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By J.D. Houvener
Patent Attorney and Founder

Hey everyone, good morning. I’m J.D. Houvener, owner here at Bold Patents Law Firm, and you’ve made it to our live program. I’m a patent attorney and owner here at Bold Patents Law Firm. I’m here every Wednesday, so if you couldn’t make this session live and you’re watching after the fact, show up one of these next Wednesdays, 9 o’clock on the West Coast and noon on the East Coast. I’m here to answer live questions and answers from you. Please don’t share anything confidential. Okay, this is not an attorney-client discussion, but I will be able to answer generic questions, process questions, wondering whether patenting is the right time for you, whether it’s a trademark, copyright, trade secret, or something that might be actually eligible. Love to talk with you about the process and any questions you might have about that. Today, I was really hoping to have one of our clients on, Christina Evans, who is the owner over at Shy City Alkalinity. Unfortunately, she couldn’t make it here today, so we’ll be talking about her invention briefly and celebrating the fact that she is now patent pending in just a little bit. Coming up later on the program, we’ll be sharing some questions that have come in from Avvo.com. For those of you that are joining in from the Avvo community, welcome. You’re welcome to stay tuned for the whole program, but if you want to jump to the end, that is where I’ll be addressing those questions. And I do want to offer a chance here, about midway through the program, for some of those who are looking for a way to get started, you know they’re not quite sure how to do it and what’s involved and it might be overwhelming to them about the patent process. T

hat’s why I wrote this book behind me, Bold Ideas: The Inventor’s Guide to Patents. And that copy of that book, a PDF downloadable version, is available to you if you take action and schedule a free screening session today. So, I’ll provide that link for you to do that in just a few minutes. All right, so let me do that here, and again, I will be prioritizing live questions for those who have got something burning, always been wondering about. I’ll be happy to share that with you guys. All right, so put up a quick disclaimer here. As you might have seen in the different posts, we are live across LinkedIn, streaming live now on Facebook, as well as our YouTube Google platform. So again, this is a webinar live format, so please do not share anything confidential. I am a patent attorney registered at the USPTO and an owner and founder here at Bold Patents Law Firm. So, I just put in the comments there a disclaimer, at least I tried to. Here we go, legal notice.

And so yeah, let’s get into it. So, I want to share with you guys the invention that Christina Evans, who is a female Black entrepreneur based out of the Chicago area, she’s invented this, what we have now filed, and our attorney at our firm, Reed Rising Mate, has helped her submit is a method and system for a tincture or a spray to go on topically to provide pain and otherwise positive health effects. So, I want to share with you guys her website in case you’re interested in looking at her information. So, I’ll share your screens, you can take a look at her website. I thought it was pretty impressive. So, aside from this tincture, this sort of oil that she has now patent pending protection for, you can see that she has many products, including Shy City Alkalinity, which is the bottle of water that has alkaline in there. So, it’s just proprietary methods and system, as well as the composition, all protected now through our firm. And it’s a really fascinating logo as well. We’re hoping to help her protect. And so, she’s in the Chicago area, that’s where she’s getting her start. So, if you happen to be in the Chicago area and you haven’t heard about Shy City Alkalinity, check it out. I’m going to put the website in the comments here. Really impressive what Christina has been up to. All right, so put that link over there, and again, congrats to Christina for being patent pending, and kudos to her attorney, Reed Rising Mate, one of our top attorneys here at Bold Patents Law Firm.

Okay, I think now is a good time to jump right ahead to our Avvo.com questions. I don’t have any live viewers at this moment, so we’re going to go to those questions that have come in from our community. All right, this question, hilarious, has come out of the Chicago area as well. This is related to patent applications. So, there, a lengthy question. Trying to put it into the box here. All right, so what is IP or patent ownership assignment? I submitted a good patent with my previous company. I get that that’s good. And now, as part of the filing, they sent me an assignment PDF file to sign, which is odd to me, and I never had experience with signing such a file. I was going to sue the company, so I’m a bit suspicious about the request. It uses the following language. What is it exactly, and what do they mean by asking for it? I’m asking me to sign it. They understand, hereby authorizing the request to commission your patents and frameworks to issue letters patents to assign me. Yeah, so this is actually pretty standard, believe it or not. Whether you’re a current employee or a previous employee, if you’re the inventor and while you invented or maybe co-invented a specific invention, if you were an employee at the time, the company that you were working for, the employer, actually owns that invention. And so, they have a right to all that IP, including the inventions and perhaps any trade secrets or supplying supporting information, including copyrights or even trademark material that’s related to that innovation. So, it is your duty and obligation to assign it to that company, even if you’ve now left the company. And of course, it sounds like you may have other legal issues and civil matters related to the employment, perhaps in a litigation matter, which you said. But it is irrelevant.

The underlying fact is that if you were an employee at the time you invented, co-invented, while on the job, then the invention is owned by the company, the employer. So, well, there may be some wiggle room in that if you were to have a decent argument, for example, if the invention was done off hours and is unrelated to the job and you weren’t using the company computer or company tools to produce the invention, that is possible. You can make an argument that no, no, this doesn’t belong to the company. This is me personally. So, if you have any questions about that or you want to talk further, please get a hold of me or one of my attorneys at the firm. We can help you walk through that. But I’m guessing this is probably related to the actual work you were doing as an employee, and so it is standard to have you assign otherwise give up ownership to the company under your employment contract. All right, I’ll put my email address and contact information here for you to follow up with me. I’ve got an email address and a text-only phone number. You’re welcome to text me at. Pretty good, got that. Okay, let’s go to our next question in the patent application space. This question is out of Los Angeles, California. All right, here we go. All right, can you patent a rug shaped like a country? Okay, new company website is claiming that they have a patent in the US and the European Union for a small country-shaped rug. Can you actually patent an item shaped as a country? I can’t locate divided by search, nor do they display their patent number. Well, interesting. Okay, so patents are, there are two main types of patents that are issued by the USPTO, and there’s utility patents and there’s design patents. Okay, utility patents protect and give you rights for functional inventions, things that actually do something, and that’s exactly what you get the rights for is what the activity is, what the functionality, the benefit that they’re providing, the utility. Okay, the other aspect is design patents, where all you own is the actual art, right? The actual just, you know, the three-dimensional article of manufacturer, right? What is actually built in three dimensions, in sculpture and shape and form and ornamentation, not what it does, right? Different. So, those are two very different rights, and it is possible in this case, I would say that the, this company may have a design patent for a specific type of, you know, tapestry, right? A rug, in other words. It may be shaped in a certain way, and it is possible that that that exists as a design. I would highly doubt that they have an active patent for a rug, um, in other words, the utility of a rug has largely been around for quite a long time. And so, unless they come up with a new type of a polymer strand or a new type of material pattern or method for actually making the rug, then it is unlikely that they have a utility patent on it. So, if you’re curious in terms of, you know, are they actually, you know, do they actually have a patent in the US, there are ways to do a search on the USPTO website. You can actually search by company name under assignee. Assignee means the owner of the patent. Or you can also search under inventor if you know the actual inventor’s name. There are easy ways to search for that. So, you can do, you know, check out the USPTO website. It is odd that they’re not claiming that they have a patent or putting the patent number. Usually labeling is an important part of putting the right amount of notice out. So, thanks for that question. All right, let’s go to our next one. We’ve got three questions here in the trademark domain. All right, and we’ll cover just a couple more, and then we’ll wrap up here. Okay, so this question is out of Dallas, Texas.Alright, can I use the name that is trademarked but in a different way and with the variation? I wanted to begin a business and register an LLC. My field involves social media management, content creation, and web building. Let’s say I’m wanting to name it ‘I Love Social Media.’ I went to the US Gov website and searched trademarks (good for you) and found that an entertainment and news company production studio has already trademarked the name. Is there any way that I can use this name with a variation? And what if ‘I Love Social Media’ is a common phrase that people use, and it’s almost part of the culture? Okay, good question.

So, it’s a trademark law, right? Just the underlying features of registering a mark in trademarks is that you have a distinctive mark. Distinct means independent, meaning it’s the only one. In other words, it will not confuse the consumers. So, that phrase ‘I Love Social Media,’ if you’re going to be using the exact same phrase that someone else has already used, it’s not going to be distinctive, meaning you’re not going to get the underlying registration for it, and you could potentially be infringing on someone else’s use with that mark.

The only catch is that it is possible, I suppose, that someone could use ‘I Love Social Media’ in a different classification. It sounds like you’re in the field of website development, social media management, content creation, which certainly falls right into the wheelhouse of social media. But like I said, it could be someone’s using ‘I Love Social Media,’ but they’re actually a pet adoption company. Okay, I’m using kind of a little bit outrageous example, but if they were in the pet industry, okay, pet care, pet adoption specifically, and they use ‘I Love Social Media,’ that’s the name of their brand, well, in that case, you might be able to secure ‘I Love Social Media’ for social media management because it hasn’t been done before, it hasn’t been registered, and there’s no prior user of that mark.

So, you have to kind of take a look at the current registration that you found on the government website, like you went to the USPTO website, and if the classification is the same as what you’re going after, that is going to be difficult to get around. Certainly, you’re not going to use the same exact name. If you want to try to find a similar name that’s not going to be rejected, I would highly advise you get with one of our trademark attorneys, and Matt Cole Seth here at our firm is awesome at that. So please take a look at the link above my email and contact information. Please do reach out, and we’ll help you get that mark registered.

Alright, well, I see a couple of people popping in. If you guys have any questions, I will field those live questions first. But I’m chipping my way through the Avvo questions as we go here to the broadcast. So just keep those questions coming in. I’d love to have some live interaction here with any of you. Any questions related to patents, trademarks, trade secrets, anything in IP?

Okay, another question out of Chicago. This is popular. Alright, here we go. So this one came in through Avvo, and it’s related to trademarks as well. Would it be possible to trademark an artist’s stage name if the YouTube channel is already using it and get ownership of it? First of all, I think I take the time to read my question. I’m an artist, and I make sculptures, paintings, and compose music. So no artist or brand has the name they came up with except for an inactive Instagram and TikTok account. YouTube seems to have a channel with the same name, which posts old music from the 80s and has 2,000 subscribers.

So, it looks like there’s sort of this issue where you come up with a name to conduct business, and there may be a prior use. If you find one, a channel on YouTube, and maybe someone that’s using this for a TikTok account but not necessarily for business purposes. That will kind of, I believe, be the root of the issue. Working with the trademark attorney, the question is: Is there a prior use right of this mark you’re going after? But more importantly, was that prior use a commercial use, and did they maintain their use up until the current date, or did they at any point abandon that mark, stop using it? And if they did, right, if they actually stopped using the mark, then it is, in a way, up for grabs, and you could make a claim that now, look, they weren’t actually using it for economical purposes. This was just sort of a fanciful use in almost an artistic or a leisure or personal use. And the trademark office will likely see through that, and they’ll reward you with the registration if you can prove that you are actually in commerce, using this mark for selling your art. You mentioned you’ve got sculptures and paintings. So, I believe there is a way to move through this. It’s just a matter of documenting and understanding all those prior uses to make sure that you’re not going to run afoul or get rejected for those uses.

And the other question that will come up too is more in the same classification as the other TikTok account and this YouTube subscriber. They don’t necessarily seem to be in the art domain. Of course, they’re posting old music, but there is no distinction from your type of art, which seems to be more fine art as opposed to music production. So, yeah, I’d love to help you. If you have any questions about getting registration, reach out to us. I’ll probably connect you with Matt on our team.

Okay, we’ll do one more question, and I appreciate that too. I see that the LinkedIn user, I appreciate you guys tuning in. I’m not able to see how many LinkedIn users there are, so it shows up right now there are zero live viewers. Fingers crossed that there actually are a few people out there live. If you have any questions at all, I will take your questions right away. I’ll probably be on for five minutes or so, but for now, I’ll jump to our last question here on trademarks, which is going to be out of Las Vegas, Nevada.

And again, trademarks are something I’m happy to talk about, but I do actually love talking about patents. So, I wish there were more questions out there. Alright, so, okay, this question asker says, okay, can I use the same name as other businesses for my logo? I am starting my clothing business, and I found the name before my logo had already been used by a jewelry store. Can I still use it because jewelry and clothing are not related? Thank you. Well, maybe, maybe. I don’t know if they’re completely unrelated, okay? And I would say jewelry and raising reptiles, okay, those would be completely separate. I think clothing and jewelry could be bucketed into this giant bucket called apparel. And I think it is possible, depending on how broad the prior user that’s in jewelry got their registration.

So, it could be that they cover what they’re selling now in jewelry, but they may also have rights and protections for other types of merchandise and apparel, including clothing. So, that’s something to sort of look out for. And if you don’t necessarily know how to look it up, I would get with a trademark attorney to make sure the last thing you want to do is start up a company, get investment, get actual money coming in the bank, and then realize you’ve got to have a settlement now with this company because there’s trademark infringement. So, you wouldn’t want that to happen. So, if you’ve got their actual name in your logo, right, you’re actually using it, the main issue there is if there’s any confusion in the market where you’re in a way sort of using the goodwill that this other company, the jewelry company, has produced over time, and you’re getting some of that name recognition for the commercial benefit of your company.

So, that is the major concern, consumer confusion, and, in a way, sort of unearned goodwill that is being, in a way, stolen from this other company unintentionally perhaps. But the difference of classification, I think, is closer than I think you’re warranting here. So, let’s take a look at the underlying trademark registration that the jeweler has and see if it is specific to jewelry. And if it is, I think it does lean in favor of being able to get registration, and you’ll likely have to disclaim jewelry or you wouldn’t be able to own that with your logo design.

I should also quickly mention that there are two major types of marks out there. One is a word mark, and one is a logo or so-called a design mark. That is the true technical term. So, a word mark covers the actual English letters. So, like ‘Bold Patents,’ right? Yeah, not the blue and pink and green shapes and colors. That’s actually part of the design pattern. We actually have two separate starting up design trademarks. The word mark just has the English characters, normal ‘Bold Patents Law Firm.’ So, there are two separate trademark rights. One covers what actually spells out in order in the English language, and the other is merely artwork, which is what a logo or design mark is. And so, you have to think about whether the logo, if you could perhaps rework the logo to get rid of the actual words in the logo and rely solely on the color, the imaging, the shading, the artistic way that that design looks. If you can pull the actual name out of that and still sort of have that powerful imagery that you want, you likely will have a much more much easier time getting that registration.

Alright, well, guys, we’re going to wrap up. Again, I’m J.D. Houvener, owner and founder here at Bold Patents Law Firm, and I’m here every Wednesday. So, if you missed us live, please join us next week. I’ll be here Wednesday at 9 a.m Pacific and on the East Coast. And for your copy of the Bold Ideas book, if you want to take action and get a copy of that, here is a link to schedule a free screening session with one of our advisors. And for taking action, you’re going to get a copy of the book. So sorry, it took a lot to put that link in there, but there it is. Please check it, take advantage of that, and schedule some time and get yourself started. Have a great day, everybody. Go big, go bold.

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/