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By J.D. Houvener
Patent Attorney and Founder

Hi everyone welcome to the bold today show i’m your host jd hoovener and i’m here every week with you to answer patent related questions it’s a live q a to welcome any inventor entrepreneur someone in the startup world maybe someone who’s been at this for quite a while and you could uh you’ve still got questions about how to move your invention forward uh this is the forum to do so so uh come one come all i’m here every week every wednesday at 9 a.m pacific and noon on the east coast my name is jd hoovener and i’m the owner here at bold patten’s law firm a patent attorney and uh host of this show i’m excited we’ve got a special guest coming up on the show soon and uh i would be introducing him just a little bit he’d be talking about design product design and everything that goes with it because that certainly goes hand in hand with pads for those who are maybe watching after the fact who are from our community i’ll be getting to those questions a little bit later i’ve got our agenda i’ll post in the comments here uh so after we get done with the introduction section i will be offering a a free screening session with our firm uh one of our advisors will be able to get with you um for no cost as i said for up to 20 30 minutes to see if now is the right time for you to move forward with your invention and so i’ll provide that link for you right now and for those of you out there that are wondering whether you should take action i want to try to reward you for doing that so i’m going to be offering you a copy of this book that i wrote myself just a few years ago bold ideas the inventor’s guide to patents it’s got all the basics all the nuts and bolts on what is a patent what’s the difference between a patent and a trademark copyright trade secret provisional non-professional all those good stuff so you get a free pdf download of this book for scheduling that screening session so take advantage of that click that link right there as we begin to get more uh people sign in today i want to also offer a disclaimer so please do not share anything confidential in this session this is a live public podcast this is not an attorney client consultation okay so i think without further ado we’re going to start bringing on our guest his name is mark garcia and he’s the ceo of rogue innovation and design uh mark how are you doing today good thank you thanks for for having me jd you’re welcome thanks for coming on the show being willing to uh you know share with us what you’re up to um so uh for those of you i’ve been working with mark for a couple years now and uh had the pleasure of uh of our clients getting to work with you mark and uh but i haven’t had you on the show and i’d love to feature you and kind of hear them about your backstory to start you know what what kind of got you personally involved in uh design work tell us a little how you got inspired well uh formerly i was in it for eight years and honestly i got really really bored because as a i was growing up all i did was just draw and imagine things drawing spaceships rockets um battery powered cars back in the 80s if you can imagine that and finally i i got into a magazine i don’t know if they still have magazines called popular mechanics and i found something called industrial design i found it uh started taking some classes and decided to just just put my whole career away go back to school and and get into it um after seeing that it was all about drawing imagining making huddles making prototypes inventing i said i was in love and and and the rest is history as as it were awesome well good so and so what was it i’m sure you’re able to kind of bring a lot of those you know i t you know experiences that that engineering you know systems thinking to your to what you do now so it wasn’t all for not right yeah absolutely there’s problem solving there’s obviously professionalism and interfacing with people that allowed me to have a competitive advantage in in college versus the younger kids so so uh don’t be afraid to go back to school is is the message but yes absolutely cool all right well um so rogue innovation what uh your name last name isn’t rogue and i don’t know if anybody is named rogue there so what would you think of that that mean in terms of branding

rogue is my youngest daughter uh her middle name uh isadora rogue um and she definitely wrote she just does whatever she wants she is

to the behalf of my wife actually so why did you name her rogue um and uh the other thing is because the the problem that i found in in design is it that especially being in it for the first seven years is that that it’s really it’s really expensive and not accessible to the general public and i realized that uh to to empower mass prosperity i wanted to empower mass creativity and the only way to do that is to go rogue and to bring prices down to make it completely accessible to the normal person that is so cool i love it i like that name a lot i mean obviously we’ve named our firm bold you know sort of thinking of our inventors thinking of creators um you know no one’s name is bold here right so we’re kind of non-traditional there too and i i think rogue is even better i mean not only to be rogue you not only have to be bold but just be willing to really step out on your own and be different so absolutely yeah our paths are aligned there so um what i want to do is i want to showcase your website you’ve got a really interesting cool looking site um and so if anyone wants to find you there i’ll just put that in the url but it’s rogue dash and i’ll put that there in the comments and then i will share my screen so we can look at this together you’ve got a couple of really good messages we uh we looked at just before the show so here’s the landing page and

you’ve got your product your services here with your vision there in red below right all right so concept development product digital graphic packaging branding engineering so that’s quite a bit what would you say is sort of the you know the first step for someone brand new to design they got their first consumer product they’re excited to get you know working with you where do they start uh first start is first of all let’s let’s go with the concept development um as you know working with inventors there’s a lot of smart people out there that are very creative and typically when that when a person comes to us something that they they come up with is usually already thought of or something very very similar and uh and it’s my job as a as a veteran inventor to to create a point of difference for them um through the same tools that you guys use or similar tools like google patents and such uh and then and that’s why a partnership with you guys and working with you guys so great is i send them to you to confirm the the their idea that it is something that is a point of difference and something that they can actually own awesome good stuff yeah i mean it’s important to be different right yeah and make sure you’ve got that competitive edge uh for sure and um you know in terms of what we do right we’ve conducted all the searching uh to sort of put ourselves in the shoes of the patent office that’s really what we do right make sure we think as much ahead of time as possible if you’re trying to get a patent for this invention um you know how are you going to get past the examiners so we we did that search first search worldwide um but i’m happy to hear that you help inventors do like an initial search right before dropping what could be a good chunk of money with a law firm like ours do some initial diligence and um i’m proud to hear that i’m happy to hear that you recommend that for your clients too yeah so that’s great good stuff so i um we could talk about a lot i i wanted to have one more topic if you don’t mind um kind of as we go into this you know we just talked a little about covet post covid in working with clients that are um you know starting to get back into meeting face to face or working with you know equipment what are sort of what are your sort of things you see as important as we go forward this year as we get into the post code phase of working on prototyping developing um what is important about getting into that stuff yeah what are some things to think about what’s kind of what’s in the future in terms of you know designing well um so the future of design i i believe is is what we’re doing here is being able to be virtual being able to talk to people and and honestly one of the advantages of rogue is the fact that we are virtual a fully virtual um agency and and if for those that aren’t used to interfacing in this way get used to it because this is pretty much the new norm obviously the the breaking bread and having relationships with people in person is going to still have an important role in in development and creating teams and relationships but but this here this virtual connection whether you’re on one side of the world or the other or next door uh this is this is the the way that work that work is being done yeah yeah that’s right i mean even i think i fall into the trap of oh gosh you know we’re going to be going back you know to sort of getting into labs and manufacturing facilities and you know maker spaces but you’re kind of alluding to the fact that you don’t think that’s necessarily going to be the case or the you know the future for a lot of them and and you’re talking about embracing virtual relationships commercial you know professionals to help you with uh remaining virtual staying virtual absolutely i mean it’s probably going to be a hybrid as things start to open up but as we see things dipping up and down with with with this pandemic and and these these variants i think there’s going to be there a an adoption of both honestly and and working with my clients that the the major companies uh they’re adopting a way of working distant um just like we are now uh and and coming together when only when necessary and i think that’s that’s probably the the road map for the future honestly absolutely well good deal well mark i’m going to put you uh backstage for a little bit uh we did get one comment in from pidus kanti datta gupta from india uh just saying hello nice to hear from you but anybody else has any questions for myself or for mark uh he’ll be able to field them until we’ll bring him back on in about 10 minutes so hang on there mark hey all right well let’s go to our questions um again please keep those live questions coming in we’ll we’ll prioritize those and get to you right away i do have three questions i want to try to get to these are all trademark related i didn’t get any patent questions this week of course i love those actually this one might be it was miscategorized uh okay i’m going to put this question into the the field so everyone can see it


might cover up most the screen here okay i’ll try to jump over all right can it be possible to make corrections after the patent application one week before we established our company we applied for a trademark patent okay obviously there’s some confusion here for our company name and logo through a lawyer the lawyer applied our logo correctly but the name of our company incorrectly after we realized that he was wrong we informed him he told us that he had corrected and applied again when we checked from the uspto we saw that the change was still not made the layer told us that when it told us that when it is your turn


it was kind of a long one your application will be corrected by the officer our question is can corrections be made after the application is made by the way we started a company a week after the patent application okay so a few things here to note is that seems to be some confusion between patent and trademark okay so a patent application is when you have an invention and that’s kind of what a lot of mark and i were just talking about earlier if you have something that is functionally new right actually it’s a product right water bottle and it’s got a you know novel function or even if it’s a small improvement but like this little trigger right spring-loaded trigger and opens up an aperture for drinking water okay that is your invention that’s a functional invention and you should file let’s see first get a patent search done and then proceed with the patent application to get a um utility patent okay because it’s functional uh there are also ways to get a patent for design so let’s just say the actual shape right the sort of cylindrical shape with the curvature here at the bottom right this kind of nicely shaped cup you know for sort of ergonomics or sitting properly it’s not to do with what it does but just the way that it looks can be protected with a design pattern okay so that’s design patterns and then very separately trademarks protect businesses right products goods and services and how customers perceive that branding okay so it’s really nothing to do with an invention so trademark i believe it’s really the root of what is being asked here in this question if someone has submitted either through their attorney or maybe it was on their own a logo okay in a logo the actual technical term for a logo submission is a design mark okay a trademark submitted as a design i mean just like this one right above me this you know pink blue and green bold that is a design right the way those the letters are shaped the way the colors are oriented that’s a design mark okay separate from the word mark it actually does spell bold right in english letters but the design mark actually is it’s separate from those letters right it’s actually just triangles and ellipse you know two lines and then you know another triangle so that’s the actual design mark that’s what’s being represented by our firm services our legal services uh so people get to know that that mark by the nature of that design so that is the design mark it sounds like there was an issue with respect to your word mark and so the attorney you’re working with was likely trying to support you and file a separate word mark and typically that’s what’s done is you have a design mark for the logo and a word mark protecting the actual name of the of the service or the goods or products so we have two in our firm we have one uh covering bold ip and bold patents the actual english characters and that will prevent you from you know someone else in the same class from having a sound alike you know or you know similar or exactly spelled name that’s offering the same goods or services the bottom line question is yes changes can be made to trademark applications but they must must be you know all have the same priority so one of the key things about trademarks is it points back to your first use and so if you you know if you use and provide a specimen say yep we used the name bold patents to sell legal services on january 1st um if that was a misspelling you wanted to say bold patent you know well patents

law firm maybe with a word law firm but you didn’t actually use the word law firm in that initial sale that specimen may need to change as well so a lot of things to think about when you make modifications and changes after filing but they can be done so if further questions please reach out i’ll provide our my personal email and also our text my text only line if you have questions for texting

uh summa pinellas got a question here um let’s see uh hi man request of uh dm you both i request confidential confidentiality regarding my patent absolutely yeah absolutely so there’s my email address um summa so you can send to jd at and i did get permission from mark to share his uh his email so i will do that he is mark at rogue dash id tv yeah rogue id that’s right dot com you can reach out to mark separately there too to discuss your invention uh brian dennis has got a question and i’ll feature you guys first here do patent lawyers like yourself ever partner with entrepreneurs businesses shares is payments for legal services some patent lawyers do absolutely um and we have up to this point shied away from that sort of a policy standpoint i believe pretty firmly in walking alongside our inventors and not necessarily walking directly with and sharing the same financial pockets i feel like it’s a little difficult and ethically stretches too much for my in our firm’s personal interest we want to make sure that we can give you the truth the full truth and nothing but the truth even when it’s really bad news and we don’t want what we say to be in any way inhibited by you know our thought about our pocketbook right you want to be a fee for service you provide you know money and exchange for our 100 honest ethical legal services so i wouldn’t want any any ethical dilemma so we’ve avoided that and that’s one of the main reasons why attorneys can get tripped up if they decide to partner with clients but it has been done it certainly is a there are ways to do it ethically it’s just our firm in particular has not decided to do that and thanks for that question all right let’s jump in we’ve got another i think time for one more trademark question that first one was a really good one let me go back to this okay this one is out of los angeles

let’s see here okay like i said don’t pre-screen these so i have to read them myself um while we look at them all right here we go so my favorite candle was discontinued can i replicate the fragrance and sell it as my own candle oh my gosh this is gonna be good like a law school exam okay um my all-time favorite christmas candle has recently been discontinued the brand that made them actually went bankrupt okay and then later relaunched with all new products i have my own candle brand and i would love to sell the fragrance to my customers is it legal for me to do that could i rename the candle and sell it as my own fragrance or would i need to indicate that the candle was a copy wow this is really really fun really fun question um okay a couple layers here so you’ve got your own candle company kendall brent so you’re a competitor okay and so you’re talking about a competitor’s candle and it sounds like you’re not necessarily you know you know attached to the shape or the type of wax it’s the smell of the candle is that is what you would like to replicate and um there are there are ways to get um protection okay over the smell and i have not done that i don’t have very much experience with that but there are ways to protect smells okay um through trademark protection okay it’s tricky it’s very hard you’ve got to build a i mean secure um you know a pretty distinct and you have to show a specimen that provides evidence that customers associate a certain smell with your products and your products alone i highly doubt that this other company this competitor of yours has gone to that extent but i would urge you to hire a law firm to have to explore that to see if there are any rights protecting that smell

and so if there are no rights that protect that smell for their candle i would assume that you as a candle maker know how to sort of dissect the you know the chemicals and are able to reproduce the fragrance

so i assume that that aspect assuming there’s no rights held by that uh competitor you should be able to reproduce that candle with a similar fragrance um

pull the question up to see if there’s anything else there this actually went bankrupt and relaunched i think that’s irrelevant only the only issue there is that what can happen with with trademarks is if the company uses a market you know we have bold patents let’s say we went bankrupt and we stopped using that mark for a period of time okay um the mark can go abandon right you abandon the business you’re no longer in operations so therefore you have no ability to enforce that against any competitors so if during that time someone else had launched another candle brand maybe you did and started selling that same fragrance um it’s possible that they could have lost their trademark right to that um that smell as well so anyway a little out of my league on that it’s really fun i’d want to dig in and research it uh a little bit more before we give you some more concrete answers but i uh i think that’s very cool um all right all right great questions sorry i kind of stumbled with that one but i just really like that question i’m gonna bring mark back on um mark hey how you doing good all right any any thoughts on some of those questions there i love it it’s just so that the law the patenting law is so com so interesting and shitty yeah yeah um i know it it is it’s well i’m i’m i’m honestly looking it up right now i know in yeah here we go okay yeah trademarks yeah okay i was not wrong i i had to google it so you you can trademark smells colors motions scents flavors um it’s okay i wasn’t that far off but yeah so good i just i you need to connect some research see if that competitor has that smell um and yeah one thing i would also mention you know if there was a specific design of the candle you’d want to make sure that was uh not um you didn’t rip that off right even if it’s um you know make sure you have a different design and if the actual makeup of the of the materials is protected under you know composition of matter that could also be at issues too so there’s a lot a lot going on there a few different layers so have you ever helped anyone design the candles mark no but but if anyone can replicate champagne toast um my my my wife would be totally on board and you’d have oh that was that’s the fragrance champagne yeah yeah i think champagne yeah it went wild and just yeah so trending awesome well i looked that up cool mark well thank you for having fun with me thanks for being on the show um we’ll wrap up um anything you want to say to wrap things up before we sign out um well every yes i believe everyone has innate creativity and and not everyone has the exposure to it but hopefully what you’re doing what i’m doing is is will empower people to be more creative and actually earn a living and prosperity through it so so go bold be rogue and uh and and create because i i believe that is what the the true nature of humanity is oh that is beautiful mark my gosh all right man i can’t see anything else we’re going to everyone have a wonderful day we’ll be back next week and probably have mark back in future weeks thank you again for coming on i appreciate it go big go bold everybody yes

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