Adam Torres and Anita Mar discuss trademarks.
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Show Notes:
Trademark Angel, an international trademark registration agency that helps Amazon and e-commerce sellers get trademarks to protect their products against counterfeiting and fraud. In this episode, Adam Torres and Anita Mar, Founder and CEO at Trademark Angel, explore trademarks and how business owners can protect their intellectual property.
About Anita Mar
At the age of 16, Anita Mar left her hometown, Moscow, and went to study economics in the UK. During that time Anita realized that economics was not what she wanted to pursue. Having completed my bachelor’s, She decided to move to Israel for a while. In October of 1999, She was studying Hebrew in Israel while working part-time as an au pair. Her work was very taxing and she knew she couldn’t keep up for much longer. This posed a problem, though, because of extremely bad Hebrew limited prospects of finding a good job. Then she saw an English ad in a Tel Aviv newspaper that read, “An American attorney is looking for a trademark paralegal.” At the time I didn’t know what a paralegal was but, since the ad was in English, She thought she would use that to her advantage. She applied and was called for an interview. She met an American lawyer whose paralegal had suddenly left Israel to flee back to the US. He hired Anita on the spot. Over the next three years, She learned a lot about US trademark prosecution, as his practice was mainly US trademark law. In 2004 Anit and her husband immigrated to Canada, where a month later she found a job in the trademark department of a multi-national firm, Gowlings (now called Gowling WLG). During this time, She decided to become a licensed paralegal and, in 2007, successfully finished Vancouver Community College. At the same time that she started college, she persuaded her boss to let her study to become a registered trademark agent.
About Trademark Ange
Trademark Angel is an International Trademark Registration Agency with offices in Canada and the UK. We offer trademark registration in multiple jurisdictions: Canada, USA, Mexico, Brazil, UK, EU, Germany, Australia, New Zealand, China, India, Japan, South Korea, UAE, Turkey on a regular basis. They can also register your trademarks in other jurisdictions. In fact, they have over 3 decades of experience in the trademark field!
Full Unedited Transcript
Hey, I’d like to welcome you to another episode of Mission Matters. My name is Adam Torres, and if you’d like to apply to be a guest on the show, just head on over to missionmatters. com and click on be our guest to apply. All right. So today’s guest is Anita Marr and she is founder and CEO over at Trademark Angel.
Anita, welcome to the show. Oh, hello, Adam. And hello, everyone. I’m happy to talk to you today. Yes. So Anita, I’m excited to get into today’s topic. This is a great topic, by the way. So exploring the world of e commerce trademarks and really protecting your business. I mean, a lot, a lot of entrepreneurs that listen to this show, a lot of business owners, and I feel like there’s a little bit of confusion.
Fusion many times over trademarks when to get them, how to get them copyrights, like how does that work? So , we’ll definitely get into that and more. And I guess just to get us kicked off here, Anita, how did you get into this business? Like, where did that start for you? Oh, for me, it started in 99, so a long time ago, really, I was very young.
And I lived in Israel at that time, and I was looking for a job. And I found an ad in the newspaper that an American attorney was looking for a trademark paralegal. And I had no idea what trademark meant and what paralegal meant, but I decided to apply anyway. And that’s how I ended up on trademarks.
And I I immigrated to Canada in 2004, and I pretty much stayed in trademark, in trademarks. I found a job as a trademark assistant , in a big law firm in Vancouver. And then I became a paralegal and in 2008, I became a registered trademark agent and I got the highest mark in Canada in the trademark agent qualifying exam.
Yeah. And then I worked in some other firms and in , 2017, I set up a trade mechanical. So we just turned seven years old. Wow. congratulations. That’s a big feat , to turn seven years old as a business. Like once you get past the year five mark, like, congratulations.
That’s a big deal. Mm-Hmm. . Yeah. Yeah. I feel like seven years is a pretty long time. That’s amazing. What do you like about doing this work? Like what interests you about it? Well, I like trademarks a lot because it’s not boring. It’s very stimulating because you learn a lot about new businesses, new trends like new products in the market.
And , it’s very fast paced. So I like that. So I also like that it’s very positive. So we help people to protect their brand. We help people to grow their business. So it’s a positive side of law , some, you know, legal topics can be quite depressing, like divorce law, like family law or very dry, like commercial law.
I used to do that a little bit, so that was extremely dry. But yeah, trademark law is It’s quite interesting. I actually like it a lot. So talk to me a little bit about like, cause people will listen to this right now and some have heard, you know, they need one, don’t need one, but what’s a good time to get one?
Like talk to me like I’m, I’m brand new, I’m starting a business and I’m coming to you and I’m saying I need it. Do I need a trademark or what? What does this even mean? Like, let’s start there. Let’s start very basic. Okay. Thank you. Yeah. So what does it mean? It’s a good question. And people get confused all the time.
They mix up patents, trademarks, copyrights. They come to us and they say, Oh, I want to copyright my name. I want to patent the brand. And it just, it’s, it can be really confusing and I don’t blame people. I mean, if you’re not an expert in this field, it can be quite confusing. And there are so many names.
Some of them are similar. For example, a trademark is just a legal name for a brand. So that’s the same thing. So a trademark is simply the name of your brand. It’s the name of your product, the name of your service. And in very, very simple English, it’s how your customers find you. That’s how they remember you.
They remember your brand. They remember your trademark name. They don’t care about your company name or domain name. They. Need to remember your brand name and that’s what a trademark is. So it can be different from your company name. It can be different from your domain name. But the name of your product or the name of the service that you provide.
And so , when should people be thinking, seriously considering like getting a trademark? When does that take place? Yeah, so it’s also a good question because sometimes it’s a bit too early. We have clients who come to us and they say, Oh, I’ve been told I need to get a trademark. I’ve been told by my coach and I asked them, okay, so tell me a little bit about your business.
And they tell me, yes, I want to sell on Amazon. But I don’t know what I’m going to sell yet. So I just want to protect the name because that’s what my coach told me to do. So if you don’t know what your business is or what you’re going to do, what you’re going to sell, if you sell on Amazon, if you don’t know what product you’re going to sell, you don’t have a trademark.
Yeah. Because a trademark doesn’t exist without a product attached to it. It can be many products, it can be a single product it can be like a variety of products and services. But if there is no product yet, but you know, okay, I came up with the trademark name. I don’t know, Great Fox, but there is no product attached to it.
You don’t have a trademark. You just have an idea for a future trademark. But without the product we cannot file. So if you don’t have a product, we cannot file. Okay. We also cannot file if you haven’t done a proper trademark search. So if you want to trademark a name, you have a product, but you haven’t done a trademark search.
We cannot file blindly because the trademark may be unregisterable. So you definitely need to do some research. You need to come up with a product, and then we can file a trademark. And what if somebody already has, like, they have the domain name, they have the company even started, maybe it’s incorporated or is that like the point or like, , where do they go from there?
Yeah, so if you have a domain name, a domain name. It’s simply an address for your website Locations. Mm-Hmm. . Mm-Hmm. . It had nothing to do with your trademark. It’s good when the domain name is the same. Obviously it helps like what company name is trademark? The website is trade macl.com. So it does help, but if it’s not the same, it’s not a big deal.
The same with the company name. It may be identical with the n or Corp or at the end, or it may be different. It’s actually relevant. fact that you have like a company register, the OLLC set up doesn’t by itself presume any trademark rights. It doesn’t really mean anything unless you use the company name as a trademark.
And by that, I mean that you put the company name on your product that you sell or when you offer your services. So if you don’t do that, you really don’t you don’t have a trademark, so there is no connection to the company then. And what happens if you do a trademark search and you notice that , it’s something similar is already taken, like how does that work?
Yeah. So that’s the first thing we do. We, we check the trademarks office database. And if we see that there is a similar trademark the first thing we check is to see if the products are similar. That’s why it’s so important to know what you’re going to sell. So if you’re going to sell, for example, a stationary products, let’s say like notepads and there is a similar trademark for toys or for clothing.
It may not be a problem because the products are completely different and there is no overlap. But if there is a similar trademark for pencils or pens or like crayons, then there may be an issue because the products are very similar. They’re also like stationary related products and there may be a confusion issue.
So in this case, we will advise our client to pick a different name or rebrand or differentiate somehow. So that’s the short answer to the question, but like we advise to. Pick another name if we find something similar and it also goes like if there is a similar company with a similar name, not necessarily like a file, but just a trademark just if you do a trademark search and you know, just, Oh, there is a company out there with a similar name.
It doesn’t matter if it’s registered or not, but if somebody already exists with a similar name, you probably want to pick a different name because you don’t want your clients to be confused in the future. Yeah, that, I feel like that makes a lot of sense for people , to think about it that way.
, and if they do, let’s say they do have a like they need that name or they want that name. I guess now you, you’d have to contact who owns it. You’d have to start thinking about it. And that gets into the legal side of things, right? Like, what is the person willing to concede?
Is it fair? For a different like category or things like that. Am I wrong on all that? Or is that, that there is another step just in case, but then you’re talking about like legal action and like trying to settle , or trying to get that from somebody, right? So if we find another trademark and it’s similar, so let’s say it’s a similar trademark for like stationery and our client wants to file that trademark.
So then the question is who started using the trademark first? If it was the other company, then we, we strongly advise not to file because then the other. Company may sue for like trademark infringement, most likely that our client’s trademark will not register because it will be refused by the trademarks office, and even if approved, most likely the other company will file a trademark opposition.
If it’s the other way around, if our client has first use, so let’s say our client started their business 10 years ago, they just neglected to trademark. Their products and now they are ready to file for like whatever reason, for example, they want to franchise and we find this other trademark that was let’s say just filed and let’s presume that , they are not even using the trademark yet.
So in this case we can still file and we can send a well, friendly letter , to this other company and tell them that, well, hey we have. Prior rights, and we filed a trademark and we ask you to withdraw your trademark application. Mm-Hmm. . And if you don’t, then we’ll file a trademark composition because we have first use.
So that’s usually how it works. And u usually it, it works and the other company will do just that. But to do that, you have to be pretty sure. that you have prior rights. Sometimes it’s not clear. Like for example, in Canada you don’t need to put the date of the first use anymore. So we, we don’t always know who has prior use.
So if you’ve been using the trademark for like two, three years, and what if the other company used it for, for like even longer period of time, then we have a problem, so we cannot tell them to withdraw their trademark. So it can be quite tricky. So in this case, we recommend to do some investigation. And you can hire a company to do that, or you can even do it yourself.
You know, undercover agent. So, and yeah, if you can’t ascertain like who has prior rights, then we, we don’t advise to file because you may spend all this money on a trademark and the end, you may not win because you were not the first one to use the trademark. But , usually you can determine, or you can you can see like when the other companies started selling their products but it, it can be quite difficult.
Yeah, , that makes a lot of sense. And I, I mean, in my experience, I’ve, I’ve had, I think , every different in just in my life in business, I think I’ve had every different scenario that you’ve mentioned, I think I’ve been through. So it’s, it’s interesting going through all of these that it’s like, ah, it’s been a while.
Especially it can be so disheartening when you put something out there and you’re like, wait a minute. Somebody, what? Well, it all comes to the money. Like how much money are you willing to invest? And that’s why we always recommend. And who owns it? Right. And who owns it? I remember one particular thing. I was trademarking.
They didn’t even. Yeah. Yeah. They had never even used it, but and they were supposedly planning on, but it just happened to be one of the biggest companies like in the world that owned it. And I’m like, who has like, yeah, , just as a matter of recourse, they just obviously like when you’re thinking really, really, really big companies what happens is they may.
Have a whole office that’s trademarking and things. And even for marketing campaigns or for all kinds of things, and they may have never used it, but they don’t care. They’re just gonna, they’re filing and it’s okay. And they don’t, there’s no real decision there made. It’s just basically we own it, we own it.
So I’ve seen them all and that’s the horror story of it all. Most of them though, that we’ve done is that I’ve done in my life is just, it’s gone through pretty, pretty easy. And like there’s, it’s been pretty like, like seamless, but it’s just that one that comes up where you’re like, Oh man, it’s one of those things.
Homework. And you, you really have to file as early as you can, because if you delay it, then you may end up in a situation just like we discussed, you own the trademark, but you can’t really register and you’re not sure what to do. And if you want to franchise, you really need to register your trademark.
So you may be like losing a lot of business because you’re not able to register your trademark. Yeah. Yeah. , and in terms of products, I know we talked a little bit about like products like online, things like that, but I’m guessing you work trademarks in anything, right? Like you’re, you’re, I mean, you’ve been doing it a long time.
So , you’re specialties wide, whatever, just anything that has to do with trademarks. Yeah. Yeah. Yeah, absolutely. Fair. Yeah, , that makes a lot of sense. And talk just a little bit about maybe how it works international and like protecting rights, like, internationally. Like, how does that work?
Yeah, so trademarks are territorial. So it means that you need to file them in every jurisdiction where you want to have protection. And with online businesses, it can be tricky because like,, what if you sell on amazon. com, but you can ship to other countries? Like where do you need to file them?
Yeah. And we suggest to start small. And file in your home country first. So let’s say if you’re a U S company file in the U S first, and then within six months, you can claim priority from your original filing date and file in other countries. And you can use those six months to see how the business is going.
Like, and to determine like where else you need to protect your trademark, like who your clients are, like, where do the sales come from? Where do you ship? I mean, those are all important questions and you may not know the answers until, you know, like three, four, five months. And then if you file within the six months period in other countries, you can claim priority from the original filing date.
So your real filing date, let’s say in Canada, will be the same as the original filing date in the U S but yeah, so start small and, you know, protect your trademark in your home country or in the country where you plan to sell. So if you’re not from the U S but you plan to sell just in the U S , that’s where you need to trademark.
Hmm. And then , you can file in additional countries later but we don’t recommend to file like in many countries all at once because it can be like really expensive. Yeah. That, that, it can add up, right? Yeah. No matter how you file I mean, it will not be cheap. I mean, if you file, you can file nationally, you can file using like Madrid protocol.
It will not be cheap at the end. So we recommend to file your home country first. And then claim priority and file in other countries within the six months window. And then if the business is going well, I mean, the trademark will not be huge expense. I mean, if it’s not going well, then you want me to file.
So it will be quite obvious. Amazing. Well, Anita, this has been a great conversation and I’m definitely more, more aware of trademarks, how they work the importance of them, of course, even though , I’ve had some of my own experiences and I’m sure some of the listeners have as well. And there’s also, I’m sure some listeners that Are going through that conversation right now.
And , they want to connect with you and your team directly. That being said, Anita, if somebody does want to connect what’s the best way for them to connect with you and your team? Well, find us on our website trademarkangel. com and just send us a message through contact form or through our, like, our website chat or call us at plus one 226 246 2979.
And we have a few receptionists and we usually, we’re like pretty responsive. Amazing. And , we’ll put all that information in the show notes so that our audience can just click on the links and head right on over. And speaking of the audience, if this is your first time with mission matters and you haven’t done it yet, hit that subscribe button.
We have many more mission based individuals coming up in the line and we don’t want you to miss a thing. And again, well, I just hit that subscribe button. This is a daily show each and every day. We’re putting out new content. We’re bringing you new stories from entrepreneurs, executives, and experts.
And Anita, again, thank you so much for coming on the show. Yeah, thank you, Adam. It’s been nice talking to you.