Betty Tufariello: Trademark Law with Intellectulaw

Are you in need of intellectual property protection?

Betty Tufariello is the CEO of Intellectulaw, The Law Offices of P.B. Tufariello.

Intellectulaw is a law firm specializing in patent and copyright attorneys, located in Mount Sinai, NY. They serve the people of Mount Sinai and the surrounding area with top-notch services to help ensure your intellectual property stays safe.

The team at Intellectulaw is always looking to accept new clients who need help with intellectual property law.

Their years of experience ensure a great experience with their firm.

Betty Tufariello has taught trademark law at the Maurice A. Deane School of Law at Hofstra University as well as been a guest speaker at numerous seminars, educating others about intellectual property rights.

Learn more about how Intellectulaw keeps your intellectual property safe by listening to this episode of The Thoughtful Entrepreneur above and don’t forget to subscribe on  Apple Podcasts – Stitcher – Spotify –Google Play –Castbox – TuneIn – RSS.

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Welcome to the thoughtful entrepreneur Show. I'm Josh Elledge, founder and CEO of up my We turn entrepreneurs into media celebrities, grow their authority, and help them build partnerships with top influencers. We believe that every person has a unique message that can positively impact the world. stick around to the end of the show, where I'll reveal how you can be our next guest on one of the fastest growing daily inspiration podcasts on the planet in 15 to 20 minutes. Let's go. And with us right now, we've got Betty Tufariello. Betty, thank you so much for joining me. You are you started. You've got intellectulaw offices in New York, you do a lot of work with Patent and Trademark Law. You're my go to person. Anytime I have questions about copyrights, patents, trademarks, you know, I really you You know your stuff and, and so we're going to talk about trademark smarts and and I really hope someone's listening to us right now. You take some decided action based on what I know Betty's going to talk about. Because if you aren't as a business owner, protecting your, your stuff like your brand, your your, your your things that your patents and that sort of thing. You can really get yourself in trouble. And there's some horror stories out there, aren't there, buddy?

Yes, there are quite a few.

Well, so explain just kind of where you kind of your approach to patent and trademark law. And I also again, I think it's why I wanted to bring you on is that it's kind of confusing in I'll just speak from a business owner perspective. Like I can do a Google search right now. And I'll see these offers for like $99 trademark searches, and that you and I have talked about that. And there's a huge difference between you know, doing a cursory search and actually doing something that legally is going to protect you. And that's where I'm going to hand it off to you my friend.

Okay, so just as as by way of backgrounds, patents, trademarks, copyrights, privacy, publicity, rights, and trade secrets all fall under the umbrella of intellectual property in the United States. Patents completely protect something that's unrelated to trademarks. Patents are basically inventions. inventions that are directed to machines, mechanical devices, compositions of matter can processes. Trademarks, on the other hand, are are so different from patents. I happen to love trademarks, I love trademarks, compared to patents for many reasons, both in the manner that They're litigated in court. It's much easier, in my opinion, to enforce the trademark or defend the trademark in court. And they're very, very different in terms of what they protect trademarks. You know, just this is a question, Josh, what do you think a trademark is?

Well, church so trademark, you know, I don't know. So copyright obviously would be more creative content, intellectual property. A patent would be like a thing like an invention that you've created. And trademark is, I guess that's kind of in between, I probably should know a little bit better.

I think intuitively everybody knows what a trademark is. A trademark is a source identifier. A trademark could be anything that can function as an identifier of the company that provides a service or the goods. When the consumer sees the trademark on goods, or the trademark on services. The consumer immediately knows the company From which those goods or services come from. So if you see, for example, a Swish, you automatically know it's Nike, right? You see that Swish, you see it on shoes, you see it on T shirts, you see it on jackets, you see it on, on sweatpants, you have come to expect certain level of performance and quality on the part of the Nike products. And the next time you go out shopping looking for some athletic wear, the minute you see the Swish, you immediately know that that product is going to purchase that will perform in exactly the way you expect it to perform. And therefore you make a decision to purchase it. So a trademark is really a short, a shorthand version of helping consumers identify the source of the goods or services in connection with which they're being used. If you are a new company and you are getting ready to sell goods, to sell goods, To sell a service provide a service to the consumer, you need to start thinking how you're going to differentiate yourself from your competitor. editors, you need to do that you need to be able to immediately especially in today's age, you need to immediately be able to help the consumer identify your company as a source of the goods and services, and then make a commercial decision, make a decision to purchase your goods or services. So to that end, to differentiating yourself, and helping consumers identify you as the source of the goods and making a decision to purchase your goods and services. You need to have a good trademark of good source identifier. And it could be anything could be a color, it could be a jingle, it could be a shape. It could be a logo, it could be a name, it could be anything. Apple for computers, Tommy Hilfiger for clothes, the color brown for ups, perfume, you know Estee Lauder, You can smell the perfume in in a department store and you know, that's coming from us they launder.

Wow, damn, well, you could I wouldn't know the difference.

So, so that's a trademark. Now. Yeah. A trademark is really interesting because the trademark trademarks, I'm like patent and copyrights, they belong both to the state and the federal government. So in the case of patents and copyrights, they're regulated and controlled strictly by the federal government. Trademarks, on the other hand, because they are common law in nature. In other words, they're short their power, their their ability to be protected, lies both in the states and the federal government. So when you pick a trademark, the very first thing that you're charged is searching it, you really need to search it. And and what you really need to start thinking about when you're searching a trademark is not just whether it looks the same sounds the same or conveys the same commercial impression, but Rather, you need to put yourself in the shoes of the consumer who will see your product or your service with your trademark in commerce on the shelf on a website, who will see it and needs and needs to know exactly where that product or service is coming from. Your objective in picking a trademark is to make sure that the trademark you pick is not confusingly similar. Any other trademark out there? Yeah, that's a huge word. In the United States Patent and Trademark Office, there is a 13 factor test that the trademark office examiners will use to determine whether the trademark you're trying to register is confusingly similar to somebody else's. In each of the circuits. You know, the United States federal court system is divided into circuits. New York is in the Second Circuit California is in the ninth circuit. So each circuit there's there's 11 circuits, mind you, each circuit has its own set of factors. So in the Second Circuit where I'm located, the total number of factors are eight. And they were first articulated by a case in 1962 63, called the Polaroid Polaroid versus Polaroid case. When you do a trademark search, you keep in mind, all of the factors, not just not just one or two, most people, they pick the trademark, they go to the internet, either they do the preliminary trademark search at the United States Patent and Trademark Office, by themselves and you can do that. That's a great place to start, before you actually retain somebody who's going to do a full blown analysis. You know, they go there and they don't find it in the USP to say, Okay, now I can use it. That's incorrect, because as I said to you right at the beginning when I started the conversation, trademarks live both in the federal domain and in the state domain. Do you realize Josh that there are 50 states and therefore 50 state trademark databases that you really ought to look at before you decide to apply to us to acquire and use a trademark in connection with your business. So right off the bat, we're looking at United States Patent and Trademark Office, and 50 more databases, which, incidentally, are not accessible by the public. They're not available to search the way you are able to search the federal database.

Every everybody assumes that if it's not registered on the USP to the nobody's using it, that's incorrect. They may be using it in the individual states, because there are many, many small businesses that really don't on the borders of the states within which they're located. I just had exactly this question this inquiry the other day, someone pulled me up, they're opening up a restaurant in New York City. And they wanted to know if they should file and you know, they should file for the US PTO. And like the first question that I asked was, well, let me understand your goals. Let me understand your objectives. Who is your target consumer? Are you going to be staying local? Or are you going to be expanding within the state of New York? What cities? Are you thinking of going? at any time? Do you think you're going to be going beyond the state of New York, New Jersey, Connecticut, Florida, there are many, many restaurant chains who because they have developed a clientele in New York, and because of the winter months, there are many winter birds that go down Florida, they actually also open up in Florida is the mid term to long term goals are to in fact go us wide. Well, now it makes sense that you're going to search the USP to as well as file for the United States Patent and Trademark Office so that we you are able to enforce your trademark nationwide. I kind of depressed a little bit about Want to go back to the searching? When you do the internet, you raised a very good point there. There is a whole slew of possibilities for searching. You'll see from you know, do it for free, which you can do it yourself by simply going to the USB TL to $99 to you know $499 to 15 runner up in my office, we do it at 1500 bucks, we guarantee a trademark by the time we complete the search, and by the time the client is done, and we are done with the client. In terms of the trademark search, the client will have a trademark What that means is when a client comes to us and says I want to do a trademark search, typically what we do is we asked for five trademark organized the new order of priority which one they like best and which one they like least I asked and I actually sit with the client and I walk him through the United States Patent and Trademark Office websites. They teach them how to do their own trademarks searches on the PTL. Because if you clear it with the PTL it makes sense now to invest the money to do a full blown trademark search. Does that make sense? Yeah. Yeah, because knocks it out. If the PTO knocks it out, there's no point in paying for it, right? Because it's right there staring at you. And then once we do that, once we clear through the PDL, now we go into every single state in the union. We also do Canada, and Europe. We do actually international states. We use a very well known software program called core search, which I highly recommend, if you can afford it. In our case, it costs us over $2,000 a month just to have that service. By Josh, it allows us to search over 175 databases worldwide. Now some people out there will say why the heck would you care what they're doing in China? Well or or Italy Let me tell you a little story. I had a client who is in the food industry a big part of my, my business has to do with food and food and wine. And they came back to me and they said, Oh, I want to use the word so but I know s as in SAM o B as in boy, RANO, which means sovereign. So we're a multilingual office we speak Greek, Italian, French, Romanian, Hungarian. We have friends and agents who are in China who help us also to do Asian searches. The first thing we do is we look at all the variations of the marks in the English language and as well as in the in other languages. So Savannah, which means sovereign, in Italian, it's so valuable. And you know, when it comes to food, we are big, big importers of product. Yeah, I took one look at it. And I'm like, you know, I don't feel good about this. You know, after 25 years of doing it, you kind of have an instinct or what works and what doesn't? So my instructions were nation worldwide. Sure enough my searcher Angelo he actually found an Italian registered Italian now mind you Italian registration, not a US registration but when in Italy that was for the word Soviet I know SOVERANO the only difference between the two is a be replaced with the letters v as in Victor E. Right. So and it was used for a very unique cheese very similar to the ground upon cheese, which is in the parmesan family.

So, he comes back and he says, we found this Italian registration. I looked into this and how much you want to bet this cheese is in the United States. They're not registered. That's okay. rights to trademarks in the US come from use rights to trademarks come from us. That's a very powerful thing to remember. Yeah. Which means that If there is a company in Italy, or a company in England or a company, any other place in the United States is outside the United States and exports products into the United States or services into the head of you. They can stop you from getting your trademark. They can stop you from using the trademark because they have been using the trademark ahead of you in the United States. Therefore, they have priority of use. Therefore they Trump you, right? I said, Go ahead, check it check the newspapers and sure enough, we found an article in The Washington Post that they had done a review on this particular Savannah, no cheese. And then I said, Oh, if they've done reviews, they must be at the high end delis all over the US and sure enough, we found them we found the cheese in a number of places, including the Bronx, by the way, and also having a which happens to be an Italian enclave, a Little Italy if you would in the Bronx. So, fast forward, my client did not register and decided not to use the mark they had originally come to me, right, but we worked with him to find a different one. Same thing with other marks, especially, you know, we work very closely because the time was done three or four, remember, all of this is 1500 bucks, right? So the first one, the second one, the third one, and if all the trademarks that the client rejects, you know, the client gives me I reject for because I believe that they are trouble. Then what I do is I work with the client to develop trademarks with them because by that point, I know their business. I know their goals. I know their objectives. I know what products they're going to be selling, I know who the consumer is going to be. And sure enough, we are able to come up with trademarks that they did not even imagine possible, and we clear them and we fly through the trademark office because we've been doing the search as we go along. tremendous, tremendous value 1500 dollars, we also offer a letter of opinion, we give a letter of opinion for that fee, because the letter of opinion is worth its weight in gold. If God forbid something happens, and you do receive a cease and desist, because you know, people will sue for any reason, there's no guarantee. Just because you did a good trademark search, you're not going to get sued. But if you have that letter of opinion, and you bring it into court and you provide it to your insurance company, there is a good chance that your insurance company will provide you for defense coverage for the lawsuit, and the court will not issue a decision for damages you will have to pay the most might happen is you might have to change your name slightly. Yeah, so

if any, I have friends that have had to make alterations to their names, and it can be very expensive. You lose a lot of capital, your capital, that brand capital that you've put out there, it can be a real nightmare. And Betty, we just have a couple more minutes left was so what happens when someone goes to trademark trademark Well,

you know, in in the interest of clarity and transparency I have to say, you know, the pitch just went up. But right now, you if you need to reach me for additional information with regard to a trademark church or filing for trademark or, or any other of the hosts of intellectual property issues that we can actually help you with, you can find my contact information at that point, my profile, a little bit of background about who I am and how many different podcasts I've done and how many written you know, the usual stuff there, you're well

loved on the internet podcasters love you.

And, and the, you know, contact information and we're actually working on putting together a small publication that will be available, which is going to basically talk about some of the issues you know, for If you decided that you want to do your own trademark application 10 things to keep in mind when when you are filing a trademark application, the United States Patent and Trademark Office has a lot of materials. But sometimes because they are just such a big website, it's difficult finding all the information. So we kind of alert based on our own experience of filing applications day in day out, we kind of alert, you know, what are some of the issues. For example, if you haven't finalized your logo, and you're still messing around with it, do not file it until you're happy that it's final. Because if you if you file your logo and it's not final, you will lose the application. Yeah. And that modifies the drawing of the of the logo. After you file. You need to be sure

that he when someone contacts you through trademark smarts, com I mean, can they can they chat with you or someone on your team for a few minutes and figure out should I do this Well, go ahead.

Yes, absolutely. Typically, I like phone calls. I know a lot of a lot of folks are kind of moving away from that. If I get a text or an email where I'm asked about something, typically I would like to get a telephone number so I can reach out by, you know, and speak directly to to that individual. And the reason for this is remember I said to you, there are eight factor tests in the Second Circuit 13 factor tests in the United States Patent and Trademark Office, I need additional information. For example, the factors include the strength of of the mark that potentially Am I going up against the goods in connection with which they're going to be used, the ingredients in the goods, the consumer, the pricing of the goods? Is this going to be a product that's going to be directed to a sophisticated consumer is the logo completed? There are so many factors that I need to gather information that without that information, I cannot possibly issue a good letter of opinion or help the client, find a really, really good trademark. So, follow up with a phone call, that phone call is free. It lasts anywhere from 15 minutes to 30 minutes depending on what needs to be done. And on the basis of that we make a decision whether this is something worthwhile to meet on. I love meeting people, I I have become the resident historian of many of my clients that go all the way back to 1994. Because I get to know their businesses and their families and their, you know, their issues. I'm there to facilitate raising, you know, developing assets and helping clients leverage them for the benefit of them, their selves, their families, their businesses, their employees. How having a good intellectual property portfolio is so so valuable, we can sit here and talk about this for days on it.

I bet we could we're out of time Tufariello. Thank you so much for joining us again, trademark smarts. com. Betty, I'm just telling you person, a person friend to find if you're listening to this podcast, that he has good people, that he has been very, very helpful. Thank you so much for all your time. And again, just go to trademark Betty, thank you for joining us.

Thank you for having me. And I look forward to working with you guys again soon.

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