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Why Trademarks and Copyrights Are Important for Your Business with Francesca M. Witzburg Esq.
Episode 291st November 2021 • Mesmerizing Marketing™ • Dimple Dang
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Welcome to the mesmerizing marketing podcast, where we take a deep dive

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into the latest marketing trends, tools, and tips, and provide you with

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the top resources you need to thrive and make your marketing mesmerized.

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And now here's your host dimple.

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Dang.

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Hello everyone today.

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I'm so excited to be here with Francesco wits.

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Roku is a trademark and IP attorney, and I'm going to let her introduce herself.

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Welcome Francesca.

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Hi dimple.

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I am so excited to be here today.

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My name is Francesca Pittsburgh, and I am an intellectual property lawyer.

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I handled trademarks, copyrights, anything really related to

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those two transactionally.

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And I run the Instagram account, the trademark attorney to educate and

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empower brands to understanding so that they understand what IP is and that

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they can actually integrate some of these tools in their businesses to help

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them just stay protected and profit.

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Yeah, that's really so important nowadays.

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So I love all of that and tell us where you're located.

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I am based in New York city and New Jersey.

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I am a New York and a New Jersey attorney, but the great thing about intellectual

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property rights is that you can practice federally because it's federal law.

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So I serve as clients all in all 50 states.

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Okay.

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That is amazing.

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I love that because there's definitely people all over that are

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starting new businesses that are launching podcasts that are creating

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membership sites and courses.

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And this is important information that they all need to know.

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But before we dive into all of that, I want to dig a little bit deeper.

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I want to know, when you first thought about, okay, I want to

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become a lawyer when I grow up.

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When was that?

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Like, how old were you?

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Do you remember that?

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It's like the most cliche story that every lawyer gives, right?

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Like, oh, someone in your family, you said you like to talk and you like to argue.

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And so you'd make a good lawyer.

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But actually even though they said that there was a point in my career where.

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In school.

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I wanted to do the nonprofit route.

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I thought I was going to work for a nonprofit organization and help that way.

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But then I realized, you know, you can actually get a lot done.

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And I, there was just so much more opportunity if I

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decided to go to law school.

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So I ended up exploring that route.

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I thought I was going to do public interest in wall school,

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but then I fell in love with.

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Concept and this legal thing called intellectual property

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law, which I had no idea existed.

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And I just knew it was the future.

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I knew it was a way to actually help people and help businesses and creatives.

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So I dove right in and I I've been an IP lawyer since.

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Awesome.

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And what do you love about what you do?

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I really like working with the businesses and the creatives.

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So I have clients that are all the way from fortune 500

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companies to solo preneurs.

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Right.

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I advise pretty much anyone and everyone on intellectual property issues.

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But what I really like is when clients come to me and they say, okay, here's,

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here's what we're thinking about.

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Here's what we're about to launch.

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And they just brain dump on me and I get to tell them, okay, here's your IP?

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And here are all the little tools and the things that you can use

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really to protect not only to protect your business, but to make money.

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I think that's a huge point for businesses is that you can start monetizing a

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lot of your intellectual property if you do it the right way and use

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lawyers as more as business partners and strategists than just necessary.

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I love that, use them as business partners and strategists, because I think,

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that's the thing, it's how you view your attorney and they are there to help you.

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They're there to protect you.

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And, I think one of the mistakes that I see a lot of people make is.

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They don't go to an attorney soon enough and they wait and then when

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there's an issue, then they go to an attorney and then by then the

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issue is become a bigger issue.

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Right.

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And then it's harder to fix that.

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It probably is going to end up costing them more money.

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So what advice do you have to, creatives that are starting out and they're,

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creating different brands and they're creating, you know, even things like

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a logo that they want to protect and content and all different, various

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types of things, even their brand name.

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Yes, is the cost of doing business.

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If you are going to be a creator, if you're going to start monetizing

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things, everyone needs to just budget these things early.

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And you don't have to register for everything.

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I think that's like one of the things that I really focus on with clients.

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I understand everyone has a budget.

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I don't care if you're a million dollar business, you know, it's, it's not

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always feasible to file for everything and try to protect everything.

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So I work with clients on figuring out what's the most

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important trademarks register.

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What's the most.

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Copyright to register and it looks the most important

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contract piece to get in place.

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Those three things are typically the most important.

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You may have patents and trade secrets also, but generally speaking, most

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businesses have those three things.

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And so, you know, I hear clients say, yeah, but to register, it's going to

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cost me tens of thousands of dollars.

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That's not true.

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I mean, maybe if you're using the wrong lawyer, but for these things,

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I like to talk numbers, just to give people an honest example, like my

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firm, we offer a flat fee it's 1250.

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That includes the government fee of three 50.

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Like that number.

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You're going to have people who are going to do more and you're

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definitely not people who do it less.

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I want entrepreneurs and businesses to understand that

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like that 1250 is going to be.

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So much farther down the road, then God forbid getting into a litigation

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where a law firm, isn't going to be able to refuse that you, unless they get a

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retainer of about $2,000 on average.

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Budget it as the cost of doing business and file for these things early.

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That can make a big difference.

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And I think, it's about budgeting, but it's also about

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doing your homework early on.

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And one of the things I like to tell content creators is, before

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you even go to an attorney, there are certain things that you should do.

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So I say, go to Google, look at social media accounts and see

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if someone's using that name.

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See if they have a Facebook page, a LinkedIn professional page, Instagram

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account tech talk account, all of those things, because if the name that you want

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to use, you're seeing that it's already being used on social media handles.

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That's already a red flag that you may or may not be able to use it.

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And I say may or may not be.

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That's when a lawyer comes in and they can be helpful.

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But then the second step is you want to look, go to bluehost.com.

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You want to check and see if the domain for your business name

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that you want to use is available.

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And if it's not available, is there a live website on it?

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Is it just that someone purchased it?

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Maybe they're purchasing it.

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Selling it.

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So you have to look at all of these things, right?

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And then they would go to the official site, which I'm going to have you

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talk about Francesca, where they go and do their initial search.

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You, you hit some of the major ones because rights in the

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United States are based on use.

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So we're definitely going to check the register.

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We're going to check to see who's registered.

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You go to USPS, pto.gov, but that step is not enough for two.

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One that search is very basic.

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It's only gonna, they don't have like a great, it's not a very user-friendly.

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Format anyway, but it will only pull up really identical marks

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or nearly identical marks.

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Like if there's a space, it's not going to pull up phonetic differences or close

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variants, that'll still be an obstacle to your registration and everything that

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dimple you just mentioned is great too.

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Because if even if someone doesn't have a registration, they could

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still have rights based on.

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So if someone's already using the name for a podcast or on an Instagram

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account, and it's overlapping in your space, that's a problem.

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So definitely do those things.

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They're easy tools.

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I do them because I have my own trademarks, right.

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Just because I help clients.

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I'm also a business owner and entrepreneur, so I have my own

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trademarks and that's the first thing I do is I check Google.

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I go to USP Tio just to make sure no one has the name before I actually.

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And then let's say that they've, had initial conversation with an attorney

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and the attorney says, okay, you can use this what's the next step.

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So I would say that the first step really is to do what you said

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quick and dirty do it yourself.

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And then you come to the lawyer, we will run.

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What's called a preliminary search.

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So it's going to be a search that is very high level.

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It's dead hits exact marks or close, very close similarities.

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And it's the same thing for the goods and services.

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And also they should start using that, to you.

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Because they're going to have to show proof of that when

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they follow her application.

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Right.

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Can you talk about that a little bit?

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Definitely.

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Okay.

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So the TM symbols, and not as like a great tool to use what it

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is it's called a notice symbol.

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So it's putting people on notice saying that, Hey, I'm using this as a

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although it's not registered because a TM doesn't mean it's registered,

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I'm claiming rights to this.

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So whether or not you have a pending application or you just haven't

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registered, this is telling the world, Hey, back off, this is my mark.

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The only downside to having common law rights.

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And this is really important.

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there is a huge difference between.

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Non-registered trademarks and registered trademarks.

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And this is why I'm here.

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This is why I'm all over the internet.

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Like this one.

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If you get this one takeaway, please unregistered rights are very limited.

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They are limited rights.

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They are limited to the geographic region where you operate.

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So, what does that even mean for online businesses and content

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creators that are online?

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Basically, the law was created a long time ago when it was feasible for you to

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have a business in California and another business in New York, and then not have

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any confusion, but that has changed we're in the internet age or in the digital age.

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You really should register your names because with the registration,

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it gives you a presumption of rights and all 50 states.

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That's huge.

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That is huge.

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And I think now that you know, a lot of brands, they're not just doing

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business in one state, they have clients all over the United States.

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They travel to conferences.

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They make connections with people.

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They start working on projects for different people and, even freelance

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artists, graphic designers, they are.

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Doing work for so many different people.

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Right.

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And it can be all over the U S but it could even be globally.

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Right.

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And I think that's one really important factor to be aware of that you shared.

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So thank you for sharing that.

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Let's talk a little bit about, what the process is like, do you have a

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process that you like to go through?

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With a client, let's talk about trademarks right now.

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And then maybe we can talk a little bit about copyrights as well.

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Like when it comes to trademarks, especially for let's say a business

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name, because I think that's the most common trademark that people

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are probably coming to you for.

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Right.

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Yeah, it'll it'll depend.

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It is it's.

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I would say it's the most traditional, but I also do a lot of like clearance

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and filings for podcasts, names, titles anything that you're really liked using

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as a, maybe as a slogan or new logo.

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So it really could be any of those things, but when you're dealing with

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smaller businesses that are just starting,

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it's usually the most important name is the corporate name.

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Correct?

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So I try to do it as streamlined as possible.

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I offer a free 15 minute call, which is really like a strategy call.

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That's how I would equate it to figuring out what's the most important trademark.

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What's your most important copyright?

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And do you need a contract?

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And then clients may say, well, I only have the budget for one of those.

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It's typically the trademark that's the most important.

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So we'll go ahead and actually file for that.

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That's really how, like the process starts.

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I need to get on the phone and help advise.

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Yeah, I think, yeah, you definitely have to gather more information and, see

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what it is that their intent is like, what did they want in terms of protection?

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How are they going to be using that particular name?

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Where are they going to be using it?

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Because again, there's also different classifications, on the application.

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And it's not just one classification.

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I think people.

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Miss that part too.

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They don't realize oh, well, which class do I need to be in?

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And how do I even go about determining that that's a whole other can of worms.

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Right.

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So how do you educate, your clients on that?

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That's the part where people think, oh, trademark filings are so easy.

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I'm just going to put in my mark and put in what I am doing, but there is an entire

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body of law and it's very technical.

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It's very specific as to what goods and services you're offering.

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Goods are a little bit easier.

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Sometimes you can just describe the product, but even then the

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government has specific requirements.

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For example, clothing you need, you can just file for clothing.

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You can't just file for clothing.

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You have to be extremely specific.

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They want to know what kind of clothing articles.

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So for me, someone who's experienced in the fashion industry, working

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on these types of applications, I know the tips and tricks.

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I know that they won't accept clothing, but they will accept

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clothing, comma, namely tops.

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And that's pretty broad.

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Like if you can get all your tops and all your bottoms, that's a

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little trick if you're taking notes.

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What's really technical is when you get into the services.

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I think I, this is where I see clients mess up all the time.

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Like they'll have content accounts and they'll be podcasters.

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And then they file for some reason for the advertising and marketing services.

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But the government literally sees advertising and marketing services

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as like, as if you were an ad agency.

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So, not only did you just waste $350, but you wasted now six to nine months

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because the government is so behind.

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So getting those specifications down are really important.

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And like, when I work with my online coaches, I have this amazing

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template that I base off of that covers all of my basis for all

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the programs that they're doing.

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And then we customize that to each person, but at least I've

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done it enough where I know the main services and where they fall.

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Like that's another thing.

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Dimple.

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Some trademark lawyers may have no idea what an online coach

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is or what these programs are.

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And if, if you get the wrong lawyer, you may not have someone that

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understands your business accurately.

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Describe these.

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Yeah, that is very true.

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And then it turns into a big mess that, they're going to have to fix.

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It's going to cost them more money, more time and money and time are valuable.

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Right.

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So, thank you for sharing that.

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Let's talk a little bit about copyrights too, because copyrights are so important.

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And I think they're not, super complicated, but I think people

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just fail to even utilize them because they don't know.

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That it's something available to protect their content.

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I dunno.

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I mean, you tell me why do you think people don't utilize them as much?

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I think it's a lack of knowledge.

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I really, I speak to online coaches and I'm on clubhouse.

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And I talk about these three pillars.

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The trademark protects the name, copyright protects the content are your programs,

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your courses, and the contract piece protects you and the relationship with

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your clients or who you're hiring.

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And people are like, wait, I can protect.

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My videos and my courses and my programs like, yes, you can do

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it without just having the name.

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The name is important, but you can literally protect the

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content itself of the copyright.

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And then on top of it, if you have the right contract language, you can protect

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yourself from copy cats who you're dealing with, which unfortunately happens

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a lot with coaches that their clients don't really know, or maybe they do it.

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Borderline intentionally and they actually start taking stuff.

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So with the copyright, you're protected with your content.

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And it also is like an extra level of protection against people you're doing

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business with when you have the contract.

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But I think it's that people don't know.

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And if anyone's interested in protecting your creative

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works reach out to me because.

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It's an important aspect and it's not as easy as people think.

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Like one huge myth that I keep seeing is people think that they can publish

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everything, meaning put it out to the public, let their customers have it,

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and then file one application for every.

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And most of the time they can't, if we can file everything before it's

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published, this is like a huge tip.

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That's permitted within the law, as long as you're working with

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a lawyer to help advise you.

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But that's like a strategy I use with clients, like give me everything before

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it's published and let's try under the law to package it in a way, if we can

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under one application, otherwise you're going to have to file for each video.

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If they were uploaded on different days and it gets really expensive.

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Yeah, like when you think about some of the common things that people

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are creating, they're creating membership sites and a membership

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site can have, 20, 30, 40, 50 videos.

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Right.

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And that's also like one of the things that I've seen most,

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some people buy a membership into courses, justice deal, and rip off other people's

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courses, which has become a big issue.

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And even though it benefits them from having that copyright protection, when

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that happens to them, what can they do?

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Because sometimes I feel like there's not a lot that can be.

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Yeah.

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So in the United States, the Supreme court has actually ruled on this.

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And it's really important if you want to enforce your rights, meaning you want to

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Sue, you want to get such Tory damages to, you need to have a copyright registration.

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This is really important.

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You can try to enforce without it.

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And I need to just say that because.

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there's people who are going to be late for your task and that's not right.

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But for the most part, yes, like the Supreme court has said

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to enforce to get into courts.

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You need to have a registration.

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So equivalent is, let's say you send a threatening letter saying

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you're infringing all of my.

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I want you to stop.

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If you don't have that cop, that copyright registration number, it's

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the equivalent of waving an empty gun.

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Like what are you going to do?

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Sue me?

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Ha so that's really like savvy people.

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If you get demand letters and there's no, there's no registration number.

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You can just say, until you show me your registration, then go.

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There's also like timelines that deal with it.

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So if you find out about the infringement and you file there's a clock that

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starts, it gets pretty technical.

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So the point being like, I don't want to get into the legal analysis.

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I try to give tips to people in the most practical sense,

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register your stuff early.

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And people say what?

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Francesca.

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I have all of these things and I have all of this content.

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Figure out what's your baby?

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Like what is the core assets?

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What holds your method, the stuff and the genius that you've created, that you

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would be devastated if someone stole, figure out what that is, and then file the

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application for that, whether it's your video or or a book or slides, PowerPoint

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slides, like let's figure it out.

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Talk to talk to an IP lawyer, talk to someone, does copyrights

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like me and figure out that true.

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And before someone even comes to you.

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Right.

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So that, because they are, they're going to be paying for their time.

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And you know, your time's valuable, like before they even come to you, what are

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some things they can do to be prepared for the meeting when they have that meeting

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with you, whether it's pertaining to trademarks or copyrights or volts, but

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just in general, like what are some things that they can work on so that when they

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get on that phone call with you, it is a most productive use of everyone's time.

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You know what I think for copyright, it doesn't matter.

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It doesn't matter the stage, like if you're in early great.

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Cause I can help tell you how to build it.

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And then if you're.

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Later, like about to launch that's okay too.

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I'll have everything to look at and figure out how to package it.

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I think the most important thing is just getting on the phone.

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So I do that free 15 minute strategy call.

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It doesn't really give me time to dig in deep.

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And so what I do dimple is I do, what's called an IP

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audit where I have businesses.

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They brain dump on me.

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They send me all their websites, their social media pages, maybe their access

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codes to their membership pages, whatever content or business that they have.

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I look at everything and I say, okay, here.

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And I give them like a document of this.

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Here's all the trademarks that I've seen that you have.

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Here's all your potential copyrights.

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Are you using the copyright symbols?

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I kind of go through that checklist to see if what they're doing and how.

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Attempting to protect their IP.

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Maybe they don't know it, or maybe they do.

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And then a contract checklist, do you have your client agreement?

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Do you have an agreement with your clients when they purchase your services?

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Are you hiring independent contractors and do you have those contracts?

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So that's just like a super high level strategy call and I call it

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the audit, but at the end of it, we get an IP roadmap where I say.

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We're going to do your trademark, which is this, this one's the most important.

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And we talk through it and figure that out.

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We're going to file for this copyright, which is the most important.

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And then in that flat fee, they get all the legal analysis.

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So I'm going to work with them on, on a non hourly basis.

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To figure out how to compile all the stuff into that one application.

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And then we do the contract stuff, but that's really how it works

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is you get on the phone with me or another copyright lawyer.

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I do the audit to brain dump and strategize, and then we

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figure out how to put everything together as bundled as possible.

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If we can to save you money.

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Wonderful.

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Wonderful.

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Okay.

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One last question.

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And then I'm going to see what final thoughts you

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have because of the pandemic.

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Have you noticed, like, there's been , a delay in terms of the

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applications getting processed?

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Like, is it taking a lot longer?

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How much longer is it taking?

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Yeah, there's definitely delay, but I had.

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Any direct correlation with COVID.

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If there is a correlation it's because more people are online, more

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people are listening and becoming empowered and either want side hustles

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or they're realizing now that IP.

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Is everything.

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That's also one of my trademarks, IPS, everything like I do these

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programs around it because we're moving into the digital age.

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I mean, dimple your brand name, your podcast, name,

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everything that you're doing.

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All of these recordings, this is your intellectual property.

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You own this whether or not you want to monetize them, license them.

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We can all create.

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An extreme amount of wealth really by using intellectual property.

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So this is not going away.

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I think people are becoming more and more aware of it, but the reason for

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the backlog, I think is part because more people are just registering.

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Also, Amazon has a program that my firm is a part of.

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So we're part of the IP accelerator program.

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And Amazon requires.

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Certain brands to have registrations to enforce on their platforms.

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That's another huge point, guys.

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Most of these platforms to enforce your rights, meaning to

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get other people, to stop using you need to have a registration.

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And then Amazon has this program called the IP accelerator where you can get on

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with an application, which is way early.

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If you use one of the firms and my firms, one of them, so huge backlog, don't

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waste your time trying to do it yourself, just work with a lawyer, get it done the

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right way and get legal advice because you're not going to find out for six to

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nine months on the trademark register.

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If there's something wrong.

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Yeah, that's important.

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And then if there is something wrong and you try to do it yourself, you're just out

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of luck because now you've lost that time.

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And you're going to have to start basically from scratch with an attorney,

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such as go to the attorney from the get, go and do it the right way.

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That's great advice and Francesca.

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If you have a Calendly link, you can send that to me and I will link it in

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the show notes, but tell us how people can get ahold of you, where they can

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find you, how they can connect with you.

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The best is to go on Instagram.

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I'm at the trademark attorney.

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I'm clicking the link in my bio.

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I do offer that free 15 minute IP strategy call and that takes you to my

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Calendly and I'm happy to chat and help.

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Wonderful.

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Thank you so much for being a guest today.

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And this is amazing and I will see you later.

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Thank you.

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bye.

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Bye.

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Thank you for listening to the mesmerizing marketing podcast.

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