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By J.D. Houvener
Patent Attorney and Founder

Matt give us your story let’s let’s have it give us a little bit of your background educational and um yeah and then we’ll uh born and uh born and raised here in Minnesota and went to school out East at the University of Richmond came back to for law school at William Mitchell which is now Mitchell Hamlin School of Law here in the Twin Cities Minnesota and um yeah I was a poli-sci major so I always wanted to go to law school right 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 so 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 you know the legislature here in the state that’s kind of where I was probably gonna you know go um any family you know father grandfather no I had a really cool Mentor who was um 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 you know um poor people here in the Twin Cities in Minnesota and hey that’s a pretty cool job it you know pays pretty well and you know you get to do good work and you know 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 man I was 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 and law school I went to Africa uh for like six months with my then girlfriend now wife and um 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 we need to flash a picture of like Matt in 2004. yeah I mean thank God that like cell phone cameras were like you know just becoming a thing back then right right

we went to law school you know it was the recession I was there 2008 kind of when everything fell to pieces and and I remember seeing in um 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 you know really liked the legal aspect of it this you know the the case law was interesting to me it seemed like um a back door into patent law and intellectual property in general which I found very interesting and then you know second um I really enjoyed my professor we had like 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 um life will be great so that’s good 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 working doing like document review which is a terrible terrible job that no no attorney necessarily aspire to I did that for a couple years at night from like 4 30 in the morning till 1 30 in the morning um 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 have 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 you know marketing and trying to grow the practices 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 you know has obviously born fruit and you know I’ve continued to work with you and 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 it’s been a while um let’s do the same kind of questions so I mean a lot of people will be watching this and uh have you know questions and they want to know what an initial consult is yeah you can talk with Dallas first Alice is our client service rap advisor and then there 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 my consultation with back also yeah more much like Michael um on the trademark side you know uh we my job really is to one you know build a relationship build rapport with a potential client uh make them feel comfortable that you know what they say with me stays with me you know two it’s to educate you know that’s a big piece of what most attorneys in who do transactional law do is educate clients about you know the risks or the benefits associated with any sort of legal maneuver um during our consultation I’m gonna explain the trademark process the federal trademark process um 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 you know that knockout search is just looking for red flags that would say hey like we have a major problem here we should not even consider moving forward with a a search report or legal opinion um conversely you know sometimes we do those knockout search 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 you know Translating that into what an application or what a legal you know opinion might look like if we were to move forward with the clients uh 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 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 you know are going you know long term with the 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 knows trademark search report legal opinion we want a really good strategy coming on that meeting what would you say are kind of the top one two or three things that a first time you know filer says oh whoa I had no idea or uh ah now I get it right right 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 fitted explain the buckets first yeah so there are like I said 45 classes of goods and services the first 35 or um verse 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 um so they’re going to fall into multiple classes depending on the 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 you know 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 you know in terms of like where you’re going to need to do a more deeper dive search when when yeah so if a client is going to come to the firm bring with them um a fairly descriptive trademark something that’s not um very unique right 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 that 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 you 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