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By J.D. Houvener
Patent Attorney and Founder

Hi everyone, welcome to the Bold Today show. I’m your host J.D. Houvener, 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 still got questions about how to move your invention forward. This is the forum to do so. So, 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 J.D. Houvener, and I’m the owner here at Bold Patents Law Firm, a patent attorney, and the host of this show. I’m excited. We’ve got a special guest coming up on the show soon, and I would be introducing him in just a little bit. He’ll be talking about design, product design, and everything that goes with it because that certainly goes hand in hand with patents.

For those who are maybe watching after the fact, who are from our avvo.com community, I’ll be getting to those questions a little bit later. I’ve got our agenda; I’ll post in the comments here. After we get done with the introduction section, I will be offering a free screening session with our firm. One of our advisors will be able to get with you 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. So, I’ll provide that link for you right now.

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-provisional, 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 people signing in today, I also want to 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. Mark, how are you doing today?

Good, thank you. Thanks for having me, JD.

You’re welcome. Thanks for coming on the show, being willing to share with us what you’re up to. So, for those of you—I’ve been working with Mark for a couple of years now and had the pleasure of our clients getting to work with you, Mark, and I haven’t had you on the show. I’d love to feature you and hear a bit about your backstory to start. What got you personally involved in design work? Tell us a little bit about how you got inspired.

Formerly, I was in IT for eight years, and honestly, I got really, really bored because, as I was growing up, all I did was just draw and imagine things—drawing spaceships, rockets, battery-powered cars back in the ’80s if you can imagine that. Finally, 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, started taking some classes, and decided to just put my whole career away, go back to school, and get into it. After seeing that it was all about drawing, imagining, making models, making prototypes, inventing, I said, I was in love, and the rest is history, as it were.

Awesome. Good. So, I’m sure you’re able to kind of bring a lot of those IT experiences, that engineering, systems thinking to what you do now, so it wasn’t all for naught.

Absolutely. There’s problem-solving, there’s obviously professionalism, and interfacing with people that allowed me to have a competitive advantage in college versus the younger kids. So, don’t be afraid to go back to school is the message, but yes, absolutely.

Cool. All right. So, Rogue Innovation. What—your last name isn’t Rogue, and I don’t know if anybody is named Rogue. So, what does that mean in terms of branding?

Rogue is my youngest daughter, her middle name, Isadora Rogue. She definitely lives up to the name. She just does whatever she wants. She is a bit of a rogue. To the behalf of my wife, actually.

So, why did you name her Rogue? And the other thing is because the problem that I found in design, especially being in it for the first seven years, is that it’s really expensive and not accessible to the general public. I realized that to empower mass prosperity, I wanted to empower mass creativity. The only way to do that is to go rogue and 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, sort of thinking of our inventors, thinking of creators. No one’s name is Bold here, so we’re kind of non-traditional there too. 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. Our paths are aligned there.

What I want to do is showcase your website. You’ve got a really interesting, cool-looking site. If anyone wants to find you there, I’ll just put that in the URL. It’s rogue-id.com, 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 looked at just before the show. Here’s the landing page.

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 the first step for someone brand new to design? They got their first consumer product; they’re excited to get working with you. Where do they start?

First start is, first of all, let’s go with the concept development. As you know, working with inventors, there are a lot of smart people out there that are very creative. Typically, when a person comes to us, something that they come up with is usually already thought of or something very, very similar. It’s my job as a veteran inventor to create a point of difference for them through the same tools that you guys use or similar tools like Google Patents and such. That’s why a partnership with you guys and working with you guys is so great. I send them to you to confirm 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 and make sure you’ve got that competitive edge. For sure, and in terms of what we do, we’ve conducted all the searching to sort of put ourselves in the shoes of the patent office. That’s really what we do, make sure we think as much ahead of time as possible if you’re trying to get a patent for this invention. How are you going to get past the examiners? We did that search first, a search worldwide. But I’m happy to hear that you help inventors do an initial search right before dropping what could be a good chunk of money with a law firm like ours. Do some initial diligence. I’m proud to hear that, happy to hear that you recommend that for your clients too. That’s great, good stuff.

So, we could talk about a lot. I wanted to have one more topic if you don’t mind, kind of as we go into this. We just talked a little about COVID, post-COVID, in working with clients that are starting to get back into meeting face to face or working with equipment. What are sort of the things you see as important as we go forward this year as we get into the post-COVID phase of working on prototyping, developing? What is important about getting into that stuff? What are some things to think about? What’s in the future in terms of designing well?

So, the future of design, I believe, is what we’re doing here is being able to be virtual, being able to talk to people. Honestly, one of the advantages of Rogue is the fact that we are a fully virtual agency. If you’re not used to interfacing in this way, get used to it because this is pretty much the new norm. Obviously, breaking bread and having relationships with people in person is still going to have an important role in development, creating teams, and relationships. But this virtual connection, whether you’re on one side of the world or the other or next door, this is the way that work is being done.

Yeah, that’s right. I mean, even I think I fall into the trap of, “Oh gosh, we’re going to be going back to sort of getting into labs and manufacturing facilities and 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 future for a lot of them. And you’re talking about embracing virtual relationships, commercial professionals to help you with 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 this pandemic and these variants, I think there’s going to be an adoption of both, honestly. And working with my clients, the major companies, they’re adopting a way of working distant, just like we are now and coming together only when necessary. And I think that’s probably the roadmap for the future, honestly.

Absolutely. Well, good deal. Well, Mark, I’m going to put you backstage for a little bit. We did get one comment in from Pidus Kanti Datta Gupta from India, just saying hello, nice to hear from you. But anybody else has any questions for myself or for Mark? He’ll be able to field them until we bring him back on in about 10 minutes. So hang on there, Mark. Hey.

All right. Well, let’s go to our avvo.com questions. Again, please keep those live questions coming in. 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.

Okay. I’m going to put this question into the field so everyone can see it.

Okay.

Might cover up most of the screen here. 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 lawyer 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 there seems to be some confusion between patent and trademark. So, a patent application is when you have an invention, and that’s kind of what Mark and I were just talking about earlier. If you have something that is functionally new, right, actually, it’s a product, right? A water bottle, and it’s got a 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. 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 utility patent because it’s functional. 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 patent. Okay, so that’s design patents. 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, a 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 letters are shaped, the way the colors are oriented. That’s a design mark. Separate from the word mark. It actually does spell bold right in English letters, but the design mark actually is separate from those letters. It’s actually just triangles and ellipse, you know, two lines and then another triangle. So that’s the actual design mark that’s being represented by our firm’s services, our legal services, so people get to know 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 service or the goods or products. So, we have two in our firm. We have one covering Bold IP and Bold Patents, the actual English characters, and that will prevent someone else in the same class from having a sound-alike, 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 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 use and provide a specimen, say, “Yep, we used the name Bold Patents to sell legal services on January 1st.” If that was a misspelling, you wanted to say Bold Patent, you know, “Law Firm,” maybe with the 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 my personal email and also our text-only line if you have questions for texting.

Uh, Summa Pinellas got a question here. Let’s see. Hi, man, request of DM you both. I request confidentiality regarding my patent. Absolutely, yeah, absolutely. So, there’s my email address, Summa. You can send to jd at boldip.com. And I did get permission from Mark to share his email, so I will do that. He is mark at rogue-id.tv. Yeah, rogue-id, that’s right. Dot com. You can reach out to Mark separately there too to discuss your invention.

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 in payments for legal services? Some patent lawyers do, absolutely. 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 and 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 our thought about our pocketbook. Right? You want to be a fee for service. You provide money in exchange for our 100% honest, ethical legal services. So, I wouldn’t want 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 Avvo.com. 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 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.

Okay, a couple of 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 attached to the shape or the type of wax. It’s the smell of the candle. Is that what you would like to replicate? And there are ways to get protection 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, through trademark protection. Okay, it’s tricky, it’s very hard. You’ve got to build a secure, 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 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 chemicals and are able to reproduce the fragrance. So, I assume that that aspect, assuming there’s no rights held by that 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 trademarks is if the company uses a mark, you know, we have Bold Patents, let’s say we went bankrupt and we stopped using that mark for a period of time, okay, the mark can go abandoned, 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 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 a little bit more before we give you some more concrete answers. But I think that’s very cool. Alright. Alright, 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. Alright. Any thoughts on some of those questions there?

I love it; it’s just so the law, the patenting law is so com… so interesting and…

Yeah.

…yeah.

I know; it is. Well, I’m honestly looking it up right now. I know, uh… here we go. Okay, yeah.

Yeah.

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 need to connect some research to see if that competitor has that smell.

Yeah.

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 materials is protected under, you know, composition of matter, that could also be at issue 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 wife would be totally on board, and you’d have… oh, that was… that’s the fragrance… Champagne.

Yeah.

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; we’ll wrap up. Um, anything you want to say to wrap things up before we sign out?

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… and… and create because I… I believe that is what the… the true nature of humanity is.

Oh, that is beautiful, Mark. My gosh. Alright, 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 https://boldip.com/contact/