The E-commerce Leader

[00:00:31]Michael: [00:00:31] intellectual property. It sounds like the abstract preserve of intangible products or something for the lawyers to work, worry about while we get on with running our e-commerce businesses. But we hope to convince you today that it’s a very powerful form of property you should look to own. And your e-commerce business, both for defensive and sort of brand building reasons.
[00:00:48] Intellectually property can be incredibly valuable. Famously. Michael Jackson bought the rights to the Beatles, some catalog from Paul McCartney in 1985 and $47 million. And by 2016, that was valued in a Sony dealer, $750 million, basically for a lot of sounds that form songs well, that’s all very well in the abstract world of music.
[00:01:07] Is it relevant in e-commerce when we mostly own physical goods? Jason in the introduction to your excellent book, e-commerce power. You talk about dominating a niche, being like owning a valuable castle, and you want to surround it by mozzarella with sharks and Anaconda snake. So in other words, owning a valuable piece of property or real estate and then vigorously protecting it.
[00:01:26] So intellectual property, I think has two really powerful functions for our business. It’s a powerful form of everyday defense against Raiders to protect what we’ve built. And it’s also a form of property that can in the right circumstances have value in and of itself. So I think it’s both a wonderful asset glass.
[00:01:40] That’s mostly ignored and a defensive strategy. And the fact that it’s mostly ignored even amongst otherwise. Pretty savvy seven and even eight figure e-commerce business operators tells me that there’s a great opportunity there that other people are ignoring. So Jason, are you ready to plunge into this?
[00:01:56] And do you love IP in your bids?
[00:02:00] Jason: [00:02:00] I am ready to plunge into this. I do love the topics of intellectual property and I’m really looking forward to the conversation, and just want to make sure everyone is, is, dialed in with us and thinking about this. And I, I know. I generally speak to broad it or e-commerce topics and, and Shopify site owners and brand builders, that kind of thing.
[00:02:20] And you’re very, very focused with your clients on Amazon sellers. Hopefully in this conversation, we can marry the two together and really talk about it from an Amazon seller point of view, what it means for that use case. And also then brought more broadly in terms of, you know, building business assets and that kind of thing.
[00:02:37] So, yeah, I’m really excited about the conversation. Let’s jump into it together, man, lead us through your point of view on this stuff, and then I’m happy to, to jump in as well.
[00:02:46] Michael: [00:02:46] Yeah, well, I suppose the first thing we should do is define what we mean by intellectual property. Now, my understanding is that there, and again, I should preface everything by saying I’m not a lawyer.
[00:02:53] I’m not legally trained on the son of a lawyer. So I’m like even more wary than most people about giving out an unsolicited legal advice. So if in doubt, please consult a professional. I’m hoping to convince you that it’s worth consulting. One is probably my starting point. So having got that out though, well,
[00:03:07] Jason: [00:03:07] let me just tack on at the very top of the show, then a little recommendation, Google around and find an intellectual property attorney in the nearest metropolitan area to you, Michael you’re in London.
[00:03:18] So it’s not an issue for you I’m in Seattle. So it was very easy for us to find a wonderful IP attorney. Her name is. I’ve actually referred her to people in the U S before that don’t know an IP attorney, but the simplest thing is find one in your lo local metropolitan area that you can chat with a use for the legal process steps in various situations.
[00:03:41] And I think that’s a key thing is don’t depend on Google for your real intellectual property attorney needs. You’ll find one locally and have a real conversation. So there you go. That’s my,
[00:03:52] Michael: [00:03:52] I would also say don’t depend on podcasts including this one, and really please don’t go to Facebook groups. If you’re an Amazon seller for tax advice or legal advice.
[00:04:01] I mean, that’s just a dumb idea. I mean, if you’re going to get advice, get it from a professional. So this is a spark to your. You’re thinking right there. Having said that let’s, let’s get to it. So I think there are three main kinds of my understanding there’s trademarks, which is probably the best well-known, but there’s a little lone nuance about the differences between the designer utility patents, which a lot of people aren’t clear about.
[00:04:21] The second one is copyright, which is probably the easiest to deal with the least expensive and the least use. So Robert Wright, who came in to talk to him, the mastermind on Wednesday is a big, big fan of using copyright. And it’s, if you’re in America, I’m very jealous because you have a fantastic system there for registering it.
[00:04:37]And the third time is, is patents. I’m sorry. I’ve got this muddle up. Let me just try that bit again. Patterns. Pages. Yeah. You can say it both ways, right? So the three forms that intellectual property takes in my understanding are trademarks. This is basically, if you’re going to get a register, a name or a brand, that’s probably the best known, particularly for Amazon sellers, because they’re frankly got their marketing head on first and foremost, and they want to get access to brand registry and A-plus content.
[00:04:53]Then there’s copyright, which is probably the most ignored and is the easiest to use to take other people down. If they’re copying your property and in the U S you have fantastic system for dealing with it. I’m very jealous of, and then the third one is painted or patents people like you about him, how to say it, which is the most expensive and takes the longest.
[00:05:10] So probably the least attractive, but also underused in the right situation. So those are the three forms I understand there’s a fourth form, which is, a trade secret, such as Kentucky fried chickens, famous herbs and spices. But that’s pretty unusual, although it does come up, if you’ve got topicals and you’ve got a unique formulation to a cream that you put on skin, et cetera.
[00:05:29] Yeah.
[00:05:29] Jason: [00:05:29] There’s other weird nuances. Like trade dress is a thing. Trade dresses like your color palette and scheme and that kind of thing. But those are nuances that are very, you know, fairly uncommon. But the big three that you mentioned, I think are great for us to talk through and help everybody understand a little bit more about them in today’s show.
[00:05:47] I love that. So registering your name or your brand and the U S it might be different than in the, in the UK. So let’s talk, is that the first one you want to talk through?
[00:05:56] Michael: [00:05:56] Well, I think it’s important to really be clear about why we need to bother with intellectual property in the first place. So I’m not going spend long on it, but it’s, it’s often the sort of thing that people are very busy.
[00:06:05] They’re Amber operators, and it gets left because it doesn’t feel urgent, but I think there were three main reasons. And then one extra one for Amazon sellers. So the first reason is to protect yourself against spirits, allegations of infringement from others. And that is not a thing that may happen day one day, if you’re selling in any kind of visible category, whether it’s ranking on Google selling stores, Shopify, or an Amazon.
[00:06:26] That’s going to happen and it’s going to happen with increasing frequency. The more you sell and the more visible you are. So I really think this is incredibly important. If you get your IP, sorted properly, it could be back in days of your listing gets taken down by Amazon. If you don’t have that, you could be suspended for months and that’s a huge hole in your revenue.
[00:06:42] So it’s really a serious thing to get onto straightaway and not leave the rest.
[00:06:47] Jason: [00:06:47] Do you have any funny examples of that? I have a few that I could mention that they’re just cautionary tales.
[00:06:54] Michael: [00:06:54] I’ve got a couple, but I don’t know if I’ve got anything. Very cool. If you’ve got something let’s let’s
[00:06:58] Jason: [00:06:58] hear it.
[00:06:58] Well, I there’s, I don’t think they’d mind me saying this everything’s probably public information, but you know, there was a charity that I was, I interviewed with them and didn’t end up working there, but it was, it was called Lifewater. And, I remember during the time of the interview there, California charity and, you know, they do well drilling around the world and that kind of thing.
[00:07:19] But at the time of the, my interview, when I was interacting with them, I think it was Pepsi Cola company had come out with. Water product line and it was all called Lifewater. And so they immediately were very concerned and it turned into an intellectual property, question. And so they, I think that, you know, it was interesting because they had to immediately get schooled up on what was legal, what wasn’t legal, what, what standing they had.
[00:07:49] And it was a situation where I think it was, I think, fair to say, relatively small, you know, organization who saw a massive giant company come in and use their exact same, name. And even the logo was very. And the question was, what is our rights? What is Pepsi’s rights? You know, what just happened to us type thing.
[00:08:11]And so the legal stuff mattered, in that situation. And they had to learn it in a defensive posture or reactionary, posture, and mode versus knowing upfront where, where, you know, we’ve got. You know, our, our, our, terms and, and, brand and all of that stuff on lockdown. We know we have it defensible in the certain specific use cases.
[00:08:33] And, so that, that was an interesting one to me. I think there are a lot of, use cases for registered brands in the U S that you have to understand how it works, and what the law does mean. And if you’re just new to e-commerce and you’re just setting up a brand, you just have to learn this stuff so that you understand what, what is the system or process by which this occurs what’s legal, what’s not legal so that you don’t break the law, but also to your point, so that somebody doesn’t come in and, and take away something that you thought was valid.
[00:09:01] For you when in fact maybe you didn’t own it, you know? So yeah. Well, that’s,
[00:09:05] Michael: [00:09:05] I guess it’s related to the second reason that I think it’s really important to take this seriously from very early on, which is to protect yourself against other people stealing your intellectual property now. Okay. Perhaps he called us a bit of an unusual one.
[00:09:17] Most of us were come across a family that, something that giant. But it’s, it’s often the case that quite big sort of medium sized company, not, she just, perhaps you will come and alleged infringement of, of, it could be, patients could be trademark, could be copyright, could be all three. In fact often is more so, that’s one reason the other one, is it more common that you go to say Alibaba and you see that somebody is using images or that you get to Alibaba and they’re using a cop, product that you actually had a patent on.
[00:09:43] And if you’ve got a patent and a copyright, you could use either or both to take them down, which would mean that Alibaba would take it very seriously. And by the way, Alibaba is actually. Part of it anyway is American base. So they will actually follow us, intellectual property law, perhaps to your surprise, but also delight.
[00:09:58] So that’s one example. So that, that again is a very common thing in the Amazon space. And I think just generally in commerce.
[00:10:04] Jason: [00:10:04] Yeah, no, totally agree. And that’s the big, you know, that’s the huge challenge, but the nuance here is some stuff you think might not be fair is actually legal and some stuff that you think might be a legal.
[00:10:17] That you’re doing is actually copyright infringement. So you just have to learn the rules of the road. It’s like learning to drive a car. Yes. And driving a car in Britain is very different than driving a car in Seattle, Washington. So you have to learn the rules of the road. And I think that’s the whole point here is you’ve got to learn the system so that you can understand what is, how to use it and, and how other people can use it against you as well.
[00:10:39] Michael: [00:10:39] You know? Absolutely. And I think you need to learn, this is what I hope to get out as part of educating, e-commerce leaders is understanding the basic legal principles. That doesn’t mean that you shouldn’t also consult an attorney, but if you have an understanding of the principles that drive it, just as you have understanding of the principles to drive finance, but that doesn’t mean you don’t speak to a tax lawyer.
[00:10:56] That then what it means is you can start to think in a legally valid way rather. That’s not fair, which is, as you say, fairness and what they call natural justice and law, don’t always coincide. So the third reason to, to get this right is a longer term one. And for a lot of people, it’s hard to get your head around.
[00:11:13] Again, you’re dealing with this month’s problem or today’s firefighting, but it’s, it could be costing you millions, which is, locking the sale of your business. If you haven’t got this stuff on lockdown or due diligence to the boring part where the paperwork and, books needs to be order, I’ve heard of a $2 million business sale being stopped by lack of documentation of some, copyright from some person on, I think pro Upwork five years ago, that was one thing that Robert mentioned a member of the mastermind recently been selling his business and he said it almost, stopped the sale because of an issue around intellectual property rights as well.
[00:11:41] So again, if you’re going to be making a sale worth several hundred thousand or million or more, it’s a bit silly to not spend a couple of hundred bucks on some very simple, copyright, You know, tying up or something more expensive, but that is intrinsic to your business. Like the formulation of a face cream or something.
[00:11:57] It’s
[00:11:57] Jason: [00:11:57] really interesting, you know, I mean, the question is what will motivate us to do this hard legal crisis? It’s either there’s only two motivators, man. There’s either, hope for gain or fear of loss. Right. And, and that is, that’s really interesting that, you know, I think the diligence part of being ready to sell your business is, yeah.
[00:12:19] Is a key factor. If you think you want to sell, then going through that list of what do I do? Control and ownership of that. I do need a document to make sure someone else can say, oh, you own this. Yes. Now I’m buying it from you. Okay, great. Rather than saying, do you really own that? And am I really buying it from you?
[00:12:35] Yes or no, I’m not sure. So I’m going to slow down the sale or, oh, that’s
[00:12:39] Michael: [00:12:39] normally, it’s not so much a question of slowing down the sale it’s in, in some cases, especially the more risk averse buyers it’s simply stopping the sale. That’s what I mean, it’s, it’s, it’s for want of a nail. The, the battle was lost, you know, as, as we say in that, that English phrase, you know, I would say it’s, it’s a really foolish reason, not to got it sorted, but also more profoundly.
[00:12:56] What is it you’re actually selling? It becomes very, it seems very, very abstract until you come to sell a business. And that’s why I think every single business owner, even if they intend to pass the business onto the grandchildren, and we’ve got a couple of businesses I’ve worked with, I’ve literally done that in the past that they are like the great grand sons of the founders, et cetera.
[00:13:14] But nevertheless, you should be clear about what it is you own and your business owns, because if you’re not, that means you’re vulnerable to people attacking you see 0.1. So either which way it doesn’t matter which way you slice it, you need to be clear what you own and you need to be able to prove it.
[00:13:26] And then it’s very quick and easy if there’s a problem. And if it isn’t, then you’re creating a potential, you know, muddy mess for yourself that could drag out for months. And ironically is going to cost you a lot more money as
[00:13:36] Jason: [00:13:36] well. Yeah. Yeah. Well, I love this. Let’s keep going through this now. Also just want to mention for our audience that is, is, watching what this live, pop in, questions underneath this, this video, wherever you’re watching it on.
[00:13:46] Any questions you have about this topic so far and things that you want us to talk about as we go forward. So Michael, take us deeper into this. What do you think is the first area that we should focus on as small business owners in this regard?
[00:13:59] Michael: [00:13:59] Good question. So I’ve got really two answers. I mean, broad answer, I think is probably the most valuable, which is Robert Wright, who I think is my favorite person to talk about this.
[00:14:06] I know a couple of very good lawyers who specialize in intellectual property for e-commerce, but, the other one being CJ Rosenbaum also very good, but Robert’s got a nice knack. He’s from Kentucky, he’s got a nice relaxed manner. He’s got a fantastic Nat for keeping it very simple. And he says that the best mentality is to think about wrapping anything by Libra, you own, whether it’s a product, an entire brand, or even a piece of packaging you put time and effort into in multiple layers of intellectual property.
[00:14:28] So to your metaphor, Jason, if you’ve got a valuable little castle, even if it’s a very small one, you want to surround it by moats and put anacondas in your moats. So, that means really you probably want to sit down and, and talk over it, with a lawyer. But I think, you know, there’s no reason unless you.
[00:14:44]Cost is, is a big factor that you wouldn’t, if something’s truly valuable wrapping as many layers as you can. So, just to give a flavor of the cost, if you’ve got a product that is giving you a sales of say, you know, a hundred thousand dollars a year and maybe even a profit of 20, and you expect the lifetime of that to be.
[00:14:59] You know, three years or something like that, maybe more that’s worth $60,000 in future revenue T or sorry, profits. So I think it’s very justified to spend 1500 to $2,000 on a design patent, which I understand from Robert is roughly what it would cost in the U S and it’s probably easier in the UK because it’s a smaller simpler system.
[00:15:16]Maybe a couple of hundred bucks re registering the images of that product. And then you could, even if you have a separate trademark around that line within the overall branding for business, then trademarking that for maybe a thousand dollars. If you go to a lawyer in the U S or something. And so maybe invest three, three, 4,000 in order to protect 60, that feels to me like an excellent investment in India.
[00:15:36] If you think in those terms, in turning it into numbers, I think then it starts to make a lot of sense. So that’s a broad brush answer, I guess, but I think that’s the way to look at it.
[00:15:45] Jason: [00:15:45] I think that makes a ton of sense. And the weird part about this whole system is you can kind of get away with stuff and you can kind of do things that aren’t actually technically.
[00:15:57] I’m not saying it’s not legal, but you can, for example, many people have just made up a name, started putting on unpackaging, started selling it on Amazon and you don’t actually own the intellectual property associated with that brand product. Now, if you’re not brand registered on Amazon, you don’t care until you want to be registered.
[00:16:16] And then you realize, oh, I need a registered trademark. And so that registered trademark piece becomes real at that point. And I think that’s the key key thing is these things become real when they’re necessary to you. And it’s a weird environment in which you can kind of. Play business and make believe in these spaces and make real money on the back of non-documented non legally put together process.
[00:16:39] And it just creates a weird environment where you can ignore it a little bit. And that’s the caution is that would people would ignore this stuff until, until it becomes a real problem, it comes back and bite them. So, yeah. Yeah.
[00:16:52] Michael: [00:16:52] As you said, it comes up to your motivation of what I would say is. Yeah. I mean, certainly with lawyers listening, be holding their head in her hands and saying UK and us have a common law system as well as a statute based system.
[00:17:01] So trademark for example, is something called trade dress. You mentioned earlier my understanding, and I’m not a lawyer talk to a lawyer if you need to, is that if you sell a product and a type of packaging and a brand name for long enough, then under common law, it’s obvious that, it’s, it’s about the origin really, that you’re not trying to do penny one, that this is definitely a product made by, you know, visa incorporated or, you know, miles’ wonderful widgets or whatever.
[00:17:24] And if somebody else were to use miles, wonderful widgets, they kind of be expecting your widgets, not somebody else’s. So there is a bit of common set there’s where common sense and common law do often over intellect. The trouble is common law in both countries. As I understand it is based on legal precedent, which is judges making hopefully sometimes some common sense and sometimes less common sense decisions, which then get used by other judges in future.
[00:17:44] But that gets very messy and. And people that start reading for law books. And then it’s up for argument. What I think is great about registering staff, which I think as I understand it is more possible in the UK and the U S sorry, overall than in the UK, is that it’s written down by government office.
[00:18:00] That’s gone through a process and pretty much, everyone’s going to take that seriously. It’s going to be quick. It’s going to be clear and it’s going to be unarguable, or at least fairly unarguable relative to that. And I think that’s the point is documentation, by a government agency is, you know, the biggest club you have in your bag to defend yourself really.
[00:18:16] So
[00:18:17] Jason: [00:18:17] registering your brand is the first thing to focus on if you’re operating under a brand. And that means if you have a domain name that you use, or a name of your product, that you’ve gone to market with on Amazon, you want to, you know, have that be a registered brand name, the, the process of. You know, several times now in the U S generally speaking for us, it’s taken about nine to 12 months.
[00:18:40] And, you know, I think 12 to $1,800 was sort of the range we paid. We always felt like it was wiser to go through an intellectual property attorney than to just use the boiler. Paperwork system tools that you can find on websites, you know, but, but you can use tools and automated systems. The problem is if you do that for registered trademark in the U S at least there’s a period where other people can challenge what you’re doing and you have to respond.
[00:19:08] And those are the moments in which you want an intellect property attorney, because you’re like, what is this? How does this work? And an IP attorney will be like, okay, this is how it works. This is what we do right now. There’s a process. And so, anyway, so that’s sort of the, the registered brand, you know, thing now, technically in the U S and not how it works in the UK, but technically in the U S when you apply to have your brand registered, you can use the TM symbol.
[00:19:34] Yeah. And then when you receive the registered trademark status from, the U S pto.gov, a website, then you get the R symbol that you’re supposed to use the registered trademark.
[00:19:51] Many people use the TM because they’ve seen other people doing it in practice and don’t ever actually realize it’s tied to sort of a, it’s a, it’s a symbol system tied to a process, in the U S and, but anyway, so that’s nuance, but I neither here, no.
[00:20:06] The point is you want to go through the process and learn how it works?
[00:20:09] Michael: [00:20:09] Yeah. Yeah, definitely. I would say there is a case for not using a lawyer at a certain point. And I would say that’s, if you’re starting off with a brand new product line and you don’t have a big budget and it’s not got proven value yet.
[00:20:20] I mean, that’s, there’s, there’s arguments. If you’re in the U S I would be more inclined to use a lawyer because it’s a much more complex legal system in the UK. It’s a fairly straightforward place. And you could trademark something for about 200 pounds or $250 plus maybe 50 pounds per class. And we’ll talk about what class means in the second one, your understanding of it.
[00:20:38] And mine might be different because we’re not lawyers, but it’s pretty inexpensive. And if you’ve got a product going out there, you’ve done your due diligence up front. At least you’re not going to get sued by somebody or an allegation. And you’re using somebody else’s trademark, which is important. And then if it proves valuable down the line, I’d probably get a lawyer to double check your work.
[00:20:56] But I would say that if you’ve got an established brand that’s valuable, I wouldn’t mess about with that. I would discuss.
[00:21:02] Jason: [00:21:02] So you mentioned classes. Do you want to talk through that a little bit? Just the nuance there. So.
[00:21:06] Michael: [00:21:06] So my understanding is, is that there are, I can’t remember how it is at 40 classes in the U S and something like that in the UK.
[00:21:11] Maybe it’s 35, but it’s probably going to change in a couple of years, in a way, the nature of these things. And broadly it relates to the type of products that you’re selling. So if you’re selling, you know, kitchen where it’s not going to be the same as software, which isn’t the same as legal services, obviously.
[00:21:24] So, you’ll end up in, probably want to do two to register in two, three or four classes where you even think you might have a challenge from a similar country company. So there’s a sort of gray area. So if you’re selling cookware, but it could be used in the garden. I don’t even know if they’re separate classes, but for example, you want to just cover all the common set spaces and don’t be too stingy about the fact that maybe if you’re using a lawyer, it costs you a couple of hundred bucks extra to register for another class or something.
[00:21:51]I think you should be generous as it were, and, and cover as many classes as you think you can claim. And that gives you the broadest protection.
[00:21:57] Jason: [00:21:57] Yeah. That’s where it can really become a confusing and there’s nuance, you know? So I always use the. The example for people who are familiar in the U S probably with a school called old dominion.
[00:22:08] And then there’s a trucking company called old dominion. Well, a university and trucking companies, same exact name, completely different industries. And so that’s the way in which you think about the registration of trademarks. Now you can register in different classes of business, if you’re going to operate in them.
[00:22:26] And the question is, are, you know, are you in a category that’s similar to a competitor when you go through the process? That’s what a lot of the attorneys are looking for is, is there a name structure that is in our class that. Too similar or identical. And when they’re identical, it’s obvious, but when they’re similar, then they can, there’s still process for that old established company to say, what’s happening right now.
[00:22:52] So that’s, the classes are sort of the nuance of how to do the red shirt, trademark process, and, and it’s something to learn about and understand. And that’s where, you know, people can get confused about what’s legal and what’s not legal. I had a funny, funny example of this. We, we, I think I’ve said this in another podcast.
[00:23:12] There’s where it cracks me. It always cracks me up is, we had this, we, we name all of it. Outfits when cinnamon does a design, will she’ll name it something, you know? And so she has this whole Australian line of Outback clothing. And so she had this one, design and we called it boomer at falls.
[00:23:30] Cause that’s a, that’s a, like a waterfall, nowhere in Australia. And we looked at a map and named it boomer. It falls. Well, I got connected by the sky one. In Australia who was so, adamant that, he was going through the process of registering his it company for boomer, for baby boomers. And he was calling it boomer it, and boomer.
[00:23:55] It is boomer. It, which is the name of this waterfall is the same. You are w you don’t want to use the same URL. And he was convinced that I need to do something different, but the problem was we had done that work like a decade early, and it was all over the internet. The internet was insane with our use of the phrase, boomer at falls for this design idea.
[00:24:16] And he was demanding that I like stop using this phrase because he was not even sure he didn’t even own it. He was just going through the process and it was so comical to me. I said to him, you know, first of all, that’s impossible. Second. Are you an attorney? I was like, well, I said, no disrespect, man, but that’s not how any of this works.
[00:24:38] And you know, so it was, it was, hilarious example of number one, don’t act like, you know what you’re doing, if you’re, you’re not an attorney and you don’t know, cause it’s one thing and just your own country, like in the UK, you know, something on the U S you think, you know, something. But if you try to go international with this stuff, it gets a particularly thorny because there’s different rules in different places.
[00:24:59] So all that to say, these, these CA classes become a, an important part of it and understanding where people have rights and where they don’t have rights and where you have, you have rights and where you don’t have that. Yeah. Anyway, long story. You’re saying it’s
[00:25:10] Michael: [00:25:10] important. What I would say also in a couple of places, one of the things with, I P I’ve been going through the process with a client, who’s got a new business, so he’s not trading yet, but it’s still been interesting to us that the more I learn about this stuff, the more I get to go through the trademark process earlier and earlier in the process these days.
[00:25:25] But sometimes if. It doesn’t permit to do DIY, trademark registration in the UK. I did, I have to say, I did send this chapter talk to a couple of lawyers first, so I feel okay about that. But, he made his own decision, but what I would say is two things. I mean, first of all, you want to probably avoid any gray areas.
[00:25:40] So have you sell homeware on your cards, marvelous products, and somebody else sells on a garden furniture called marvelous products. For me, that’s too close to comfort. I would just change the name if I had a chance upfront. And if, if I discovered there was a place called boomer falls and I hadn’t been selling for 10 years using that brand name, I’d probably choose something different.
[00:25:56] So that’s the first thing. Just avoid any sort of near brushes with things that are similar enough in category or class that they might conceivably cause a problem. Because even if you can see them off, that’s going to cost you lawyers fees as a distraction for operating or business. The second one is nothing like is nasty or defensive, but is called descriptive.
[00:26:14] If your brand name, for example, if you sell quality homework products, you probably can’t call your brand. Quality home wear because that’s just a description of the products. And then the UK, I’ve seen quite a few rejections of trademarks on that basis. It’s not something that the UK authorities are going to really shake a big stick at you about, as I understand it in the U S they will just reject it and tell you why.
[00:26:31] And at that point, you probably do want the lawyer in your back pocket, but the best way round that, that Robert writes very fond of is simply making a name up. That sounds like a name, but isn’t anything. And therefore it is genuinely unique. The downside is that it might not feel very descriptive of the products for the consumers.
[00:26:46] So there’s a bit of a balance to be struck there in terms of brand naming
[00:26:49] Jason: [00:26:49] yep. Totally agree with everything you just said. It’s really wise to come up with a novel thing. And, in the, in the e-commerce power book, I use this example where it’s like Ray’s ice cream. With a Y and Ray’s ice cream with an Rae and, and a few other variants. And the question is what’s legal in, in your, in your mind, you say to yourself, it, can I have this be my name, but the truth is all of those.
[00:27:13] Failures, because it’s just not unique. There’s no novelty. And so what you want to do something that is novel compound words, where you can combine two words is a good strategy. As it, as you, you just mentioned, neologism is that, you know, a new word where you make it up. And those are all really, good ideas.
[00:27:34]And, and it is hard. It, it, you know, it is hard to come up with something new I’ve many times I’ve tried, come up with a brand name search locally in Washington state, and there’s already a business called that and then searched, you know, for, trademarks or just broadly on the internet. And then you find out, oh, 22 people use this already, or they’re all fighting over this phrase.
[00:27:51] Like, I don’t want to be the 23rd person battling out for this, this name. And so it can be very. And, and, but your advice is super sound, which is avoid similarity. And if you have something that’s similar to something else that’s already out there, start over and come up with a novel, unique
[00:28:08] Michael: [00:28:08] thing. Yeah.
[00:28:09] The thing is, some things are worth fighting over and spending money on lawyers to defend. But, a mediocre name is probably not one of them. So unless you’ve been trading on it for 10 years, in which case, I guess you’ve made your bed, you’re going to have to lie in it. But if you have a choice, then I would, I would consider changing that.
[00:28:23] So we also talk about brand registry because it’s, it’s one of the most, you know, for Amazon sellers. And I know it’s not relevant to Shopify, so I’ll keep it brief. But, one of the reasons that you want to get a trademark and frankly, most people do that is to get access to A-plus content, but also a brand registry also means you get it, you get access to Amazon’s, system for kicking, trademark it or anything.
[00:28:44] Intellectual property, infringes more alleged ones off the platform. And that’s twos that, that goes two ways. If you’re going to sell on Amazon, you absolutely should get on with brand registry because then you could do the same things other people would do to you. But equally in that environment, you kind of basically they’ll shoot first and then ask questions later.
[00:29:00] And the reason why is because I understand that the DMCA, the digital millennium act meant that Congress said that that marketplaces like Amazon or eBay are not liable for IP infringement, if they act promptly. So that means that basically alleging that somebody made IP allegation. Means that they act as if they have, and then it’s kind of up to them to prove their innocence.
[00:29:19] Now, if you’re on the other side of that, once again, having documentation of everything possible, copyright included is, is a really smart idea. So to get done with that, you basically need to do one of two things. If you’ve got a UK trademark, you can get access to brand registry for A-plus content and the brand analytics, which are very valuable, but you want to be aware that it will not protect you against IP infringement claims.
[00:29:42]So in the end you have to, if you’re going to sell in the U S you want to get a us trademark and this entity selling a UK, get a UK trademark as well. Sure. So I think you had some good hacks for getting through that reasonably quickly. What are your thoughts on that? If
[00:29:52] Jason: [00:29:52] you know? Well, I mean, I, all I know about Amazon is what I hear Kyle talk to all our coaching kinds about when we’re in our joint calls with our coaching clients, that a lot of folks that we work with are fantastic, Amazon sellers.
[00:30:05] And so this whole process, I think, is very. Helpful now that Amazon is basically created a system by which if you haven’t gotten a registered trademark, you can, as I understand it, correct me if I’m wrong or go, go research it yourself. But, Amazon has a process by which you can basically go through their system to apply for your registered trademark, with, attorney groups or whatever law firms that they’ve vetted and validated.
[00:30:28] And they give you basically a fast track to, to, to be brand registered. If you’re in the process with a vetted firm, they use super helpful. Super, super nice. Now, again, I’m not an expert on this, but go, go check it out. But, that’s really a nice, fast track to get, the A-plus content unlocked and all that kind of stuff.
[00:30:46]On Amazon, if you haven’t gone through a traditional registered trademark process, you know how you can speed it up beyond that? I don’t know. I’ve always done all my registered trademark stuff outside of that. Amazon universe. It was never my, my area of focus when I was doing it. And, at least in the U S I know that there have been periods where it’s been slower and then periods where it’s been faster.
[00:31:07]Where literally, you know, it just take, I think what, at one point for one of my trademarks, it, took like 16 months or 18 months. Cause it was just a slowed down season of their work load. Or I dunno what if government strikes or something, but, but frequently it’s like, you know, nine months or something like that.
[00:31:24]So, but for the Amazon people, you do have this sort of backdoor. If you haven’t done it yet, you have this story. Use Amazon’s process and they help you expedite it at least for their process. That doesn’t mean you actually have any registered trademark protections or, you know, anything outside of Amazon, they’re just allowing you, to, you know, kind of speed things up for them on their side.
[00:31:44] I do want to talk about BMCA for a moment. If, if we can talk through that. Yeah. So, the digital millennium copyright act gave a process by which you can challenge intellectual property claims on marketplaces and websites. And so as a marketplace operator, what that means for me is I have to have a process in my, marketplace, my website, To receive a complaint about intellectual property and then manage that complaint.
[00:32:11] And so Amazon also has to have that process in place. And obviously, you know, with my, with my universe of, you know, my marketplace is tiny compared to Amazon, but they had to do this at scale. And so they had to have a process by which they understood who was the registered trademark owner, for all of these various named items and products and brands.
[00:32:34] And, and so it’s great that they’ve gotten it sorted out and the DMCA process is not new. That’s like old. I that’s like really old, but Amazon’s just, you know, come to this process. That is actually, I think very valuable, especially for people who had a lot. Seller’s camping on one, you know, a branded product where there was question about, you know, kind of did the company who was actually the maker and manufacturer even control of what’s happening on Amazon.
[00:33:00] You know, you hear those scenarios where it’s like, oh my gosh. It’s like, you’re not even in control of what’s happening on Amazon in your own, you know, with your own product because of your sales channels and all that kind of thing. So I think it has helped tremendously as far as I understand it and all your thoughts on, on that.
[00:33:16] But
[00:33:17] Michael: [00:33:17] yeah, I think Amazon is kind of come up to speed, with what, what was needed really. I mean, the main thing I would say is, I guess it kind of functions if you sell primarily on Amazon or for the part of your business that is on Amazon, it’s kind of effectively a law, a legal system within itself, based on a principle that most legal systems do not share, which is you’re in, you’re in guilty until proven innocent.
[00:33:38] Yeah. So you need to be very, very aware and prepare accordingly. This is like the theme of the whole podcast here. Isn’t it? That, just because somebody hasn’t taken you down yet, because you’ve only sold, you know, 10 grand a month for a couple of products doesn’t mean it isn’t going to happen when you get to 50 and get to top of page one.
[00:33:52] And if they do, what, what can happen is seems very unfair in the normal law court. Somebody would make an allegation. You’d wait months to go to court. Then in court, they’d have to bring evidence beyond reasonable doubt in a criminal court or beyond the probability of it. The lawsuit. And then after that, they’d take your pro products down on Amazon.
[00:34:09] It’s the opposite. Somebody alleges something, your listings gone within 15 minutes, possibly, and then you need to prove you’re innocent. So once again, if you do sell within Amazon, although it does abate the laws of the United States or the UK similar with eBay, probably because ironically the pressure of the, the, you know, the acts that have passed, pressurizes them to protect themselves such that they will take things down immediately, if there’s any allegations.
[00:34:31] So you need to be prepared for that. And you must have your paperwork in order. Otherwise your, you know, hope is not a strategy. They always say that in the Marines. I understand, but it’s seriously is not. If you’ve got a messy sort of trail with missing pieces to it and no registration with the government body, it can take months to get reinstated.
[00:34:46] I’ve seen it, that destroys businesses. So, so just don’t take the risk. I guess what I would say in that.
[00:34:51] Jason: [00:34:51] Well, we just camped on trademark for a long time. Let’s move on to the other two forms of intellectual property. When a copy talk about today, which is the second one was, copyright. Yes. So I think that’s really important to talk through.
[00:35:03] So you want to kick that one off for us and we can walk through
[00:35:06] Michael: [00:35:06] that.
[00:35:06] Wrapup: [00:35:07] Hey folks. Thanks so much for listening to another edition of the e-commerce leader. So hope you found that interesting. Obviously there was quite a wide ranging discussion, but we did sort of camp on trademarks rages. I just encourage you to listen to the next episode where we talk about copyright, because that’s a very underused form of intellectual property.
[00:35:23] There’s actually pretty quick and easy to get in place and is a very powerful and fairly easy to use tool into virus. Anything legal is easy to use to defend your property. If somebody else steals your images, et cetera. But that said. Really what we’re trying to get across is a couple of things.
[00:35:39] First of all, don’t be scared about this area. It’s very doable. It doesn’t have to be super expensive. If you hire the right people, they can be a very affordable way of protecting what you have and protecting yourself. Against allegations that you’re using somebody else’s intellectual property. I would add one little thing, which we didn’t really cover today, which is if you’re starting off with a new brand name or a new product that you really should make sure that you do your due diligence upfront, which is to say, make sure that you’re not infringing on anyone’s Peyton, because you’re selling a product that somebody else owns the patient.
[00:36:14] And I can say from personal experience, sadly, having had to stop selling one of the products I saw sold on Amazon. That just because it looks like nobody owns the patent doesn’t mean nobody does it just because it hasn’t been enforced because everybody else is doing it doesn’t mean there isn’t a problem.
[00:36:29] And it’s not a very solid way to build a business. Hopefully also much more. Ambitious than that, that you really are wrapping layers and layers of protection around everything you do. And what that means is that what you have in a business is more valuable because it’s more defensible, whether you own it, whether you’re selling it onto somebody else in future.
[00:36:46] So really would encourage you to educate yourself about this hope we’ve started that process or continuing it if you’ve already been thinking about it. And if you want a good lawyer to speak to my personal recommendation would be Robert Wright or possibly CJ Rosenbaum of Amazon sellers, lawyer.
[00:37:00] Either of them would be very versed in both intellectual property and how that interacts with e-commerce and specifically Amazon, or you could go the route that Jason suggested, which is finding a local lawyer to you, that you can learn to note and trust over time, either way. Good luck with your journey.
[00:37:16] The final thing to say is that our contest is over, but there’s still great value in subscribing to the show. So don’t forget to subscribe to the e-commerce leader on the podcast player of your choice. Thanks. Very, very much.
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