In this episode, Kevin Kaufman, a.k.a. The Trademark Guy, shares what can be trademarked and what cannot be trademark, when you can use a trademark you’ve applied for, how to find out if the one you want is available, why you would be turned down for a trademark, the different classes of trademark and what you need to know to make sure you get the right one, where to get them, the cost involved, when copyrighting is more appropriate and more! This is information, every creator needs to know! Don’t miss it!
The Trademark Office-searches
The Copyright Office
WIPO.org for International Registrations
My Facebook Group
3 Key Points
You can trademark a title for a series but not for a single book.
There are classes of trademarks, so you have to look for the right class and make sure you cover everything that you want it for as they may fall into more than one category (like if you have a book, and t-shirts and mugs for example).
If you are selling in multiple countries you will need a trademark that covers multiple countries, and the price depends on which ones you are selling in.
[00:51] Ellen: Hi everybody and welcome to Episode 69. Today my guest is Kevin Kauffman. Kevin is a paralegal. He received his paralegal studies certificate from the UCLA extension, paralegal training program and ABA-approved program as senior trademark paralegal. At Warner Brother’s Entertainment for six years, he managed a portfolio of more than 3,500 marks for Warner Brothers, Hanna-Barbera, New Line, Turner Entertainment and DC Comics, responsible for domestic and foreign prosecution in forty-one countries under the supervision of staff attorneys.
And Kevin is also under the supervision of an attorney at Insource Partners now, has managed the 1100 trademark portfolios of sun chemical corporation, and collectively he’s prepared hundreds of applications, statements of use extensions of time, renewals and conducted numerous word design and logo searches. And I have known Kevin for I hate to even tell you how long, I think like forty years or something insane because Kevin is a songwriter and we actually wrote some of my earliest songs together. So welcome to the call.
[02:12] Kevin: Thank you. Nice to be here with you, Ellen.
[02:15] Ellen: Well, it’s just so perfect that you do trademarks because people, what I do now, want to know about trademarks as authors and product creators. But before we get into that, can you tell people just a little more about your journey? Like how did you end up being in this? What happened?
[02:33] Kevin: Well, what happened was I was on worker’s comp from another job and under the vocation rehabilitation program, a lawyer friend of mine suggested that I take the paralegal collects because I’ll always have work. So, we have to finish at UCLA, I temped for about six years, believe it or not. And then, I got a call, there was a temp job open at Warner Brothers, and that turned into a full-time job. I started as the docketing supervisor, and then promoted to a senior paralegal.
And in 2005, with the first round of a company layoffs. This was before the big one in 2007 or 2008, so I kind of had a head start. For the next two years. I actually spent going back and forth to Boston, producing a musical that I co-wrote. Anyway, in 2008, I started working with an attorney who was the trademark counsel for Sun Chemical Corporation, the largest printing manufacturer in the world.
[03:43] And I became a paralegal and started the business in South. Pasadena where eleven, twelve years later, we manage about 1,100 trademarks. Also, about that time, I started my own business, The Trademark Guy and I work with an attorney by the name of Tom L. Difloure and because my business is paralegal driven and not lawyer or law-firm driven, my fees are easily a fraction of what your attorneys charge and the last ten, eleven years or so, my business to trademark, I have filed over 500 applications and most of them are registered and we’re dealing with probably 300- 400 clients in all different fields under the forty-five different trademark classes.
Ellen: That’s awesome.
Kevin: So, that’s my background in a nutshell.
[04:40] Ellen: Okay. So, why should people do trademark?
[04:47] Kevin: Well, here’s the thing, you don’t necessarily need a trademark to protect you, just like you don’t necessarily need to copyright a registration for protection. Okay?
Kevin: There’s, what’s known as the poor man’s copyright, sending a letter to yourself or registering a script with the WGAW.
Ellen: We used to do that a lot. Didn’t we? In the early days.
[05:10] Kevin: Okay?
[05:45] Ellen: Well, I thought you can register a manuscript, but not a title.
[05:48] Kevin: That’s true. You can’t copyright a title…
Ellen: Copyright it.
Kevin: When you copyright a story, basically, you’re copywriting the character’s plotline, things like that, not the titles. Obviously, we know there’ve been song titles, like Cry Me A River, Arthur Hamilton’s song, and Justin Timberlake did a Cry Me A River.
[06:12] Ellen: Yeah. Do you ever watch Songland?
Kevin: No, not really.
Ellen: Okay. Well, they actually had two songs just on that show, Somebody to Love, Somebody to Love. There’s one with, the group that the guys in who’s a producer, New Republic, and then there’s one with Leona Lewis. And then, there’s a really famous one by Queen. So, they keep using the same title.
[06:37] Kevin: Yeah. So, titles aren’t protected. Okay? So, with trademarks, you’re protecting a name. Okay.? And in order to get trademark protection, you have to be using that name, which is also the Mark in commerce for goods and services. Okay?
[06:57] Ellen: So, this is more for branding your business. This is more working on your brand.
[07:02] Kevin: This is what branding is all about. You could file it. You file your trademark as a word mark, or you can do it with design elements, like stylizing the word, or you can even do it with a logo, with all different colors, put it in a circle with 3d graphics. It all depends how you want the public to perceive your brand. And that’s one of the main reasons to get trademark protection.
[07:28] Ellen: And then, what about with the books? Cause I know there’s something you can do. You can trademark the title if it’s a series?
[07:38] Kevin: You can trademark a book if the title is a series like Harry Potter.
Kevin: Okay. If you’re like a medical person and you have something like a title of a book, volume one, subtitled, then you can copyright a trademark that title, because it’s got to be a series of books, but one book will not get your trademark protection. And I tell everybody you’re better off just copywriting it.
[08:08] Ellen: Okay. So, don’t trademark, just copyright. Now copyright’s a lot less expensive than trademarking, right?
[08:16] Kevin: Yes. Trademark ah… it’s $65 for one application (for copyright). However, you could do a multi-copyright where they allow you, I believe under one…
[08:31] Ellen: Wow, it’s $65 for one copy right now?
Ellen: Oh my God. It’s doubled practically, yeah.
[08:37] Kevin: And you can do it on the one application number, but you can do about the four titles at the same time title.
[08:47] Ellen: What happens if you do four titles at the same time. Is there a downside to doing that?
[08:54] Kevin: No. They all share one registration number. Not a problem.
[08:58] Ellen: Okay. Because I remember when we were doing songs and I used to say, well, then if one got cut, you had to pull it out. Is that different?
[09:06] Kevin: I don’t recall that and back then it was $35.
[09:09] Ellen: I know, I know, oh God. It reminds me of a story with my dad. it was like, when we would go-he loved to look at real estate. We used to go do that like every weekend. And it was always like the prices or going to the grocery store. “I remember when this was a nickel” and you look at him like, “What???” But now it’s like now it’s our turn and we’re looking back going, “Oh my God. It’s practically doubled.” Crazy. Crazy. Crazy.
Ellen: Yeah. Yeah. Okay. So, what about logos? And what about searches? I mean, before somebody does a trademark, what do you suggest they do?
[09:45] Kevin: Well, the first thing I always do is search the marks for availability now, because there is so many different trademark classes. I usually try to get a general idea. What is it you want to sell? So, just give me a title, like a Klepto, see if it’s available. What will you be using it on? Are you using it on clothing? Or, are you’re using it on cosmetics? So, at least I can narrow it down. Okay? So, I will do an availability search, and I also have to do all different permutations and variations of the name because, as we found out, some people will trademark a name with a different spelling.
Like most recently, somebody wanted the name Blaze or B L Y Z E. And it was refused because of Blaze B L A Z E. They look different…
Ellen: But they sound the same.
Kevin: They sound the same.
Ellen: Yeah, yeah.
Kevin: And if that happens, you’ll get an office action from the trademark office, citing “likelihood of confusion”. And that means you can’t have a Mark that confuses the public. Okay? So, a lot of times somebody sees a name that’s out there already. So, come up with a similar name that’s slightly different. The best example I usually come up with is the beds. When you think of mattresses, what name comes to mind? Seely…
Kevin Stearns and Foster. No coincidence. They all begin with an “S”
[11:25] Ellen: Yeah, Serta, I was going to say.
Kevin: Because if somebody goes to the mattress store and says, “Yeah, you have to the.. I’m looking for a mattress. I can’t remember the name of it, but begins with “S”.
Ellen: Oh yeah.
Kevin: So, you want to try to avoid things like that if you can. But sometimes it’s just so different that it’s not going to be a problem. Once it’s searched, and I can tell the person or the mark’s available, are you ready to file? And then, they’ll get the rest of the filing information.
Ellen: And how long does that take?
Kevin: Well, I get that question asked a lot, I always answer-there’s two answers to that. I could file an application within one day of a person giving me the information.
Kevin: How long does it take? Well, in terms of the process itself, it’s three months minimum from the day of filing before you’re even assigned to a trademark examiner. After that, it usually goes a little faster. So basically, there’s other steps involved in terms of submitting a “specimen of use” showing that director product is in commerce, but for the most part, you can get registered within six months from the day of filing.
[12:40] Ellen: So, do you start using it right away though, even though you don’t have that?
[12:44] Kevin: Yes. You can start using your trademark years before you even filed for a trademark. In fact, one of my clients, you may have heard of, is Larrabee studios, which was originally owned by Gerry Goffin and Carol King.
Kevin: And if you look at their website, we can see all the clients that they’ve recorded, They’ve been in business in ‘61, but I just filed their trademark two years ago.
Kevin: So, you can literally be using it in commerce without trademark protection? I guess they decided they wanted to have that protection.
Ellen: Uh-huh. It was time.
Kevin: If you do file it, an application before you’re actually in use, it’s called “intent to use”, which means you get a filing date and a serial number, just like anybody else. But then you have to wait until you get the notice of allowance before you can actually see that.
[13:38] Ellen: Oh, okay. That’s important. That’s important. Yeah. Yeah. Okay. Well, another question I have, like you were saying, there were different classes. I know, like you can go to the trademark site and you can look it up yourself, but I only saw like searches. It didn’t say like different categories or anything.
Kevin: Yeah. How did you deal with that?
[14:00] Kevin: Okay. When you go to the website, uspto.gov, if you do under on the right-hand column, I forgot what it’s called. Let me see, I’ll tell you in a second for my cell phone and how to do this USPTA.
Ellen: Yeah. It just seemed like it was just a general thing. Like it wasn’t broken down into a whole bunch of other ones.
[14:29] Kevin: Okay. On the right-hand column, you’re going to see, “Find it fast.” And then, you click on under “trademarks”. And you go to the ID Manual.
Kevin: And then the ID manual, you can enter in a particular item.
Ellen: Oh, okay.
Kevin: Handbags. And it’ll tell you “class eighteen,” okay? “medical services, class forty-four.” So, that’s how you can do it yourself. When people hire me, they don’t usually know one class from the other.
Ellen Right, right.
Kevin: I say, “Just give me an idea of what you want to sell.” Sometimes, they’ll give me twelve different items. They’ll say, “Well, I’m going to sell shoes; I’m selling cosmetics, key chains. And I say, first thing I said, “Well, you know, you’re covering different trademark classes.”
[15:21] Ellen: Right, well, that was my next question. Like, if you’ve got more than one, like let’s say, I have a marketing firm and let’s say, for instance, I have a logo that I want to put on mugs and t-shirts and things like that, but it’s also used on books and programs and that kind of stuff. So, how does that work?
[15:38] Kevin: Okay. When you’re selling multiple goods on a website via the Internet, e-commerce,
Kevin: You file what’s called “Class thirty-five Online Retail Store Services.” This is how Amazon is protected.
Ellen: Oh, okay.
Kevin: So then, you can include all your goods under one name. That’s how you do it.
[16:03] Ellen: Okay, good. So, I’m trying to think, is there anything else that I should ask you that book authors and e-commerce people need to know?
[16:10] Kevin: Well, my fees so that people don’t get scared away with, they think you’ve got to hire a trademark attorney, and this could be expensive, and we charge $149 to search and file the application in one class. If there are logos or design marks, that’s a hundred dollars and then the government fees.
Now the government fees either going to be $240 or $290. And that depends on the listing of your goods and services. A perfect example is if somebody says, “All right, I’m selling t-shirts and caps.” Okay? Baseball caps.
Kevin: Straight ahead, two items, uh $240. Now, if they decide, they want to say children’s t-shirts and caps, just by getting the word children’s, they’ve customized their application, and you have to pay fifty dollars more.
Ellen: Oh my God.
Kevin: And that’s it.
[17:06] Ellen: Oh, such a racket, such a racket.
[17:09] Kevin: Those are fees. As far as copyrights…well, first of all, the trademark, navigating the trademark office’s website is a lot more difficult than the copyright one.
Ellen: Yeah, yeah.
Kevin: Most people can do copyrights themselves. We charge $95 to file the copyright registration.
[17:30] Ellen: So, what happens if you file it and yourself and you make a mistake, what happens?
Kevin: Then you’re screwed.
Ellen: Then, you have to pay all over again? Or what?
[17:37] Kevin: A lot of people then come to me after they filed their application saying, “I got an office action. What should I do?” And I tell them all the mistakes they made, and then, I charged them and I’ll fix them all.
[17:51] Ellen: Okay, good. Well, that’s good to know that they can get fixed.
[17:55] Kevin: They do it themselves and come to me afterwards. I don’t care either way.
Ellen: Well, it’s like anything. I say the same thing. When people come to me to write a book, if they’ve already written the book and it’s a mess, then we got to fix it.
Ellen: You know? And sometimes, trying to save money,\ ends up costing you a lot more.
[18:11] Kevin: One of the things you got to be careful about when you’re trademarking yourself, if you put your goods in the wrong class, then you’re going to have to refile a new application in the proper class. So, when you do the search, and you’d go to the website to look up items, make sure you’re in the proper class. Otherwise, it’ll cost you more.
[18:35] Ellen: Yeah. So, you make a mistake. Then, you have to pay the fees all over again.
[18:39] Kevin: In some cases. A lot of times, like you put a P.O. box down; they don’t accept P.O. boxes anymore. So, you can just go into the record and change that yourself, or you could hire me to do it, either way.
[18:56] Ellen: So, what do you need to give them, like, if it’s a logo, you just submit a picture of the logo?
Kevin: Well, with the logo, I have…
Ellen: How does it work?
[19:03] Kevin: . Well, I have to actually write out what the logo looks like. First, I have to know are they claiming color or black and white. So, I have to write down every color that’s in it and believe me, I’ve had logos that had twelve different colors in it. And then, I have to actually describe how the logo looks, because this will be on the registration certificate. So, I can say…
[19:31] Ellen: But don’t you want a picture though too, or no? Don’t you have to have a picture of it too?
[19:37] Kevin: Yeah. It’s, what’s called a drawing.
Kevin: You have to submit it, a drawing that matches your specimen. So, if I write two concentric circles in blue with a red dot in the center, and then for some reason the specimen only has one circle with a red dot, your specimen will be refused because it doesn’t match the drawing.
[19:58] Ellen: So be careful guys. Yeah. Be careful. It’s got to be exact.
Ellen: Yeah. Okay. I’ve got another question for you.
Ellen: What about people who are not in the United States? How do they deal with copyrights and trademarks?
[20:13] Kevin: Okay. Well, I’m not sure about copyrights but in trademarks, if you live in let’s say the U.K., you could file an application in your own country, through the U.K. intellectual property organization. Now, in some cases, if you’re living abroad or you’re a foreigner, you can file for a U.S. trademark if you go to do business here. You do have to file with the U.S. attorney, which is why I’m the next best thing, because I do work with an attorney, and you’ll pay a lot less. In fact, In fact, I’m working with a trademark attorney in the U.K. and Australia who throw me a lot of business.
Now also, there’s what’s called “international registrations”. This is if you happen to be selling a product that’s going to be sold in multiple countries. Okay? So, rather than file in twelve, fifteen, how many countries, you can file under one application, through the World Intellectual Property Organization, or WIPO, you file one application, and you covered the various countries, and then you’re registered in so many places.
[21:21] Ellen: Oh, that’s good to know. So, how do people reach them? How do you reach them? Or, did they go through you?
[21:28] Kevin: Well, they can get more firstname.lastname@example.org., or they can contact me…
Ellen: Say that again. W Y?
Kevin: W I, World Intellectual Property Organization.
[21:40] Ellen: Okay. W I P O.com?
[21:43] Kevin: Yes. Or, they can contact me and I’ll get them more information. Now fees vary depending on how many countries and what countries. So, there’s no way of giving a price until I know what countries.
[21:57] Ellen: Right, but they can get a quote from you though.
Kevin: Oh yeah, absolutely.
Ellen: Okay. Okay, great. So, do you have any final tips for people?
[22:06] Kevin: Well, if people want to reach me, first of all, my website is www thetrademarkguy.com or my email is email@example.com. And I should explain why I’m still on AOL. Okay?
Kevin: Because when I was at Warner Brothers, AOL actually owned all of time Warner and in those days AOL at least, cost money on a monthly basis, for those who are too young to remember. And, of course, I was an employee of AOL and I had free Internet for, I don’t know how many years, and so I decided to keep that address.
[22:48] Ellen: (Laugh) Okay. So, anything else that we didn’t cover that you think people should know before we go?
[22:55] Kevin: I can’t think of anything. If people have any questions…
[22:58] Ellen: Okay, awesome, yeah, if you have questions, you can put them in the Facebook group and I can get them to Kevin. But anyway, thank you so much for coming on. This is so fun. So nice to see you!
[23:10] Kevin: Thank you, Ellen. Great seeing you and talking to you.
[23:10] Ellen: So that’s it for today to get the transcript, go to https: booksbusinessabundance.com/podcast You’re also welcome to join our Facebook group. That link is on the podcast page, but I should tell you I’ve consolidated the two groups into one.
And it’s very cool because everyone who was on the Books, Business, Abundance, Facebook group is welcome to join the new group. I’ve now got the new link in all the pages or most of them I’ll get them all done. And, here’s lots of engagement there, networking support.
You’ll still also get first notices of new podcasts, be able to ask the guest questions, promotional opportunities and more. And also, when you go to the booksbusinessabundance.com/podcast page, be sure to grab Book Planning Secrets, A Simple 4-Step Guide to Writing a Bestseller if you want to write your own book, or if you’re already writing a book, but you want to write them faster and easier. Til next time Bye-bye,
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