didn’t bother to file a patent. They could have. I mean, obviously, Cooler’s been around for a long time. So, the utility could be challenging, but the fact they have these different holes that would be a good fit for a design patent in my mind, right? So, the way that it looks, the aesthetics, it can have a functional effect, but what you actually own with the design patent is the three-dimensional shape. I thought that was unique. They didn’t have anything on file, and nothing came up on my Google search or the patent system. So, um, it’s a missed opportunity, uh, but, you know, they were really kind of off base on a lot of different points there. I know it wasn’t, uh, wireless technology or anything like, you know, electronic, but, Seth, any comments on your end?
I just never, I think I’ve never drunk less than three beers in my life, so I don’t know, but that was really accomplishing, you know, their reply was, well, you can just once you drink one, you can put a new one in, right? Yeah. Um, I don’t know how, how good that does. Yeah, it was a dumb product with a dumber name. Okay, guys. All right, out. Well, and, uh, I will, um, let’s move on. We have three. I assume these guys are not in business anymore. I couldn’t find a door. We’re guests next week. What you got, right? Yeah, yeah, let’s look him up. Uh, let’s take a quick, so Chill Systems other Shark Tank. Yeah, there’s been a few coolers on Shark Tank and a bunch of Yeti. No, I don’t see any products. No. No. Sorry. We’re back to working for Google and Apple. Poor thing. Let’s hope there is. This is like, I don’t know. I have to show this one. This is interesting. I don’t know why I’m showing this, but it’s a, it’s a single bottle. It’s called the Chill Pill. Has a cool name. Um, it’s for a single kid like you really want that to be cold, be at the first drink to be ready to go when you’re done with it, 24 of them. That’s that’s weird. Okay. Um, let’s go to our three questions. We had, uh, two. Trails start with you, Matt. Uh, New York or Toms River, New Jersey.
Oh, I’m always down for New Jersey, man. Let’s go. Okay. Uh, this one’s short and sweet. This is going to be about, okay, Ring Finders. Oh, what a ring finder. Let’s just, I’ll just read it out, of course. Start, can I be sued? Yes, you can. Can I be sued for a similar name in business trademark, the Ring Finders versus the Finders New Jersey? Oh, Ring Finders South Jersey. I wish to register the two ladder. I don’t know what the Ring Finders is, but what do you think?
I don’t know what the Ring Finders is, but yes, that would be, let’s assume the Ring Finders and the Finders New Jersey, blah, blah, blah, are in the same category, the same product of the same service or whatever they’re doing. Uh, if they own Ring Finders, then yes, you will be in violation of their trademark rights because, um, finders is basically the same word, and you’re basically just adding a descriptor, which is, in this place, location. Uh, yeah, I think in that second one, he’s actually, he forgot he or she forgot the word ringers, add a geographic descriptor. No, it is not, all right. It is definitely not, uh, rough handle. Anyways, right? Oh, Ring Finders. So, this is, Ring Finders are an online business directory featuring metal detecting specialists. Okay, cool. You lost it, we find it. There’s just no hope for someone trying to go with Ring Finders South New Jersey. No, no, you definitely get a consent or some sort of license. Okay, okay. That was an easy one. No, I’ll give you the other one just because that was too easy. Uh, New York, New York. This is a longer one. This is.
Someone’s getting a little nerdy here with root terms and all kinds of stuff. Alright, can I trademark a root term? Would it be sufficient for trademark protection of relevant longer terms, including said root? Hypothetically, a company called Apple has a registered trademark for the term “Apple,” covering all electronics. If they create a keyboard called Apple Keyboard, is it automatically protected under the trademark “Apple” since Apple Keyboard includes the term Apple? Or does the company need a separate trademark specifically for Apple Keyboard? Apple covers everything, right? The word “keyboard,” again, is descriptive, so you can’t get a trademark registration for the word “keyboard.” If you were to file, technically, you could file to apply for “Apple Keyboard” or “Apple,” but you can’t. I can’t, but you could register “Apple Keyboard,” but they would disclaim the word “keyboard” in the registration. That’s why companies typically will have their products with their own distinct names. Maybe it’s not “keyboard,” maybe it’s something else, you know, iTouch or IP, or whatever Apple wants to call it. But you can’t register and protect things like “keyboard.” So in this particular case, Apple’s the brand; it’s the king-queen brand, whatever you want to call it, and everything kind of falls under that brand. Got it? Got it. Yeah, cool.
Alright, let’s do this. Mine is even easier; I just looked at it. How do I file a patent? I want to register my design product and release it in the market. I would, and this is great that you’re asking this question to protect yourself before you go to launch. The US does have a grace period of one year. Once you publish or start selling, you can go seek patent protection after up to one year. But it’s always advisable to speak with a patent attorney before going to market, so we can help do some research first and look and see what potential prior art is, meaning previous publications or patents that have been out there in the public, so you know exactly what you might have, what your options are, and potential for locking in a patent on that product. You can also get some information about other competitors that might sue you, right, or send you a cease and desist letter if, in fact, you’re stepping on their toes. So even if you don’t end up coming away with a patent, it’s a good thing to check on first.
And full disclosure, I’m a trademark attorney. When it came time for me to file a patent, you think I filed a patent? No. I’ve been around it for 15 years, and I did not. I had JD do it. Even if you’ve been around this stuff for as long as I have, I’m not a patent attorney, so I hired a patent attorney to do it. Back at you, Matt. And when we protected our trademark, do you think I filed it? No. Matt filed it. A handful of stuff around Bold. So all you lawyers out there, don’t start any law firms with the word Bold; we’re going to come after you hard. But you can make all the Bold coolers you want. Southwest, wrap up. Thank you for coming on as our guest. I appreciate you being here with us. Thanks for having me; this is great. You’re welcome for sure. And Matt, thanks as always for being a co-host with me. Yep, for Bold Patents and the whole team here. We’re here next week, every Wednesday, 1:30 Pacific, 4:30 on the East Coast. We’ll see you next week. Have a good day, everybody. Go big, go bold.