Share on Facebook
Share on Twitter
Share on LinkedIn
By J.D. Houvener
Patent Attorney and Founder

Certainly, here is the corrected and formatted transcript:

Matt, give us your story. Let’s have it. Give us a little bit of your background, educational, and yeah, and then we’ll – born and raised here in Minnesota and went to school out East at the University of Richmond, came back for law school at William Mitchell, which is now Mitchell Hamlin School of Law here in the Twin Cities, Minnesota. Yeah, I was a poli-sci major, so I always wanted to go to law school. I was like a Political Science Leadership Studies major, and it was like I’m going to law school. I don’t know why I’m gonna go to law school, but I’m gonna go to law school because that’s what people tell me I should do.

Did you know right away? I mean, did you know why you’re an undergrad? Do you?

Yeah, the plan was always to go to law school. I thought I would probably get more – I thought I would probably end up in the government or the legislature here in the state. That’s kind of where I was probably gonna go. Any family – father, grandfather?

No, I had a really cool Mentor who was a non-profit lobbyist, and I followed him around one summer in law school and really liked what he did. He did a lot of lobbying on behalf of poor people here in the Twin Cities in Minnesota. Hey, that’s a pretty cool job. It pays pretty well, and you get to do good work, and you get to talk to people all day, which is what I love to do anyway. So, I was like, ‘Oh, let me do that.’

When I got done with undergrad, I was so done with school. I never wanted to go back again. I don’t know how you could have been like, ‘I want three months.’ I took a year off between law school. I went to Africa for like six months with my then-girlfriend, now wife, and traveled and worked there. You know, and I also managed to go to Burning Man between law school and undergrad. So yeah, we need to flash a picture of Matt in 2004. Yeah, I mean, thank God that cell phone cameras were just becoming a thing back then, right?

We went to law school. It was the recession. I was there in 2008, kind of when everything fell to pieces. I remember seeing in a class, and my teacher, like, looked around, Professor looked around, and he’s like, ‘Your job’s gone, your job’s gone, your job’s gone. So what are you gonna do after law school?’ And you know, I fell into trademark law and really liked the legal aspect of it. The case law was interesting to me. It seemed like a back door into patent law and intellectual property in general, which I found very interesting. And then, you know, second, I really enjoyed my professor. We had a really great relationship, and so it’s like I’m going all in on intellectual property, specifically trademarks, and when I come out of law school, I’m gonna be able to hang my own shingle, I’m gonna be able to do patent prosecution, patent application work, and life will be great. So that’s basically what I did. Turns out it’s a lot more work to hang your own shingles than you think it is, and so I ended up doing like document review, which is a terrible, terrible job that no attorney necessarily aspires to. I did that for a couple of years at night from like 4:30 in the morning till 1:30 in the morning.

Well, then you did what from 4:30 to 1:30?

Document review.

Oh my gosh, I did Doc review right out of law school while I started my own practice.

Okay, so you had something to pay the bills.

I had something to pay the bills.

Okay, there you go. So that’s what I did. I just ground basically for two years until I had a big enough book of business where I could more or less do the trademark work full time, and you know, obviously, a lot of that time was spent marketing and trying to grow the practice as much as I can. And then, you know, you and I are big networkers, JD, and so that’s how you – we met, I mean, I don’t know how long ago, maybe six, seven years ago at this point.

Yeah, and that relationship has obviously borne fruit, and you know, I’ve continued to work with you and Michael and the rest of the crew at Old IP for, I don’t know, four or five years now.

Yeah, it’s been a while. Let’s do the same kind of questions. So, I mean, a lot of people will be watching this and have questions and they want to know what an initial consult is.

Yeah, they can talk with Dallas first. Dallas is our client service advisor, and then they get the opportunity to meet with you if they’re a good fit. What do they expect? What are they going to get with a consultation with you?

Much like Michael on the trademark side, you know, my job really is to one, you know, build a relationship, build rapport with a potential client, make them feel comfortable that what they say with me stays with me. Two, it’s to educate. You know, that’s a big piece of what most attorneys who do transactional law do, is educate clients about, you know, the risks or the benefits associated with any sort of legal maneuver. During our consultation, I’m going to explain the trademark process, the federal trademark process. Generally speaking, we’re going to do, if the client is interested in a trademark application, I’m going to conduct a knockout search prior to the call if I have the information, or I’ll do a knockout search on the call with the client.

And that knockout search is just looking for red flags that would say, ‘Hey, we have a major problem here. We should not even consider moving forward with a search report or legal opinion.’ Conversely, you know, sometimes we do those knockout searches, and things look so good, and the client’s so confident that their trademark is unique that we can recommend that the client doesn’t even need a full search report and legal opinion to move forward with the application work. So, it really is kind of a strategy meeting where I’m getting to know the client, I’m educating them, I’m learning about kind of what they do and how they do it, and then translating that into what an application or what a legal opinion might look like if we were to move forward with the client.

Wow, so you get moving. You actually did a little bit of a search, and they get a feel for whether they can move forward and protect their rights, right? Because, I mean, even if you have information as an attorney prior to going to a client call, client consultation, you know, at the end of the day, you really don’t know what the client is interested in protecting or where they make their money, which is, you know, obviously what you want to protect from a trademark perspective, or where they are going, you know, long term with the business. So, want to educate, want to get a good feel, want to have a good plan coming out of that meeting so that when I send them back to Dallas, he’s going to get them signed up for, you know, full search report, legal opinion, multiple classes or single application with a known trademark search report, legal opinion. We want a really good strategy coming out of that meeting.

What would you say are kind of the top one, two, or three things that a first-time filer says, ‘Oh, whoa, I had no idea,’ or, ‘Ah, now I get it’?

Yeah, um, I think there’s a lot of folks, at least on the trademark side, who are confused about kind of like what it is they do. And that sounds funny, right? It’s – but my job as a trademark attorney is to take what a client does, whether that’s a service or a product, and translate that into one of these 45 different classes of goods and services that the United States Trademark Office uses. Kind of fit it, explain the buckets first, yeah.

So, there are like I said, 45 classes of goods and services. The first 34 are going to be all service or product categories, and then classes 35 through 45 are services. And everything that we do, buy, sell, rent, whatever, falls into one of these 45 classes. A lot of times, clients are going to be in multiple classes. They might be an apparel manufacturer, but they also sell the apparel. Maybe they also manufacture jewelry, so they’re going to fall into multiple classes depending on the trademark strategy. And so, it’s my job, especially with clients who have really unique services or really unique products, is to translate that into a category at the USPTO that we can apply in and then search that category and associate the categories for issues like descriptiveness, likelihood of confusion, or Geographic descriptiveness issues, surnames – basically go through a whole checklist of potential pitfalls to the registration. Got it.

What would you say kind of adds the complexity in terms of like where you’re going to need to do a more deeper dive search?

Yeah, so if a client is going to come to the firm, bring with them a fairly descriptive trademark, something that’s not very unique, that’s gonna definitely cause us some potential issues, and we’re going to want to do a full search report legal opinion so that we can have a proper strategy to get around any expected issues during the trademark prosecution process. Cool. So, that’s a big one. Clients are always interested in, you know, if they’re starting businesses, do I have the LLC, do I name the LLC the same thing as the trademark or you know, I sell t-shirts, but am I also uh, a service company?

So, there’s a lot to kind of flesh out for a lot of clients, and most clients who have a product that they sell to give themselves as a product company. And my job is to really say, ‘Hey, you are a product company, but you’re also a Service Company because you sell it, you distribute it, you customer service, you take wholesale orders right, you have an online store. Um, so we need to kind of look at the whole picture for the client as opposed to just the one category of the USPTO. Love it. Well, thank you, Matt, for walking us through that. Good stuff.

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