In this episode of Entrepreneur’s Enigma, host Seth is joined by intellectual property lawyer Marc Misthal. The two delve into the world of trademarks, copyrights, and patents, sharing invaluable insights for entrepreneurs on protecting their innovations and ideas. They discuss the significance of safeguarding intellectual property from the outset of a business venture and emphasize the value it holds for investors. From the nuances of trademarking names and logos to the unorthodox aspects such as trademarking scents, the discussion offers a comprehensive guide for entrepreneurs navigating the complex landscape of intellectual property. Tune in to gain insights from Marc on how to seize control of your intellectual property and set yourself up for success as an entrepreneur.

Key Moments

[03:39] Many don’t LLC, don’t understand entrepreneurship.

[07:07] Trademark and copyright registration offer legal protection.

[09:49] Lawyers concerned about hourly fees, prefer fixed.

[13:46] Discussed trademarking, but decided against it.

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https://www.linkedin.com/in/marcmisthal/

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Transcript Provided By CastMagic.io

Seth [00:00:00]:
Entrepreneur’s Enigma is a podcast for the ups and downs of entrepreneurship, to the wins and the fails that we all face being entrepreneurs, how we learn from adversity. Every week, I talk to a different entrepreneur with a story to tell. I’m Seth Goldstein. Come with me on the journey. This is Entrepreneurs’ Enigma. Let’s get started. Hey, everybody. Welcome to another edition of the Entrepreneur’s Enigma podcast.

Seth [00:00:35]:
Today’s gonna be a little different. I have an IP lawyer extraordinaire. Nice guy. He’s a lawyer, but don’t hold that against him. Mark Mistall. Did I say it correctly? Absolutely. Wow. Because it’s tough.

Seth [00:00:48]:
You know? That that s, the t, there isn’t a lot of stuff. So Mark is a principal attorney at oh, Oh, god. It’s these last names Offit Kurman?

Marc [00:01:01]:
Offit Kurman.

Seth [00:01:03]:
Yes. And he is in charge of intellectual property practice at the group, which, you know, means trademarks, copyrights, patents, all the fun stuff that you don’t wanna deal with, but you need to deal with. I mean, especially if it’s if it’s patentable, if it’s trademarkable, you should probably trademark it. And then if you trademark it, which Mark will get into because he’s the lawyer, I’m not, you gotta protect the trademark. So you need someone to mark on your side.

Marc [00:01:30]:
So make a lawyer out of you

Seth [00:01:32]:
yet. Exactly. I yeah. I’ve been around the block a few times. Exactly. So he’s a wide range of clients worldwide. He counts councils businesses of Spain, diverse industries, fashion, apparel, computer technology, hospitality, so on and so forth. Pretty much if it can be patented, trademarked, copywritten, you guys talk to Mark, pretty much what it is.

Seth [00:01:52]:
And you so you deal with the Patent and Trademark Office, you know, and you’re on and you deal with the proceedings under the you Uniform domain name dispute resolution policy. It’s a long one. And so

Marc [00:02:06]:
you’ve been around the block

Seth [00:02:07]:
a little bit. Oh, yeah. It’s sometimes it sometimes the Feds come up with good names. Other times, they’re they’re either good and they’re clever or they’re awful. They’re god awful. This is rather UDRP. You you droop you droop. The u group be our case.

Seth [00:02:21]:
Exactly. Exactly. Hey, Mark. How’s it going, buddy?

Marc [00:02:24]:
Good. How are you? I was trying to stay warm today.

Seth [00:02:26]:
Oh, it’s Freezing here today. It’s gonna be freezing when this episode comes out, so we’re not we’re not dating ourselves either. So, so how did this all get start? How did you get into law? Let’s start that off. Like, what made you wanna become a lawyer? Because I mean, that’s that’s as you mean, you have law school, all that stuff, and then people don’t like you.

Marc [00:02:46]:
What made me wanna get into law? Well, I was always interested in The disputes that creatives would have. I was always following the news in the movie business. As always, you hear a lot of this one’s suing this one for Stealing this idea. So when I was younger, I followed that a lot, and that seems to me to be the right area For me and,

Seth [00:03:10]:
Were you were you arguing with a child?

Marc [00:03:13]:
It depends on who you ask.

Seth [00:03:15]:
Exactly. Exactly. My son’s gonna be a lawyer at some point because, Oh, he he argues and negotiates. He’s gonna be good if he ever becomes a lawyer or so.

Marc [00:03:23]:
Yep. No. I’m sure my parents would say yes. That was argumentative.

Seth [00:03:29]:
Yeah. I’m sure. Yeah. Absolutely. So so so so here’s the thing. A lot of a lot of entrepreneurs come out. They you know, a lot of them start off. They’re, like, they hang their shingle.

Seth [00:03:39]:
A lot of them don’t even LLC Yeah. They just they don’t know what the hell they’re doing. A lot of times it was, you know, people we’ve had on this podcast, The way they become about entrepreneurship is not, like, I’m gonna start a business. It’s more like you get fired, and I’m I’m sick of being fired and laid off. I wanna start a business. And then they don’t really realize there’s a lot more to it than just hanging a shingle. Like, there’s the EIN number, which is the most important number that you’ll get and the fastest thing you’ll ever get from the IRS. Literally, you press a button, they give you a number to pay them.

Seth [00:04:13]:
So

Marc [00:04:14]:
But but you But you gotta do as you said it at the top of this, you gotta you gotta start out and you gotta protect the IP, and you got and you gotta do it from the start.

Seth [00:04:23]:
Yeah. Because

Marc [00:04:24]:
yeah. The longer the longer you wait, the harder it gets. Mhmm. Having IP in place Is something that investors wanna see. If you get to the stage where you’re asking people to invest, they wanna see you’ve taken steps to In to protect yourself.

Seth [00:04:43]:
Yeah.

Marc [00:04:44]:
And there are certain deadlines. Oh, wow. You know, patents have Deadlines by which they have to be filed. In the US, you have to file a patent application With 1 within 1 year of 1st public disclosure of the invention sense.

Seth [00:05:02]:
You shouldn’t sit on that kind of stuff.

Marc [00:05:04]:
But if you but if you don’t do it, You’re out of luck.

Seth [00:05:08]:
You it’s free it’s it’s fair game.

Marc [00:05:11]:
Yeah. You you cannot get a patent, and there are countries, Other countries in the world where you have to file the patent application before public disclosure.

Seth [00:05:20]:
Oh, wow.

Marc [00:05:21]:
So but

Seth [00:05:22]:
then then there’s China that doesn’t matter. You can get ripped off regardless. So

Marc [00:05:25]:
Well, if you wanna do anything in China, you better have you have better had to file something there for patent trademark or copyright. Otherwise, it’s gonna be even harder than

Seth [00:05:36]:
it is. Yeah. It’s been really hard over there. Yeah. Because I know a lot of people have had developed stuff, and they’re like, it’s just not worth chasing after China at this

Marc [00:05:43]:
point. And these things don’t happen overnight.

Seth [00:05:47]:
Yeah.

Marc [00:05:47]:
Right. That’s what I

Seth [00:05:48]:
remember. Yeah.

Marc [00:05:48]:
Patent applications can take years to become a patent In the u in the US, you file a trademark application in the US. Right now, it’s taking the trademark office about 9 months just to look at the applications. Oh, jeez. You know, there are countries that take even longer. So it’s not It’s not great, but it’s not the worst out there.

Seth [00:06:12]:
It’s been 9 months. I mean, if you think about it, I mean, you have a common law trademark in the meantime. So if you’re first to 1st to I mean, I’ve I’ve paid attention to this. I have a lot of common law trademarks. I don’t I need to talk to you after this about, you know, getting my, you know, actual them turned into trademarks. But, But, no. But, I mean, you have the common law trademark means you’re the 1st to market with that mark. Right.

Seth [00:06:32]:
In the meantime, so you’re kind of, in quotes, protected.

Marc [00:06:36]:
Well, it’s it’s more than in quotes. It’s you know, if you had to really enforce and take somebody to court, you could. On the other hand, Oh, yeah. You you don’t need a registration to to get into court, but the more common situation is There’s an infringer online.

Seth [00:06:55]:
We’re gonna take a quick break, hear from our sponsors, and get right back to the show.

Marc [00:07:00]:
Somebody is on Amazon, Somebody is on Timu,

Seth [00:07:06]:
you know, for good them.

Marc [00:07:07]:
Yeah. You if you wanna take action against them, You’re gonna have a much easier time if you have a trademark registration. It’s easy. Yeah. Copyright, you know, you have a copyright registration. It’s much easier to get things taken down. So you wanna have that protection in place Sooner rather than later because what you don’t wanna do is be out there in the marketplace, Excuse me. Be doing very well.

Marc [00:07:38]:
Mhmm. Have people start copying. Having a

Seth [00:07:41]:
target on your back. He’s saying, let’s go after this guy. Exactly.

Marc [00:07:44]:
And then You’ve gotta wait to get the protection. The paper. Yeah. Right. So you you wanna have that. So If and when it happens, you’re ready to go and ready to take action because Yeah. You can’t get these things in a matter of days.

Seth [00:08:02]:
You can’t. No. It’s nothing but the government, except except for the EIN number is fast.

Marc [00:08:08]:
That, you can get quickly.

Seth [00:08:09]:
That is Seeing how fast you can get EIN number, even if you decide you don’t want it, it’s like you got it. Oh, wow. Okay. That was too fast.

Marc [00:08:16]:
In fact, you can expedite a copyright application. Oh, really? Well, they charge for it. It’s about an additional $800 to expedite it because they don’t wanna do it.

Seth [00:08:27]:
No. It’s a pain in the butt. Yeah. I get it.

Marc [00:08:29]:
So you, you know, it’s much better to get these things done.

Seth [00:08:34]:
Mhmm.

Marc [00:08:35]:
Off the bat, Yes. It’s an expense, but it’s an investment in the company and an investment in Protecting yourself because if you don’t do it right away later on, it’s gonna be much more expensive to address.

Seth [00:08:51]:
Yeah. And, yeah, I’m sure you’ve seen some horror stories where the entrepreneur starts out, get gets somewhere, and it’s less like, oh, man. You You know, now you have to go fight things. You know, like, well, now we gotta file this, and it’s longer. And honestly, lawyers, the longer it takes, the more money that they’re charging you. So it’s like

Marc [00:09:11]:
That’s the look. It’s it’s true if you’re being charged on an hourly basis. No question about it. But, I mean, we’ve had

Seth [00:09:17]:
to find but even retainer. Retainer. I mean, like, you gotta think about that. If it’s gonna be a pain in the butt retainer, you’re gonna charge more because it’s gonna be a pain in the butt. You’re gonna allocate you know, you’re gonna know it’s gonna take x amount of time to do something. Yeah.

Marc [00:09:29]:
It depends on it depends on what we’re doing, and it depends on what it is. Certain things are charged on a fixed fee basis.

Seth [00:09:35]:
Oh, so it does happen. That’s

Marc [00:09:37]:
good. Certain things are charged hourly. If I’m working with somebody, I like to have a very open conversation. This is what we can do. This is what the cost is gonna be.

Seth [00:09:49]:
I think lawyers are always worried about the the the I mean, hourly, even with web design, they’re always like, well, I don’t do hourly for that reason because it’s a pain in the butt for me to keep track of. And The sky is the limit with hourly versus if I say it’s gonna be x. And if I’m a good if I’m good at what my job, it’s gonna stay at x. Even if it goes beyond where I think it should. You know? Yeah. It’s nice to kinda keep things with people like the budget stuff.

Marc [00:10:16]:
Right. And we we try and work with that when we can. Sometimes we can do that, and sometimes we can’t. I like

Seth [00:10:23]:
much of the work is. Yeah.

Marc [00:10:25]:
I like to have, you know, a frank, open conversation about that so people know what’s involved and what’s gonna happen, because otherwise, people get unhappy.

Seth [00:10:36]:
Yeah. I mean, especially when you get the bill and you’re like, wait a second. Right. Wait a second. Right. I know it’s just expensive, and it’s just like, come on. I mean, this I mean, the time is money, and people gotta realize that, you know, since you’re an entrepreneur, Time is money. I mean, if anything, entrepreneurs need to understand that their time is money, so is Mark’s.

Seth [00:10:58]:
You know, and that, like and they had to evaluate, alright, my time, I want to be valued. So, therefore, I need to value the other person’s time as well and realize that you’re not gonna get something for free.

Marc [00:11:13]:
Yeah. It’s you know, like I said, it’s an investment.

Seth [00:11:16]:
Mhmm.

Marc [00:11:17]:
Right? It’s an investment, in the company. And It’s appreciable, isn’t it?

Seth [00:11:22]:
I mean, I mean, it adds value to your company if you would trademark.

Marc [00:11:25]:
Well, I mean, it goes back to what I said before about investors. Right? If you start getting big, you want investors, you wanna scale up your business, you need additional funds, You show the investors that you’ve got IP.

Seth [00:11:39]:
Yeah.

Marc [00:11:39]:
They’re gonna be you know, they may ask you for it When you do that, you go and do your rounds of of investing. They may say, what kind of IP do you have? What do you have? You know, how is it protected? I mean, watch what happens on Shark Tank.

Seth [00:11:54]:
Oh my god. All the time.

Marc [00:11:55]:
Yeah. Right? I mean, they ask, you know, they ask for, do you have a patent? Do you have a trademark? What do you what do you have?

Seth [00:12:01]:
The house is protected, especially now that now it’s really disclosed. Now it’s really out there.

Marc [00:12:06]:
Yeah.

Seth [00:12:06]:
You better than we’ll have a trademark or lease on your stuff if we go to Shark Tank.

Marc [00:12:10]:
Yeah. You’ve gotta you’ve gotta have something. So it’s not

Seth [00:12:13]:
Mhmm.

Marc [00:12:14]:
You know, they’re if they’re asking for it to to make an investment, other people are gonna ask for it too.

Seth [00:12:19]:
Yeah. So in your mind, what is the best steps for a entrepreneur to do? Obviously, Get your Bills Business LLC or inked or whatever that you know, get it, you know, incorporated in some way. But then do you think the next step is get your your all your stuff trademarked, copyrighted, like, next step or, like, what do you think?

Marc [00:12:40]:
I think for I think once you’ve got As you’re forming your company, start talking to an IP lawyer. Yeah. Start start talking to 1, talk to them about what you’re gonna do, What your plans are, and let them, work with them to come up with a plan for how you’re gonna protect. Think about what markets are you interested in? Where are you gonna manufacture?

Seth [00:13:05]:
Oh, that’s a big one. Especially if you’re in China, you wanna then you wanna dream you wanna be you know?

Marc [00:13:09]:
You want you want protection where where you’re gonna manufacture because there are situations where the manufacturer goes in and registers somebody else’s Trademark it says, oh, we were doing it to protect you, but then they’ve got the trademark

Seth [00:13:24]:
and It’s not a deal.

Marc [00:13:25]:
Make a mess out of things. They could make that product bear with that mark and sell it to somebody else. And Exactly. Or do

Seth [00:13:32]:
it in their market or go on T Mo.

Marc [00:13:35]:
Right. You know? So the 1st step is really to talk to a trademark lawyer. You come up with a trademark. You wanna make sure you get an opinion that it’s clear. Yeah. I I know I’ve

Seth [00:13:46]:
talked I’ve talked to some people, and they’re like, Entrepreneurs’ Enigma is, like, so not worth trademarking because Entrepreneurs Magazine will come after you. So I’m like, alright. Yes. So I’m like, you know, I looked at it real fast. I talked to an attorney. You know, at that point, we weren’t I was talking to you, but, you know, I didn’t talk to you. But, you know, it was like Yep. Entrepreneurs’ name was too broad, and I’m, like, you know what? If someone comes to me and says don’t use it, I have, entrepreneurs comes to me and says they wanna use it.

Seth [00:14:10]:
I’m, like, whatever. There’s certain there’s certain things this this like, I did I I remember back in the day, I was gonna do Skunk Works. Yep. Social media Skunk Works. Now if I wanted to fight it with Lockheed, they don’t have a stand on from what I heard because everyone’s using Skunk Works for different things. It’s almost in the colloquialism. Right. But they they sent me this cease and desist, and I’m like, you know what? I didn’t even start the project.

Seth [00:14:33]:
I bought the domain name. I gave them the domain name. I said, go have fun with it. I’m like, get get lost. Thank you for getting to me first before I got some things running. I mean, they were there. They were a little dickish about it, though. They were on the very nice about it.

Seth [00:14:46]:
I’m like, you know, You guys said please, and I would’ve given it to you in a heartbeat. Like

Marc [00:14:51]:
Well, you know, sometimes you need

Seth [00:14:53]:
to not. They’re used to people fighting, not

Marc [00:14:56]:
I was gonna say, you don’t you never know how people are gonna react. Mhmm. But, you know, you wanna find out before you adopt something, Are you gonna have trouble?

Seth [00:15:08]:
Yeah.

Marc [00:15:08]:
Are you gonna have trouble from a third party? You know, and go getting through the trademark office is not always slammed the ball.

Seth [00:15:17]:
Yeah. It’s the government.

Marc [00:15:18]:
You know, there are things that can come up, and you you wanna know if you’re gonna have problems because those problems mean spent money.

Seth [00:15:25]:
Yeah. And might even have to do stuff with. Exactly.

Marc [00:15:29]:
So if you can talk to an attorney, have them do a search, Tell them tell have them come back and tell you, is the mark clear? Can I can you use it? Are you gonna run into problems in the registration process? You know, there’s a cost for the search, but, again, it’s

Seth [00:15:48]:
Yeah.

Marc [00:15:48]:
In the long run, it may it may wind up saving you some money and some aggravation.

Seth [00:15:53]:
One thing I did, I did check. I had someone do a search for me on Entrepreneurs’ Name when they’re and they’re like, if Entrepreneurs Magazine wants to get litigious, they can, and then just Give it to them, but most likely they’re not because entrepreneur is just a broad term as it is that, you know, they’re probably gonna and you’re such a small fry. They’re, like, whatever. If anything helps, they’re honest. I I personally think they helped their brand. So they might be otherwise, but you never know.

Marc [00:16:22]:
Right. Right. But, yeah, you know, it’s but it’s, You know, so that’s what it back to your question, that’s what I would say. That’s the sequence I would I would do thinking. Get that get it started early. Even if you wait to do certain things. Get started early so you have a plan and you know what, what steps

Seth [00:16:43]:
Check the mission that the market’s fine. Like, with Colston Media, we checked the Pennsylvania. We checked internationally. I mean, it’s Colston Media Group, And but the they’re registered in in California, and they’re a lawyer. Okay. They have nothing to do with web design, and and I and back back in 2007, I talked to an attorney. They’re like, Don’t worry about it. You know? As long as you’re in Pennsylvania, you’re fine.

Seth [00:17:05]:
Like, it wasn’t taken in Pennsylvania, your LLC, your whatever. You’re not going for investment, and it’s like, fine, whatever. Backed up and just kinda ran with it. So Yeah. But trademark wise, the logo is something, you know, always something that’s trademarkable. You know? Hey. Hey. Hey.

Marc [00:17:20]:
Hey. Well, that’s that’s something we can talk about, but, you know and and all these things are can be talked about. And, you know, one thing to keep in mind, this is For later on Yeah. I wouldn’t I wouldn’t start with this. Trademarks are not limited to names or logos. Almost anything can be a trademark. You can have color. You can have color as a trademark.

Marc [00:17:45]:
Wow. You can have, product configuration is a trademark. You color, think Tiffany blue. Product configuration, think the coke bottle.

Seth [00:17:56]:
Yeah.

Marc [00:17:57]:
You can You can even have a scent. Hasbro I believe it’s Hasbro has a trademark registration for the scent of Play Doh.

Seth [00:18:07]:
Ew. I guess they have too much money to to spend at that point. It’s like, ew.

Marc [00:18:15]:
I I can’t say why what prompted them to get it, but they do have one.

Seth [00:18:20]:
They have money, so why not at that point? You know, like, this kinda smells interesting. Kids don’t like to eat it, thank god, or they do, you know, still.

Marc [00:18:27]:
Who’s on the kid?

Seth [00:18:29]:
Exactly. So, Mark, where if they wanna find out more about, you know, trademarking, all that. Where can they find you? And we’ll have the links in the show notes, but, like, let’s where’s your hangout of where where do you hang out the most online?

Marc [00:18:39]:
Right. The LinkedIn.

Seth [00:18:40]:
Yeah. What what a surprise. If you said Facebook, it’d be like, excuse me? Now the LinkedIn, LinkedIn, off off atkerman .com. Don’t try I’m not gonna have you spell it. It’ll be in the show notes.

Marc [00:18:53]:
Perfect.

Seth [00:18:54]:
But this has been so great, Mark. I’m so glad to get you on. I’m glad that, you know, because a lot of these entrepreneurs come on here and they’re like, I’m just starting. And I’m like, well, I’ve been here, but, oh, no. This happened and the the headaches and stuff. Yeah.

Marc [00:19:06]:
So let I’m gonna say 2 things. 1st, thank you so much for for having me on. Much much appreciated. I certainly enjoyed chatting. And, You know, working with entrepreneurs is fun. I mean, there’s all sorts of really interesting stuff that that people are coming out with and people are thinking up, And I always like seeing the creativity. Mhmm. And You help to protect it? Yeah.

Marc [00:19:30]:
And I I wanted you know, my job is is to protect

Seth [00:19:34]:
it. Absolutely. And that’s great. That’s a great place to stop there. And guess what? We’ll see everyone next time.

Marc [00:19:41]:
Thanks, Seth.

Seth [00:19:42]:
That was a great show. If you’re enjoying Entrepreneur’s Enigma, please view us in the podcast directory of your choice. Every review helps other podcast listeners find our show. If you’re looking for other podcasts in the marketing space, look no further than the marketing podcast network at marketing casts.net.