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00:00:00 - Speaker 1: You can also be notified just based on an algorithm, you know, if somebody files something that’s similar to your trademark to trigger a notification to you. The interesting thing about the trademark office, at least from a government perspective, is it’s the most government 2.0 out there in the sense that the data is publicly available and can be downloaded every single day.

00:00:24 - Speaker 2: Hello and welcome to Meta Muse. M UUE is a tool for deep work on iPad and Mac. This podcast isn’t about Muse product, it’s about the small team and the big ideas behind it. I’m Adam Wiggins here with my colleague Mark McGranaghan. Hey Adam. And we’re joined today by Josh Gurbin of Gurban Intellectual Property.

00:00:42 - Speaker 1: Thanks for having me, guys.

00:00:44 - Speaker 2: And Josh, I understand you have 4 kids. How in the world do you manage life work balance with that and being a business owner?

00:00:51 - Speaker 1: That is incredibly difficult. I will say that the plan was maybe not to have as many kids initially, but these are the things that happen as life goes on. And one of the great benefits I have is that I get to work from home every day. So I don’t have a commute into the office or home from the office, so I can wake up, get to work, and You know, when the kids get home from school, I have a little time, but, you know, I’m not wasting an hour or 2 hours a day commuting to and from an office in a big city and having that time back is really the critical element I think in making it all work.

00:01:23 - Speaker 2: That’s huge. Now have you found some good techniques for communicating boundaries around your office slash, you’re on a call or just need to focus, especially, you know, I don’t know how old your kids are, but the younger they are, the less they understand, you know, closed door means you can’t come in.

00:01:39 - Speaker 1: Absolutely, so in my house we actually have an office, you know, that I work from that’s dedicated for me and everybody understands that the doors closed, you know, you just don’t come in, I’ll come out when I’m ready, and luckily, you know, when you work from home and you talk about those boundaries with your kids every day, they really understand what you’re doing. Now, of course, there’s gonna be a situation here and there where they run in and They probably shouldn’t be, but the benefit of COVID is so many people have had to work from home and deal with that now that it’s not unusual for anybody to kind of see a kid running around on a call here and there, so it’s almost an enduring quality these days, so I find it works pretty well and for the most part, you know, we’re able to sort of separate in our house.

00:02:17 - Speaker 2: Absolutely, I almost wonder, yeah, every time my kids run in and jumps in front of the screen and everyone sees her, you know, it’s obviously always like a very positive reaction, but I almost wonder if that’s a positive reinforcement for what ultimately is not a good behavior, which is, you know, violating the boundary of the closed door or the workspace. But yeah, then you can’t resist it. Everyone’s just entertained to see an unexpected cute face pop up on the screen.

00:02:42 - Speaker 1: And honestly, if you have kids, you appreciate what’s going on and you understand what’s going on, and I think that that’s something that, you know, to me it doesn’t bother me if I’m talking to somebody and their kids budging. I like to see what their life is like. I like to see that they’re a human being too, right? And I think that that humanizing aspect of things can even make relationships stronger between people. So I personally have no issue with it, and I think if somebody does and they’re probably got ice in their veins, you know, it’s.

00:03:08 - Speaker 2: And tell us a little about your firm and your background.

00:03:12 - Speaker 1: Yeah, sure, so I started the law firm in 2008 in the middle of the Great Recession.

I had a steady job, a good job at the time.

I was 2 years out of law school and everybody thought I was absolutely crazy as 27 years old and they’re like, you’re gonna start your own law firm? I mean, most people don’t want to hire a lawyer and it looks like he’s 12 years old and I definitely looked like I was 12 years old at the time, but I said, look, I can offer pretty low-cost service and I’m not gonna have any overhead and I wanna really be out on my own.

I’ve always wanted to have my own business.

And basically started by using Google AdWords and going out there and putting up a website and slowly but surely got clients and If you’re just building brick by brick day by day, ultimately you build up some clients, you get some repeat and referral work, you continue to take a new work and slowly but surely you grow a law firm, and now we’ve got 13 employees, we file around 1000 US trademarks every year plus hundreds of trademarks in other countries around the world. So it’s been quite a ride and just something we’ve built very methodically and slowly over the last 14 years.

00:04:15 - Speaker 2: Nicely done. I feel with a services business, which I for a few years was a software consultant, and the common wisdom there and certainly reflected my experience was you get business through referrals, essentially through your network and ideally clients that refer you to other ones, but they tend to be all word of mouth. But we found you.

Because you have a good website and I basically just Googled US trademark when we were thinking about filing for Muse and now we have a multi-year business relationship.

I don’t know, is that unusual that we came in that way, or is this kind of reflecting a new reality of the internet world which is you can actually essentially get randos from the internet that come to hire you for your service.

00:04:57 - Speaker 1: Well, yeah, absolutely, and that was a lot of the disbelief that I had amongst the legal community because lawyers, you know, they tend to be really reticent to adapt to new technologies and new techniques of advertising and things, and everyone said, who are you gonna find online that’s looking to hire a lawyer? Who are you gonna really get? And well, obviously, you know, we’ve gotten some really good clients, you included and One thing that we invested in very early on was search engine optimization. So you likely found us through an organic search and not necessarily an ad.

I will say that in my experience, you know, the clients that come to us when we were doing the Google ads, which we don’t really do anymore, were harder to kind of parse through all the leads and finding sort of the good. Ones in that bag of leads that would come in every day.

But because we have such a great organic presence and work really hard on that, we find that the clients we obtain from that presence tend to be really, you know, great clients, and we’ve built a business that way.

I will say probably now, to grow a service business, I certainly agree you need the referrals because it’s very hard. You know, there’s a lot of work that goes into building a new relationship with a new client that’s found you online and has their own suspicions about you and building that trust factor is really challenging. But if someone comes in through a referral and it’s a warm referral, they have the trust already, they’re like, oh, this person has worked with Josh, they know his firm, they trust him, I’m gonna trust him, right? And so there’s a lot less work that has to be done to build up that relationship and that’s really what’s allowed us to grow is that warm referral business that we have.

00:06:24 - Speaker 2: One thing I noted right away on the embrace of technology side is you had a calendly link or some kind of automated form for basically asking for your time, asking for a call, and I think I’m not sure how common that is nowadays. It’s very, very common in the tech industry, but this. It was 3 years ago or something like that, and so I was quite impressed by that and it seemed to signal that you were embracing technology to make lives easier for everyone, and that implied to me that we would be sort of compatible in terms of working together, a working relationship.

00:06:55 - Speaker 1: That’s so interesting to me to hear that because I have gotten mixed feedback on that Coly link over the years.

Some people really hate it. They take it as an insult that you won’t take the time to schedule a call with them, and I’m just shocked because I’m like, well, how many emails do we need to trade to find what time works for you and what time, and this is just you go in there and you just, you know, yeah, I mean I think that’s a nice.

The thing about working with people in tech is that you appreciate those tools and, you know, we do offer a lot of our services at a flat rate, so we are incentivized as a law firm to be more efficient, and that is actually, you know, the reverse of the way a lot of law firms think, because a lot of law firms are like, well, we want to be as inefficient as possible and build as many hours as we possibly can to get this task done, and we’ve always been designed of, we need to get this done as quickly and as good as we can, but we need to get it done as quickly as we can.

When you’re focused on that, you look at all the different tools that are available and you start to use them because they’re really helpful in keeping your time down and letting you move through projects.

00:07:51 - Speaker 3: This is very interesting to me.

So, for the listener context, Adam has sort of reached out and established the relationship with Josh, so I wasn’t involved in that, and I wasn’t aware actually Adam, that you had reached out sort of cold over the internet, and my experience with almost all Lawyers and accountants and similar professional services firms is that they basically don’t talk to you unless you have a referral. They don’t quite come out and say that, but that’s really the MO of most folks, but I think it’s notable that Josh and I think the law firm that we worked at, we both found through their online presence basically and reached out, and then our accountant we’ve known for like 10 years, so that’s a different case, but it is one little data point in the changing world of professional services.

00:08:30 - Speaker 1: Yeah, it’s interesting to hear. I mean, I think that it depends on the size of the professional services firm because a lot of the firms are set up to have these really significant overheads, and they have a very developed client base that they’re billing every year, and these are retainer clients and they have these very set budgets. So when they take on somebody new, that new person needs to have a certain budget in order for it to make sense for that firm to take on. And where we differ is we have a very low overhead structure and we’re actually focused on serving. A lot more diverse of a client base and let’s say 100 big clients a year. We’re focused on serving 1000 smaller clients a year. And to us, that’s a great benefit because if one client for some reason leaves, we’re not looking at having to lay people off or having a huge loss of revenue, you know, we still have the 999 other clients that year that are gonna be, you know, keeping us afloat and keeping the lights on and our people paid. And so when you’re not reliant on these like large whale clients, then you are more apt to really want to take in, you know, new work every single day because you are relying on more or less the volume.

00:09:38 - Speaker 2: We went through something exactly like that with our software consultancy, which is we got some.

Bigger projects, in particular, one big client and we had to staff up to serve their needs, but then when things changed with them out of the project or whatever, and then suddenly we’re scrambling around to find enough work to keep these folks fed and so yeah, I mean, it’s of course it’s always the case that professional services and you know it’s kind of like a scaled up version of freelancing, which is feast and famine. That’s right, but the more you can diversify and spread out a little bit. But yeah, you get that client that comes in and, you know, basically is well has like exactly as he said, and that’s it’s really compelling, that’s how a lot of services businesses do what they do.

00:10:19 - Speaker 1: Oh, for sure, and I mean you know we had in the last 2 years, we had 3 or 4 of our largest clients get acquired, and when that happens a lot of times you lose the trademark work because the business that’s acquiring them is much larger and has their own lawyers already and so, you know, we have to be prepared that even when we build up and work with a particular Client and they become a larger client, they’re eventually gonna leave.

So you have to always kind of have what you call a farm system of clients you’re developing and hopefully getting into the next big client to take the place of the one that will eventually leave for one reason, either through a sale of the company or they get so big that some other lawyer poaches the work or whatever it might be.

00:10:55 - Speaker 3: Yeah, I wouldn’t be surprised that even if you don’t have outsized clients in terms of work, you probably have some clients that give you an outsized amount of referrals. I’d be curious if that’s the case.

00:11:06 - Speaker 1: Yeah, you know, actually other lawyers are our best source of referrals because a lot of other lawyers don’t have a specialty in trademark law and they’ll get a question from a client about a trademark, and there’s this ethics rule that applies to all lawyers that you can’t do work for somebody unless you really feel competent to do it, and if you’re not feeling competent to do it, you might have to charge your client to get competent, whereas they could just call us and we could do something really quick and easy for their client and the client gets great customer service.

And at the end of the day, the lawyer doesn’t lose their client because we’re not looking to take, you know, somebody on for more than the trademark work.

So when we start working with our lawyers and other law firms, they’re like, wow, this is great, we can send these things over to Gurin and they turn it around and get everything taken care of and the client’s happy and they’re staying with us for their other corporate work or whatever it might be. And so those law firms and lawyers tend to be our best referral source.

00:11:59 - Speaker 2: Well, that’s certainly a benefit of the tight specialization that you have, and maybe that is a good transition into our topic today, which is trademarks.

So maybe this is a slightly surprising one for our listeners who are used to a lot of our focus tends to be on design, product, tools for thought, research, things like that, but at least one of my goals with this podcast is really to document all of the aspects of building a business that Mark and I and all the others on the Muse team are going through here and the trademark is.

One corner of that, but I found a surprisingly intriguing and intellectually engaging one. And just in our conversations, Josh, just on the phone working through our case of getting our various trademarks filed, I’ve been just fascinated by the mechanics of it even past what’s necessary for the purpose of doing the project, so I hope we can share that with our audience here.

00:12:49 - Speaker 1: Yeah, absolutely. That’s my everyday.

00:12:53 - Speaker 2: Now of course, I’d like to tell a little bit about the Muse journey in our trademarking and why we’re motivated on all that and so forth, but we always like to start really at the beginning, which is just definitional. What is a trademark?

00:13:06 - Speaker 1: Yeah, so a trademark is a source identifier, meaning that it identifies the source of goods or services. So if you see a Nike logo on a shoebox, you know that the shoes in there were made by Nike Inc, the corporation, and you know that the shoes have a certain quality about them and where they come from.

And so trademarks, and many business owners are surprised to hear this, but trademarks and trademark law exist to protect the consumer, not the business owner. So the test of whether you ever have trademark infringement is whether consumers might be confused as to the source of the goods or services because the trademarks are so similar. And that is why trademark law exists in the United States.

But yes, so a trademark is meant to identify what company is behind whatever product or service is being offered.

00:13:55 - Speaker 2: And I’ll do a quick call back to our episode on brand, where I spoke there about some historical examples, and a notable one here is Heinz, which actually started as a jarred pickle business, later went to their now what they’re known for with ketchup, but the big innovation there was that you had these door to door salesmen that would sell these canned foods, but you didn’t know where it was from. That’s the source that you’re talking about there. And Heinz came along and came up with the idea of I’m going to put my name on it in a very particular typeface and a very particular kind of recognizable color scheme, and I’m really going to stand behind the quality on this and get people to trust. I guess trust me, trust, you know, Mr. Heinz, but really they’re trusting the brand, and that was maybe the birth of the modern concept of brand, but that pretty naturally leads into why you need trademarks in that circumstance, which is like, OK, if you built a bunch of trust around a label with a typeface and some colors, well, that’s pretty easy to duplicate. And so then legal protection to prevent that as sort of a form of, I guess, defrauding the consumer or tricking someone in a way that harms them, it makes sense for the law to provide that protection.

00:15:03 - Speaker 1: Yeah, absolutely, you know, I’ve never heard that story before, but that is an amazing way to kind of paint the picture of why trademark law exists and how it helps protect consumers.

00:15:13 - Speaker 2: And just very broadly speaking, how do you think about when a business owner should register a trademark for one or more of their products?

00:15:23 - Speaker 1: So, I’m gonna be completely biased because I’m a trademark attorney and this is how I make my living, but it should arguably be the first thing that someone does in connection with starting a business.

And that’s because if you have a name for your company or a name for your product or service, you should not start investing in that. You should not be creating logos around it. You shouldn’t be buying signs, you shouldn’t, you know, you shouldn’t be building brand equity into it until you know that trademark is clear for you to use, meaning there’s not any other conflicts.

And you’ve got a trademark application filed, which gives you a priority date in that particular mark, meaning if anybody else comes and tries to use the name or file for the name, they’re all gonna be subject to your rights from the date you had filed that trademark application.

So we typically, if we can get to a client early enough, we remind people that you want to do this as sort of number one A on your list of things to do when you’re starting a new company or starting a new product or service line.

00:16:20 - Speaker 2: So maybe you would lump it in with registering a domain name, setting up your Corp or LLC, some of those other just basic mechanics of getting a business started.

00:16:31 - Speaker 1: Absolutely, especially, you know, if you’re ever going to spend a nickel on buying a domain, you know, you’re not just getting it for $1299 because nobody else wants it, but you’re actually investing a couple $1000 or whatever it might be to buy a domain, you really wanna make sure that the name is clear, because if you buy a domain that somebody else may have a trademark registered around or a similar trademark registered around, they would actually be able to come and take that domain from you potentially down the road.

So, Just making sure that name is clear and also again getting an application file to set a priority date in place, absolutely critical to protecting yourself whenever you’re setting all those things up.

00:17:08 - Speaker 2: And give me the simplest possible case. I have a name that is very unambiguous, you know, maybe it’s long, it contains my personal name or something like that, no confusion with, you know, something that’s, for example, a single English word will come to why that’s challenging. You’re in just one jurisdiction, let’s say the US since you know that well. What’s the simple case in terms of like time and cost to get your trademark filed?

00:17:32 - Speaker 1: Yeah, sure. So depending on the service provider you use, the cost can vary pretty significantly. You know, you could go online, as you mentioned, and find a lawyer like myself.

There’s other lawyers that now hawk their services online as well, there’s plenty of them.

You could use a service like a LegalZoom, which is technically in most cases a non-legal service, meaning you’re just, you know, using a software that people have created to kind of help you with the search and help you with the filing, and you pay a fee for that, or you can hire a really large institutional law firm. And depending on which path you go, your fee structure is gonna be a lot different.

The way that we view ourselves in the market is that we’ve always tried to set ourselves up to provide the same style of service you’re gonna get from a large institutional firm and the same know-how, but do it at a rate in between what a non-legal service like a LegalZoom charges and what a large institutional firm charges as many times as, you know, priced out a small business owner.

So just to put numbers out there. We typically charge $950 to run a US trademark search, provide an opinion, provide consultation time, and then ultimately file the application. And in most cases, your filing fees are going to be around $250 or $500 with the government. So, a $1500 budget is pretty sufficient in most cases and whether it’s our firm or some other small law firms, you probably find the prices to be pretty similar.

Time wise, Typically it takes about a week or two to run a trademark search properly. So you can go online and do this yourself, you know, and there’s a lot of information about, well, go to this website and run a trademark search or what have you, but those searches are very inconclusive because they only are looking for identical matches, and the thing that will cause the most problem for anybody that’s trying to register a trademark is not an identical match, but something that just sounds like your trademark or slightly spelled a little bit differently than your trademark, because those are all things that can create a conflict.

And so a professional search is gonna look for all those things and takes a little bit of time. So typically it takes our firm about 3 hours of staff time. There’s some paralegal time and there’s some attorney time in there, and it takes us that kind of time to get a search done.

So, again, it might take a week or so to get that turned around, but then shortly after that you can get an application filed. Let’s call it 2 or 3 weeks from the time you’re engaging somebody to the time you get your application filed.

Now, once the application is filed, this is where it’s kind of a process these days. The United States Patent and Trademark Office, which is the government agency that processes these filings, they take about 10 months to even process your trademark application now. It used to be 3 to 4 months, of course, now it’s 10. So you’re gonna wait a really long time to get an answer. But once you get that answer, if they approve it and move the application forward to registration, typically around month 12 to month 14, you end up with the registration certificate and you’re all set.

00:20:19 - Speaker 2: As you mentioned before, actually being in the line, having the application submitted itself is worth something that kind of reserves your place, so to speak, and furthermore, I hadn’t realized this until we’d worked together, but I think there’s these two different symbols you can if you want. Use together with your trademark. One is the little TM kind of superscript and one is the R. And tell me if I’m remembering this right, the TM you can actually do as soon as you have filed the application and the R means it’s been registered and accepted. Am I remembering that right?

00:20:52 - Speaker 1: Yeah, absolutely, matter of fact, you can use the TM before you even file, if you want to.

So the TM stands for, hey, I’m claiming a trademark right of some kind.

It might be what we call a common law right, meaning a right that is an unregistered right, or it could mean I’ve got a federal trademark application filed and I’ve got a pending registration.

So that TM can be thrown up at any time.

The circled R can only be used once you actually get the registration back from the USPTO.

So again, a year plus down the road.

People are often surprised to find that if you use that circle R before you receive the registration, that’s actually a violation of federal law.

No, they’re not gonna arrest you and throw you in jail, but it can actually cause a refusal of your trademark application if the government finds that you’re using that in their examination process, so you don’t want to use it before you get the registration.

00:21:41 - Speaker 3: That’s interesting. I feel like I’ve seen TM in places where almost certainly they’ve filed and gotten the registration. Is that just because they like the TM or maybe there’s never filed, or maybe I’m just misremembering it?

00:21:55 - Speaker 1: No, you’re remembering it properly in all likelihood, because two things tend to happen.

One, folks set their marketing and forget it, so they never change to the circle of R, and that’s fine too, like you don’t have to. I mean, it’s not a requirement, you can still just use a TM.

The other thing is for a business that touches internationally, if you are registered in the United States, but let’s say you also use the trademark in Europe or Australia or South Africa and you don’t have the mark registered there yet, don’t want to use the circled R there yet either.

So it’s a little easier to keep just using the TM symbol if you’re in jurisdictions where you haven’t yet registered the mark or still trying to register the mark. And sometimes that’s why that happens too.

00:22:32 - Speaker 2: That makes sense. Now those markers, I don’t know how it is for others or maybe beyond the tech world or whatever, but I do think of them as being something that nowadays people would find a little corny, you know, if you stick that into your product marketing materials or whatever on your website that I don’t know. You sound kind of old school or fully yourself or something like that, like we’re not going to put MTM for example, up on our website. Now, maybe a little more classy way would be at the bottom, you know, there’s some gray text that says, you know, X is a registered trademark of dust and such corp. I don’t know if your other clients feel that way, but I can’t imagine myself using either of those symbols regardless of any trademark status we have.

00:23:13 - Speaker 1: It’s so funny you say that because that is like one of the most polarizing questions that I think I get, because there’s people on either end of the spectrum and no one in the middle. So either people love putting the trademark symbols next to their name because they feel it makes them look official, or they hate it because they think it junks it up and it’s corny.

And there’s no in between on that, you know, it’s like you either far right or far left.

And so I personally like them. I mean, I’m a trademark attorney, I think they look great when I see them, and we advise clients to use them because there’s a technicality to using these symbols, which is that when you use them, you’re putting the public on notice that you’re claiming a trademark right.

So if somebody does infringe on your trademark, that quote unquote notice has already been given, which could enhance damages and awards should you, you know, have to sue somebody in federal court. So, Legally speaking, the advice is always to use them. I certainly understand where some folks feel like that is not the aesthetic that they’re going for or the look that they’re going for, in which case we advise them to just try to get it in somewhere like you say, maybe it’s in the footer of your site instead of on the masthead or something like that.

00:24:14 - Speaker 3: And this reminds me, I feel like there’s some branch of intellectual property law and maybe it’s trademarks, maybe it’s something else where it’s like fight it or lose it, and that if you don’t contest other people infringing basically on your whatever IP then you sort of lose the claim to it, so you can’t come back 10 years later and say, wait a minute, you know, I want this back. Are trademarks like that?

00:24:32 - Speaker 1: Yes, they are. So basically, there’s a policing requirement with a trademark in that if you don’t police the marketplace and you don’t police the federal register and other people register trademarks that are similar or same as yours, it will basically erode your rights over time.

So the benefit of any kind of trademark registration is that you think of your trademark and then draw like a big circle around it, and you have a lot of elbow room that you can enforce, right? So if somebody uses a phonetically similar trademark, you can ask them to stop. If somebody uses a spelling of your trademark that’s very similar, but maybe, you know, not the same, you could ask them to stop.

For example, let’s say someone tries to register Muse with a Y, and they’re offering a similar service or product that you are, you could ask them to stop.

But if you don’t, and you allow them to go forward and register their mark or use it, and a certain amount of time passes, typically about 3 to 5 years, you could be stopped from ever making that claim in the future.

So once somebody uses a trademark for so long and you sleep on your rights, the law basically says you can’t sleep on your rights for 5 or 10 years and show up and tell someone they can’t use their name.

So you have this window in which you have to actually police it. And then if you don’t police it and that person uses your name and somebody else uses a similar name, basically that circle we’ve drawn around your trademark gets much, much smaller and smaller and smaller over time.

So your rights just erode, and they get to a point where maybe you can only do policing on a very, very narrow type of infringement that might occur, and not some of these sort of fringe cases, if you will.

It becomes very common for clients to get a trademark registration certificate and kinda just be done, you know, they’re just like, uh, we got it, we’re good, we’ll see you later, we’ll see you in 5 years when we got to renew this thing, and that’s fine, but the challenge with that is, is that over time, again, if they’re not doing that policing work, the rights just won’t be as broad and to most companies that may never matter until you have a problem, right? And then you’re like, ah, I would say it’s like wearing a seatbelt. If you put the seatbelt on every day, Hopefully you’re not gonna have an accident, you know, ever, but when you do, you’re really glad you put the seatbelt on every day. If you’re not wearing a seatbelt and you just have an accident, you start to go through the windshield, there’s no like going back in time and putting it on, you know, and that’s kind of the same concept here. Once you start to have the accident and the problem and you haven’t been doing all the preventative work, it can be really hard to kind of unwind that.

00:26:50 - Speaker 2: One way we can anchor the discussion a little bit here is to talk a bit about Muse’s journey on this and some of our motivations and some of the particular challenges.

Josh, you mentioned that one of the things your firm does is this search, and indeed when I came to you and said, you know, we’d like to register this word, and you basically said before even doing the search, all right, you’ve got a short English word, this is going to be a challenge, but let us look into it for you. And you came back with a report that had a big red banner that basically said like high risk and listed a bunch of similar ones again different spellings, some are older, some are newer, some were for big firms and so on, and indeed I reinforced. That for myself by just going to the US trademark search page, we’ll link that in the show notes. You can do this yourself and just search and there’s hundreds of entries.

Now many of them are defunct or businesses that aren’t around anymore or whatever, but that seems to be true for almost any simple English word like this. There’s a lot of businesses in the world that people have registered for a long time and some of these are active and so you basically came back and we did a process of, OK, could we Add a word, could it be the muse canvas? Could it be something else to make this an easier process for us, but ultimately we decided to go ahead and for there I’ll rewind even a little further back in time. Which is Mark, you and I had taken a walk while we were on basically our very first team summit in Dublin, Ireland, which is when me, you and Julia had gotten together to say, OK, we think there’s business potential here. Do we want to spin this research project we’ve been doing out of the lab? And indeed we decided there and the name you, I think you would come up with Mark, but it was kind of a placeholder for this research project, but he argued, you know, this is a good. I think it captures a lot about the spirit of the project and I’d like to use it if at all possible, and that includes obviously the defending against any risk that either we’re stepping on the toes of someone else who’s already in the space or someone else that might come up behind us and that’s why we decided to go on this what has now been a multi-year journey of filing this trademark in several different jurisdictions.

00:29:04 - Speaker 3: Yeah, names have always been super important to me. I mean, there’s a whole business reason, of course, why names matter, but for me, whenever I’m starting or in the early days of a project or a library, There’s an incredibly important milestone where you come up with a name that feels really good. You always start with something generic or goofy, or maybe you pick some character from a novel you just read or whatever, right? You got the kind of placeholder name, and we had that with Capstone a while back, which was a prototype that would eventually become used. But I remember quite vividly, I sat down at one point and thought from first principles, what should the name of this thing be? You know, it should connote thinking and deliberateness. But have sort of this creative, not too mechanical feel. And I wrote down a whole list and man, you really felt like the right name. But I knew it was gonna be tough. It was gonna be very tough to get a domain, and I assumed it was gonna be tough in terms of the VIP side. But I really wanted to have a good name, both for the business and for the sort of psychological value of saying it for the next 5 years or whatever. And I specifically didn’t want to do something like use Canvas software apps. I wasn’t gonna cut it for me. So I’m really glad that we did try to pursue the single word.

00:30:13 - Speaker 1: Yeah, and there’s always this pool between marketing and legal with any trademark.

I deal with this a lot, where from a marketing perspective, the single word muse, four letters, that’s ideal, right? It’s an easy to remember word, it’s short, it’s sweet, it’s to the point.

From a trademark perspective, when you’re trying to register a four-letter word against millions of trademarks that have been filed before you, the chances that there’s gonna be a completely clear path are pretty slim.

And so that’s where the challenge comes in between what’s good for marketing versus what’s good for legal.

I always give people the data point that in 2021, there was 669,397 trademarks filed with the USPTO, so nearly caught almost 700,000. That’s one year, you know, so you could just imagine going back now, we’ve filed more and more trademarks now than we ever had before for various reasons, but You know, when you have this many trademarks getting filed every year and you’re trying to get a four-letter word registered, you’ve got a lot of potential complications and competition to worry about. The one thing I always tell folks about name selection is that Most great names didn’t really mean much or wouldn’t be great unless the company really built a great product or service behind it. I look at Nike for shoes, I don’t think there’s anything great about Nike. It’s a four-letter word, but it doesn’t strike me as like a great brand name if I didn’t know that there was a huge shoe company behind it. Same thing with Google, it’s like, what does that even mean, you know, but And famously, Google is a mathematics term,

00:31:52 - Speaker 2: you know, Google is where it comes from, yeah, but it’s actually misspelled, you know, a misspelling by one of their angel investors that, yeah, yeah.

00:31:56 - Speaker 1: So those are sometimes, you know, I do think people put a lot of value in the names that really sometimes they shouldn’t until they actually build the brand equity into the name, and then that’s when the value is there.

00:32:09 - Speaker 2: Yeah, well, maybe there’s a mix there for me, getting the right name on a project, on a company, on whatever it is, as Mark said, it feels right, and then I, I’m actually more motivated to invest myself in it and build that brand equity. Sure. You know, one theme on this podcast for certainly is that the motivations of the creators do matter a lot in making a great product and So, yeah, we probably could have made things easier for ourselves, you know, gone the route of, I don’t know, you know, Miro was called real-time board when they started, could we have been called like real time canvas or something, but that just would not have inspired me.

00:32:43 - Speaker 1: That’s totally fair and very important. There’s no question.

00:32:47 - Speaker 2: Now one element of the name you’ve mentioned a few times here is the overlap or I guess it’s the risk of confusion for consumers.

And one thing that really struck me in one of our early calls is you talked about the standard is different in different industries.

So I think this is pretty obvious for businesses that are clearly local. So for example, here in Berlin for a few years it shut down, but there was a restaurant near my house called Muse, and presumably they weren’t worried about.

Even another restaurant in another city with that same name, for example.

And similarly that any kind of local business you’re really worried about the people who are near enough to you to know who you are, do business with you, transact, a part of the nature of technology business, you know, you put an app in the Apple App Store and you’re instantly available in almost every country in the world where you put something on the internet and you’re instantly available everywhere, so you’re sort of little tiny just got started product is now essentially competing in the global namespace.

So that makes things way harder, although perhaps that’s balanced out by it seams, and you tell me if I’m remembering this right, but it seems like the various trademark authorities in different countries know that and actually apply a different standard to, for example, a piece of software or an app than they would say, fashion.

Do I remember that correctly?

00:34:10 - Speaker 1: Yeah, for the most part, so one of the things we talk a lot about when we’re looking at how clear a particular trademark is is how diluted is that word in a particular industry as well. So, the thing about clothing brands or fashion brands is that that is one category of trademarks that probably receives more applications than any other in any given year because of the low bar to.

Part of a clothing company. I mean, you know, you or I could go online and theoretically start a clothing company in 20 minutes. The bar to starting a software company and having an actual software product to sell is much higher, so you have fewer applications coming around that than you might the clothing category.

So, if you look at a trademark search that you would do around a fashion brand, you’re probably gonna find Let’s say a couple dozen trademarks that might look really similar, but yours is just different enough that you can kind of thread that needle between every other one of them because so many already coexist in that space.

Whereas if you come into a category that’s less traffic and there’s only one other name that’s similar to yours, the government, at least in the USPTO’s case, you know, when they’re doing a review of your trademark application. They’re gonna have a lot harder time approving your application if there’s only one other trademark in your space that uses a similar name as opposed to having 20 other trademarks in your space that might have a similar name.

00:35:28 - Speaker 2: And what is the standard for customer confusion? So this is certainly a lot of what we’ve done in crafting our various applications is describing what the software is, or I suppose, I guess what the product is, but how that relates to the trademark, because it seems fairly obvious to me that for example, I don’t know, there’s a web browser or at least was one called Mosaic, and there’s also an investment firm called Mosaic, and actually I’ve seen other companies and open source projects and things.

It’s, it’s just like that’s a good name. A lot of people have used it, but to me there’s no risk of confusion between a tech investment firm and a web browser, but you could say they’re both in the software business. Where do you draw the line and what’s the standard for differentiating there?

00:36:12 - Speaker 1: And that’s what makes trademark law challenging and exciting at the same time, which is that there’s normally not a case that’s been decided on the particular point that you’re looking at.

Like you said, would an investment firm and a software browser be similar? I mean, the instinct that I have would be, no, they wouldn’t be. But then you get other examples you’re like, well, what about this and this? And you’re like, well, that’s closer to the line, right? And so there’s this sort of imaginary line that we’re dealing with as to when does something get too close to it. And that is why there’s litigation in this world, right? That is why there’s lawsuits because people disagree about what the line is and how close you can come to it.

I also love the examples of, you know, you have Delta Airlines and you have Delta Faucets, you know, faucet maker, you have Dove soap and Dove chocolate, you know, you can reuse names in different industries, but then the question becomes, you know, how close can you get? One example that I can think of is Beer, wine and spirits are typically considered to be very closely related from a trademark analysis.

Although from a consumer perspective, if you’re buying these products, you’re likely in different aisles in the supermarket or in whatever store you’re buying the product, right? You don’t normally buy a vodka off of the same shelf you’re buying a Pinot Noir from. And so the question is why couldn’t a wine and a spirit have maybe similar the same name. And coexist peacefully in the marketplace. I think they probably could, but there’s a lot of case law and a lot of decisions that have been made out there that says, no, these are all very highly related things and you can’t coexist. So sometimes you have a developed area of law because people have litigated it, and other times you’re in industries where people just haven’t litigated it yet and there’s not really a clear answer to the question of whether or not these two things are considered too close.

00:37:55 - Speaker 3: And is there any underlying statute here, or is it just pure case law?

00:38:00 - Speaker 1: Well, the underlying statute in the United States is called the Lanham Act. If you want to look it up, it’s L A N H A M and then Lanham Act.

That’s where it kind of talks about the fact that if consumers are confused, you’d have trademark infringement.

So if you’re litigating a case, one of the things you typically do is you convene a poll or a study, and you actually go out and scientifically interview consumers and see if there’s any confusion. And these things can cost like 500,000 to $100,000 to run, so I mean, they’re really expensive type of project, but you know, large corporations do them when they’re litigating these cases. So you have that baseline statute, but then, as to your point, the case law is what develops kind of these finer points, which is, are beer and wine too close? Is a clothing brand and a jewelry brand too close, you know, and all these types of questions that get asked, this is where the case law sort of develops and and tries to provide some guidelines as time goes on.

00:38:58 - Speaker 2: I wonder if the software industry is harder or maybe just more confusing from a regulator perspective because it is still new enough, that’s something that’s often not well understood by people who are not in the industry.

I certainly run into this all the time with just explaining what I do to friends and family, very smart, educated people, but it’s just if you’re not pretty deep in the software world, you may not know the difference between Certain categories of productivity software versus B2BAS versus infrastructure versus medical software versus something else.

So I wonder how much, you know, obviously the folks working in the trademark office, they are dealing with all varieties of business and if you come in and say, Well, no, you know, this piece of software is an app store, and this other piece of software that I’m registering for is a health tracker, and those are just completely different and there’s no risk of confusion, but maybe to the person in the office that it’s sort of like hard to tell the difference.

00:39:56 - Speaker 1: Yeah, so there actually this case law out there