Trademarks, Patents Future Changes in USA Intellectual Property with Tayan Patel

Michael MicheliniBusiness, Podcast0 Comments


Topics Covered in this Episode

So today we’re talking about branding IP (which is always a hot topic in business), of course trademarks patents and many more interesting new trends in the business world. We have on the show an expert and my good friend, Tayan Patel.

  • Intro Tayan

    You were on the podcast years ago – episodes 20 and 69 – how are you doing today and can you introduce yourself again for those listening

  • Non USA people and US trademarks

    So the big news here is – foreigners can’t register USA trademarks now? What is the story?

  • Trade War and USA Trademarks

    So – does the timing seem to be strange. There is a new policy that started in August 2019 that doesn’t allow foreigners to do it directly – is this connected to the Trade war and import tariffs?

  • What should business owners do?

    How to respond? How to adjust –

  • What does the future hold?

  • About what you do

People / Companies / Resources Mentioned in this Episode

Tayan Patel’s VIP Experts Page
Article about foreigners not able to file trademarks in USA directly
Cross Border IP

Episode Length 33:00

Thank you so much Tay for coming onto the show. It’s always a pleasure to have you share your insights. I think we got a great overview here and some updates in the industry.

Download Options

Listen in Youtube

Show Transcript

gfa270

Episode 270 270 270 Global From Asia talking about United States trademarks and the walls that are going up between borders requirements, new requirements and new trends. Welcome to the Global From Asia podcast where the daunting process of running an international business is broken down into straight-up actionable advice.

[00:00:28] And now your host Michael Michelini. All right. Thank you everybody for choosing to download and stream this. Shout out to Naomi in Hong Kong. She gave us $100 tip in WeChat, there’s, if more and more people are choosing to listen to us in WeChat. We’re trying to be multichannel multi-border, I don’t know what you want to call it.

[00:00:51] But they have this WeChat donation function and a few others have used it. It’s much appreciated. Thank you Naomi. I look forward to meeting her. I’m taking a China trip, Hong Kong, China trip, ah middle of September. So I’m looking forward to catching up with some people in the community. Yeah, I mean the last few shows.

[00:01:17] I’ve got a lot of feedback from everybody. I really appreciate it. We’re trying to keep it real, trying to keep it real Evan Tate giving us some nice comments in Facebook. We getting some great feedback Frederick from China Importal I know you’re a regular listener. Thank you for your support and insights and.

[00:01:36] So many others it was fun to have Chris Thomas on the show. He also shared in his Facebook group, and we’ve been getting other insights from people. So I really appreciate hearing from everybody whether you’re on our newsletter or social media or wechat or or wherever. We really do appreciate. It keeps us motivated and interested to to share this.

[00:02:01] Information that there’s this is not the biggest information in the world, you know people might not choose this type of knowledge, but you guys are and we’re trying to fill this void and today’s show is another interesting one trying. Keep it up the last few shows of trying to get the you know, the clickbait traffic or the eyebrows raised.

[00:02:27] Well, it’s not even that hard today’s world. It’s just really things are going crazy. So this one’s an update. My friend and experts in the IP World worked in the US Trademark office is an IP lawyer now Tayan Patel and we bring him on the show to give an update. A lot of you might have filed your own us trade marks in the past.

[00:02:51] It’s still possible to do that. But I don’t know if this is a reaction of trade wars or policies, but trademarks now need to be filed by US professionals or US companies or US People which is an interesting update. I mean America has always been I think to open living in China where it’s to closed which is maybe led us to where we are with these trade Wars certain departments in the US for different reasons are certain to make you be an American or be a US

[00:03:23] Entity to file US Trademark. So it’s I think relevant to what we’ve been talking about in the shows, you know, I think a lot of. You know sellers around the world just register US trademarks without needing to be there not needing to have any entity set up there. So I just thought this would be an interesting one to bring onto the show. Tayan of course gives us some other insights and then afterwards I’ll do my blah blah blah like usual so stay tuned for that if you’re interested.

[00:03:51] This is a bit of a shorter one than the last I mean, the last one was like over an hour, you know, we try to keep these. Depends and there’s a requirement of length on a podcast. This one’s a little bit shorter. So I hope you enjoy episode 270. We have always show notes and links and pictures and the website at globalfromasia.com/episode270.

[00:04:11] So is everybody excited for the trade show season kidnapped to Hong Kong and China this year for Q3 preparing for your orders find a new suppliers. It’s definitely a crazy time and we’re gonna have an intimate we’re gonna make a little bit smaller this year cross-border Summits. We’ve gotten a smaller venue just because we’re anticipating a smaller turn out but we want it to be as high value have such to seem amazing speakers.

[00:04:37] We have the amazing masterminds a lot of speakers are some of the previous guests and it would be great to see you there Guangzhou China first time at that City, last few were in Shenzhen not too far. But we’re taking feedback from listeners and everybody in a community and two full days plus a pre-event mastermind and of course little bit of networking afterwards and even a workshop couple of Workshop choices from some of our very content prepared expert speakers.

[00:05:10] Afterwards, so if you want to learn all about this crossbordersummit.com, thank you. Hope to see you there.  Thank you for tuning in So today we’re talking about always a Hot Topic in business is branding IP, you know, of course trademarks patents and more with my great friend and expert, Tayan Patel.

[00:05:35] Thank you for being here Tayan. Hey Michael, how are you doing? Thanks for having me on the show again. It’s great to be back. Yeah, it’s great to have you here. You’re my connection in the US for sure. We’ve kept in touch over the years since even with me being over here in Asia and and it’s just really a pleasure to have you back to share your insights and experience.

[00:06:00] So do you want to introduce yourself to everyone today? Yeah, sure. So just to introduce myself to the the listeners today. I’m a partner at Baker Hostetler. It’s US law firm based out of Cleveland Ohio. I specialize in intellectual property counseling and transactions with an emphasis in patent procurement, monetization strategies and risk management.

[00:06:34] From third-party claims.  Great. Yeah, so I know you’ve even worked in the patent office back in your earlier career. So you’ve seen kind of I would say almost both sides of the table, right? Because you know, you’re like representing clients for patents. But inside the patent office you were receiving these submissions from inventors and and and other firms trying to register their IP rights.

[00:07:02] Oh, That’s right. That’s right. Yeah, I started my career at the, at the US patent and trademark office and received some valuable education on on the process internally for when inventions are received and how the patent office examines the applications ultimately to the grant of the patent. One full experience enjoyed my time, but eventually made it over to the other side to private practice and I’ve been in private practice now for gosh, 12 almost 12 years, okay.

[00:07:47] so yeah time is flying so we have quite a lot of different things we could talk about and we’ve seen trends in the industry as far as recording this, you know, registering trademarks and I know it’s a little bit more basic for your experience but I know it’s something interesting for most listeners is just a commentary mark.

[00:08:10] I know people selling on Amazon or selling online, you know physical product, you know, they they should they should almost have to nowadays file a proper trademark, you know, I think it’s kind of like a quarter First Step would you say?  Yeah, I mean I would say any form of intellectual property would need to be considered in line with your business interests, particularly your trademark, which essentially is not the the functional nature of the product or technology, but helps to protect the name or the symbol.

[00:08:55] Of the of the particular business or entity that that you have.  Got it, and just a little background. I’m not sure if you’re even, listeners are aware. But you know Amazon used to not require trademarks to get certain features in their platform, but don’t know the exact year, but maybe it’s 2017.

[00:09:19] I’m going to they started requiring to have it file and registered and approved trademark for certain abilities in their platform such as adding videos having a storefront having more content and more photos on your listing. So it’s gotten course meet more people interested were before I think sometimes sometimes entrepreneurs don’t file a trademark because they don’t see anyone else filing it and then they’re thinking that as long as they’re the first to use that they.

[00:09:52] can protect it but I think now is more important than ever to actually file it. I mean, do you know you know, I’ve heard some people say no you don’t need to file a trademark is as long as nobody else is using it. You’re the first in use is that that’s probably bad advice, right?  Well, you know, there’s some truth to not filing a trademark and still having.

[00:10:18] you some rights to it because you’re the first to use it. However, when you do file a trademark and and officially get listed on a register then then you have there are fewer hurdles down the road that you would need to overcome if your then trying to defend or cert your rights on for the trademark again.

[00:10:47] A third party. So eventually if you’re trying to enforce your trademarks if that’s your position to ensure that somebody else such as a third party doesn’t come into the market and start using a what we would call Mark, a trademark. That is somewhat similar to your trademark to then dilute the valuation of your brand.

[00:11:14] All trademarks do not need to be registered. You do establish common law rights based on use but when you register with you get obtain a federal registration for your trademark, you essentially are providing notice to the public that you are the first in line to use that trademark. So it kind of gives you a priority date if there’s any contentions with a third party, Yeah, so usually I would usually suggest people if you’re really serious about being your main business and your main product to to register it of course.

[00:11:53] It might be some testing period and maybe you’re not totally sure but once you have some confidence this is gonna be something really working on it’s worth doing that. Okay. Maybe I think you said you had some cases. I think it will learn a lot by example or cases. Is there some kind of things you’d like to share about?

[00:12:11] You know, what’s happening in industry or some things we can learn from as business owners. Yeah, of course. Absolutely. I think there’s there’s actually been some hot some hot cases that have just come down from the US Supreme Court and for for your for your listener, the US Supreme Court is the highest.

[00:12:29] Highest court in the United States and those laws and any precedent from that court is Plick bolt in any other federal courts in the US and so one of the main issues that has been unclear in the US, related to a rejection of a, a trademark. So for example say you’re a business owner and you own trademarks and what the case of let me just tell you the case.

[00:13:05] It’s called Mission products versus Tenpenology LLC and the decision just came down in May at the end of May for the US Supreme Court. It relates to an issue a bankruptcy. So. Say that you say there’s a trademark owner and the trademark owner owns his trademarks and their then licensing the trademark to a third party before before this case came out.

[00:13:38] It was unclear whether if the trademark owner files for bankruptcy. What would be the status of the trademark and rights to the licensee, which is the person who obtained the rights on the trademark through the license. And after this case came down in Tampa Knology the the rules.  Of how you would Define a trademark are similar when it comes to bankruptcy issues or similar to patents.

[00:14:13] So in patents the rules always been. Section 365 end of the bankruptcy code that a patent, a patent licensee would continue to obtain the rights of the patent even if the patent licensor file for bankruptcy, which is good. If you’re unlicensed it means that there’s no disruption in your your life.

[00:14:43] And similarly now in the trademark side.  for licensees that similar rule would would apply here which means that if you’re a business and you are looking to acquire a trademark license from a third party because that person owns the trademark then even if that trademark owner filed for bankruptcy your rights would continue in the trademark. So for anybody who’s always kind of swarm your son or uneasy on whether or not their right to be extinguished and do a bankruptcy of a trademark owner.

[00:15:31] They can be rest assured at least from a bankruptcy perspective that their rights we as  licensing and that’s really important. If you’re developing your business model around a particular license trademark license makes sense. This is pretty fascinating and also I think. One other angle I would like to use is I didn’t hope it won’t surprise us some question, but I logged into my Facebook just a couple days ago.

[00:15:58] Literally. I got a notice that one of my pages was deleted because it’s violating a trademark that somebody filed to Facebook and Facebook adhere to it and deleted my content and gave me their email and their name and a case number and said contact this person directly. Or you can click this log.

[00:16:22] They don’t want me to contact Facebook, but it says I can click here, too.  To talk to Facebook and I don’t want to disclose the brand name, but I looked at their case and they they had it for a classification. It was totally different than the content that I was I was talking about and I don’t actually have a trademark for that but I actually responded to the Facebook and I said this is a.

[00:16:48] Their trademark is for a totally different class. And yeah, the words made, matches my words, but I’m not talking about anything similar to their trademarks classification. So sometimes you can argue against the other way because sometimes people take these IP and they tried it over and force I feel so it’s also the other side, you know, like I think a lot of people get scared too easily because you get like some kind of scary letter.

[00:17:16] But if you really look if you really understand your Market, it’s by you know it they got stay within their or am I wrong? I don’t know.  Uh-huh. Yeah. Yeah. It’s something to keep in mind something to keep in mind. So this has been a great talk. I mean, I know actually I know tie-ins always I always talk about trademarks and he always says, you know patents is where he’s more experienced.

[00:17:40] I know we talk more about trademarks today. I don’t know if you want to add a little bit. How about the patent industry or if anything is also changing there?  Yeah, the patent laws are always evolving these days and and happy to discuss that either today or in a separate talk. But you know the big issues right now at the at the patent office are always on what we call patent-eligible subject matter.

[00:18:09] And and what the rules on that are always changing and the case law is always coming down to help explain. You know, what the what patent-eligible subject matter really entails so and patent-eligible subject matter generally over plates to inventions more so in the software industry.  And the electrical Arts, but they can certainly also.

[00:18:36] Involve Technologies and pharmaceuticals Etc. But most of the issues that we’re seeing there are software related inventions.  Make sense. Yeah, I mean there’s this is where I don’t know about. What level of business you need to be with patents? But of course patents are very very powerful. It’s also what’s the big thing I learned about IP, you know filing is one step, but the other step is enforcing it right you can get approved for an IP.

[00:19:09] But like I said about somebody that reported my page to Facebook you got to actually try to keep enforcing it right whether it’s a trademark or patent to have to also be kind of leveraging what you have. Yeah, that’s right. I mean you sensually would be policing your trademarks you have once you have obtained the elect intellectual property rights and they are legal rights that then you can go out and and help make sure that your your brand or your market share is not diluted which is essentially what the I guess the third party you contacted Facebook.

[00:19:49] I wanted to accomplish and it seems like they they were able to accomplish what they set out to do which was Facebook said, okay. I don’t want to be involved in this issue and I’m going to take down the subject matter on our website and so in a way, it seems like the little guy I don’t know who it is, but maybe the little guy was able to scare the big guy shroom that sometimes the rights of patents and trademarks where you’re actually carving out.

[00:20:18] You’re your own protection protective fence around your technology or or your brand in terms of trademarks and then you can go out and enforce the rights or you can try and force others, or see if they want to obtain a license to the intellectual property. Yeah, that’s part of it or or potentially even use that.

[00:20:46] As a means to then broker a deal and sell the patent or trademark to a third party and essentially make some some from it that you can so that you can put back into the business once you also obtained the intellectual property and this is more in the. I feel that I work in where we’re then you can use the intellectual property and as collateral to for example obtain a loan.

[00:21:21] So put money back into the business.  Okay, so yeah, lots of different uses of intellectual property and maybe on separate separate podcast. We can hear it back on. It’s always a pleasure to have you sharing sharing your insights. So thank you so much. I think we I think we got a great great overview here and some updates in the industry.

[00:21:46] Thank you again Tayan in for sharing with us.  Hey, thanks Mike. Thanks for having me on the show. And thanks for all your listeners. Certainly if there’s any questions, feel free to reach out. Okay, will do. Are you looking for IP help or other intellectual properties on which includes trademarks patents copyrights?

[00:22:11] All that stuff as Amazon seller is business owners brand is everything protecting, of course first filing and of course second protecting and also building a portfolio of IP is real value in today’s Global World if you’re looking for experts introductions to those we put together crossborderIP.com we can connect with experts in legal and IP World such as tie in and others are in that Network and will connect you to the right person based on your budget and your requirements and your needs check it out and give us some feedback.

[00:22:48] Also learn some more info at www.chrismuldong.com p.com. Thank you Ty Ann for sharing has been on the show before and I was always sharing knowledge and insights or also. Here at the in-network. There’s the development of cross-border. I p.com it’s a simple little website to help people get cross-border legal help.

[00:23:13] I mean we’ve gotten lots of people in the community always asking for legal help asking for introductions to lawyers IP professionals. So what the community’s done is put together cross-border I p.com you can check it out or find it in the show notes. It’s a way to help people getting IP help.

[00:23:34] Maybe they’ll also some legal help but seems like that’s the biggest battle is intellectual property trademarks copyrights patents, you know, even Trade Secrets I’ve read books about it. I highly recommend learning about IP if you’re a business owner, I think brand as we’ve talked about so many shows for.

[00:23:55] For all these years on gold major brand is everything I think in today’s world and getting proper IP in place and as many jurisdictions as possible, of course u.s. Is a big one China is a big one getting IP and all these different places will be what protects you in the long term. I mean, it’s what keeps you.

[00:24:15] You know a little bit safer, but I think we touched on in the podcast but you can’t just file in and forget you got to keep it up to date not just from the government, but also, you know. Checking maybe sometimes I do is like a Google Alerts. I think it’s still free should be free Google stuff free.

[00:24:35] You could get the alerts your email box when somebody’s talking about your brand is also good for PR and just knowing what people are saying about your brand so you can go to I think it’s alerts dot google.com or I look will.com alerts and then put some of your your trademarks or your brands or your keywords.

[00:24:51] You want to Monitor and it will update you regularly about what people are saying at least what it gets indexed into. Well, and when new stuff gets in there, you’ll get alerts I think a lot of Ip lawyers and professionals and I hope brand owners and business owners could use that there’s also other paid tools that are monitoring your brand and of course the tricky one.

[00:25:15] I’ve had battles on Alibaba with different brands. I’ve had or products or I, you know, even your own designs, sometimes we could talk about it here. I’ve been to trade shows and I’ve seen my own products. They’re from my own factories, which is tricky sometimes, you know, they don’t expect you to be there or I’ve had to issue an Alibaba where I would see it and I would search by my keyword and then I would see that it’s.

[00:25:49] it’s in Alibaba or other, you know directories and. That’s a tricky one. What are you supposed to do? I think Ali Baba doesn’t really care like usually I think maybe they care more now, but you can contact the factory especially if you know them. Usually they’ll play stupid and say they didn’t know or one of their other workers did it by mistake?

[00:26:10] That’s what they say to me when I’ve talked to the factories, but you try to let them get away with it once maybe twice. It’s this actually happened to same time twice and he apologized again. Sometimes it just say it’s their new worker. They don’t know it’s not their product. They don’t know. It’s a specific private customers design.

[00:26:31] So you do got a monitor to stuff. I don’t know if it’s probably guess indexed in Google Alibaba obviously relies on a lot of Google traffic for their business. So usually this stuff will get picked up in Google Alerts. But you know in the course, I think the best thing about a lawyer is to scare people.

[00:26:49] I’ve gotten scared from lawyers. I think I’ve talked about us other shows where I’ve had us lawyers on behalf of a huge Brands find my house my parents house in Florida. And showed up into black cars with a letter subpoenaing me for information on another person for a domain that they have where they’re selling products that are these clients the lawyers clients Brands.

[00:27:14] So haha lawyers are good at scaring people. I think that’s half their job is writing these letters and their name right there Law Firm name at the top. And the more powerful the lawyer the more intimidating the person receiving it. More intimidating it is to the person receiving it so I think half the time it’s it’s scaring.

[00:27:38] I think I mentioned the show but I’ve I’ve logged in my Facebook lately and they said one of my pages got deleted because it’s a trademark term and I had that page made six seven years ago. I’m not actively using it. But you know, that’s that’s a pain in the butt and sometimes maybe I’m not even really using it that much but somebody just because they follow u.s.

[00:27:57] Trademark contacts Facebook and wants to maybe take my page URL they want my URL so they say this is their trademark and I looked up their trademark because they have to tell me who it is. You can look it up. I mean all this information is public there’s all of this at least in the u.s. Trademark.

[00:28:13] So I think even China trade marks, but you can find all this for free you can search and then see who they are and see what. Suffocation and you can fight back, you know, alloy lawyers are just trying to usually scare you to settle your trying to scare you to do what they want you to do and they don’t usually want to take court.

[00:28:30] So you got play Both Sides whether you’re divorcing scaring somebody else to stop using your trademark or. Somebody’s trying to scare you to stop using their trademark it it’s a discussion, you know, it’s not a half the time they’re just trying to see what they get in gear will get away with an Amazon Facebook Google.

[00:28:46] They don’t want to deal with it. You just do what the lawyer says to them. Delete this website. Take this domain down take this Facebook page offline. Take this product off Amazon. Usually just listen to them and let the person receiving a deal with them and fight that lawyer or fight that person with that trademark.

[00:29:02] So I think it’s our responsibility of us as business owners Amazon Seller. Etc to understand Brands understand trademarks and know our rights. So on both sides it’s done its negotiation. It’s to scare or intimidate or influence, but it’s also your job to protect your trademark and enforce it if you just file and forget and other people start using it sink after certain amount of time.

[00:29:25] It’s not effective anymore because you didn’t put a police it yourself. It’s your responsibility to do that for you listening. I’m hanging out in Promenade a mole. It’s actually right next to the immigration nightmare. I had they’re not here anymore. But I’m a recording this intro between meetings and Promenade Amal Thailand Chiang Mai, but in my last part of the blah blah blah if you’re still here.

[00:29:51] You know, this is interesting. I want to talk to Ty and I work with him on some trademarks and some other legal help and he brought this news up and send it to me and I was pretty amazed. I mean seems like u.s. Is finally warming up to the. Other parts of the world, I think in a UK Trade Mark, you have to have a UK address to file when I try to do it.

[00:30:09] I needed to get a UK address. I believe and China is you know, China doesn’t let anybody do anything. Although you don’t have to be a Chinese company to do it. I own Chinese trademarks with a Hong Kong company, or you can do another company names. Maybe they’ll change now to the laughter the u.s.

[00:30:26] Does this but. I think it’s also a fact of just probably the ching ching English and messages you must be getting as like a trademark attorney. Imagine working u.s. Trademark office and getting a these responses from people that don’t speak English as a first language about their trademark disputes or changes I could imagine what a nightmare must be to try to understand what they’re saying.

[00:30:52] So I think maybe they’re just set the minimum trying to reduce the amount of. Illegible or not clear like filings or or letters or complaints or changes or updates or whatever contesting their disputes of not being accepted to trademark I could just imagine that and Today’s Show is just part of the category of this whole trade war and walls going up.

[00:31:17] I just think it’s another another notch on this negativity of walls going up and. The last few shows I can say right look we talked about the Chinese and US Sellers and Amazon Howard tie. We talked about the protest we had Chris Moore on we had Chris Thomas talking about is a what’s the future of Hong Kong business?

[00:31:37] And then you know, we’re this is one with Ty and or talking about us trade marks and the requirement to be a u.s. Person or company. I just think things are really changing in the world. And it’s fascinating and I hope you’re enjoying it. I know it’s scary. It’s real it’s real. I mean, it’s money, right these tears are hidden and you’re going to be paying if you’re importing and who’s that going to they probably going to the consumer right?

[00:32:02] Ultimately it’s going to get added to the price of the product whether long term or short term. I think prices are just gonna have to go up but. Here we go. Remains were trying our best to keep it real and seems like listeners have been appreciating that and already working on the next show. So thanks again for all your feedback your supports and of course support our events support the community and share this with your friends.

[00:32:31] I got some interesting shows coming up on us. So we’re getting a little bit radical here. I guess I’ve started losing my mind. We’ll see. Thanks again for listening the episode 270 over and out to get more info about running an international business. Please visit our website at www.globalfromasia.com that’s www.globalfromasia.com.

[00:32:54] Also be sure to subscribe to our iTunes feed. Thanks for tuning in.

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