Resources for Buying and Selling Online Businesses

Why Trademarks Matter – And How To Get Yours

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Steven Weigler

Steven Weigler is the Founder and Managing Partner of EmergeCounsel, a company that specializes in the protection of business assets and intellectual property for entrepreneurs across the world. Before his work at EmergeCounsel, Steven was the Founder, CEO, and General Counsel of ScholarCentric, a groundbreaking educational technology startup.

With extensive entrepreneurial and legal experience, Steven specializes in intellectual property, general business counsel, and information technology law. His biggest goal is to be the primary legal counsel for his clients’ evolving businesses.

Here’s a glimpse of what you’ll learn:

  • Steven Weigler talks about his background as a practicing attorney
  • Why do intellectual property trademarks matter for e-commerce entrepreneurs and Amazon sellers?
  • The ins and outs of Amazon’s Brand Registry
  • Steven discusses how an IP trademark can protect your brand
  • How to obtain a trademark worry-free using Steven’s TotalTM® service
  • What to do if an international seller on Amazon is infringing on your trademark
  • What is the difference between a copyright and a trademark?
  • Common examples of trademark infringement—and how to combat it

In this episode…

Do you want to create an Amazon brand that is protected from knockoffs? Are you looking to build an e-commerce business that has firm roots, low risk, and continuous revenue? If so, this episode with Steven Weigler, the Founder of EmergeCounsel, is a must-listen.

According to Steven, there is one thing that can set your Amazon brand and products apart from the crowd: a trademark. Though some sellers consider trademarks to be unnecessary, they are actually an essential part of risk mitigation. After all, you can’t grow or sell your online business if it isn’t properly protected—and the best way to protect your brand from copycats and knockoffs is to invest in intellectual property trademarks. So, how can you go about obtaining a trademark in order to lower your business’ risk and increase its profitability?

In this episode of the Quiet Light Podcast, Joe Valley sits down with Steven Weigler, the Founder and Managing Partner of EmergeCounsel, to discuss how to mitigate the risk of your e-commerce brand by obtaining an intellectual property trademark. Listen in as Steven reveals what an IP trademark is, how long it takes to obtain one, and why Amazon sellers need to understand and protect themselves from the risks of trademark infringement. Stay tuned!

Resources Mentioned in this episode

Sponsor for this episode…

This episode is brought to you by Quiet Light, a brokerage firm that wants to help you successfully sell your online business.

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Episode Transcript

Intro 0:07

Hi, folks, it’s the Quiet Light Podcast where we share relentlessly honest insights, actionable tips, and entrepreneurial stories that will help founders identify and reach their goals.

Joe Valley 0:29

Hey folks, Joe Valley here with the Quiet Light Podcast. Thanks for joining us once again. Today, our guest is very special. He’s actually somebody I’ve hired for my own business, just outside of Quiet Light, but affiliated with Quiet Light will tell you about that at one point. But first, I wanted to talk about Quiet Light. real briefly, as you all know, we are a little market or small middle market m&a firm focused strictly on online businesses, our largest transaction in 2020 was just shy of $25 million. And then we got into the sub $20,000 range for a few. Those are generally pocket deals, but we’re happy to help out you guys are friends in the audience when the deal is REITs. And when we can find the right buyer for you quickly and easily. I do want to give a special shout out to my friend Steve Chou and Toni Anderson. They introduce us to today’s guest, Steve Weigler. Steve and Toni have started a new podcast called Profitable Audience. It’s going to help folks grow their content and e-commerce businesses. Both Steve and Toni run very successful seven figure blogs and are people that you should definitely listen to. Alright, so thank you for the introduction to this man, Mr. Steve Weigler from EmergeCounsel, trademark specialist, all sorts of things that he does that I’m not even going to go into because he’s so good at what he does.

Steven Weigler 2:00

Thank you.

Joe Valley 2:02

See that, he’s he’s thanking me already, I have barely said anything. He’s a kind man, he’s like, he does a good job at what he does helps me in so many different ways. We’re not going to talk in detail about what I’m doing. But let me just tell you that we file for a trademark. Somebody disagreed that we should get the trademark and Steve came up with 139 examples of what I’m looking for. That just kind of makes them look silly that they’re even fighting it. So I appreciate it. Steve, why don’t you give a little bit more background detailed about what you do at EmergeCouncil and who you help?

Steven Weigler 2:45

Sure. So I started EmergeCouncil about six years ago. And my background is I started actually as a as a criminal prosecutor in Miami, Florida. And so I really learned how the world of law the world of courtrooms and how kind of hardcore attorneys can be and what how difficult sometimes addressing legal issues is, through a long history, I’ve I’ve started my own startup and took it to exit and, and also had been an attorney for AT&T, which is a you know, very large corporation. And so I took those combinations experiences, and put it together and said, I want to work with entrepreneurs, that with relatively low fixed costs or low investment, they changed the world. And I thought e commerce is one place where that really matters. And I also thought when I was writing this down and figuring out what my business plan was, is that pretty protecting their intellectual property, which means protecting most of the time, their trademarks and copyrights is a way to provide really effective low cost, kind of one off, or protection, or the ability to scale and solid high multiples relatively easily.

Joe Valley 4:18

He actually used the word multiples, he knows what he’s talking about. Did you hear that? In my own company?

Steven Weigler 4:24

It should be on every entrepreneurs mind, especially in e commerce, how am I going to grow this company so someone will buy it? Or I can even have my retirement planner? Do an ISA meaning an employee buys in a high multiple Yeah, how can I and that means how can I create the value to make it that much more

Joe Valley 4:46

than having good solid intellectual property or IP is critical to that and many, many situations but tell us what what does it mean in your world and for e-commerce business owners?

Steven Weigler 4:58

Sure. So the first thing We look at is what’s the brand? How are you holding out? Your your goods are usually in e-commerce, it’s going to be goods or services. In the case of you being a company, how are you holding that out? And how is the public going to be able to find that. And so that’s called we protect brand, or an indicator of your, of your company or your goods, we protect that through something through trademark or service Mark protection. And a lot of times, the kind of thing that goes along with that is product packaging is protected through something called trade dress protection.

Joe Valley 5:39

So you can have trade dress on on the packaging itself is that way say?

Steven Weigler 5:43

Yes, for sure. Or the product itself. Okay.

Joe Valley 5:46

Now just about about why it’s important in this world that we live in with, you know, 50% of all product purchases, being through Amazon. Anybody that’s got a physical product business that’s in the audience, or hopes to buy one is probably going to be selling on Amazon. Why is a trademark an IP in general important if you’re an Amazon seller?

Steven Weigler 6:10

Well, the law is is that you have exclusivity to sell that good or service under that brand. If you get it protected at at the United States Patent and Trademark Office,

Joe Valley 6:21

if you get it protected that brand. So it happens all the time that people are trying to knock each other off on Amazon, is it they just tweak the look and feel of the product and the content of the description? they can they can they sell something extremely similar? As long as you’re not infringing on the trademark itself?

Steven Weigler 6:43

Well, the answer is, it’s probably a lawyer. When I had my own business, that certainty went went out the window now that I’m an attorney, everything’s couch. But that the idea is is that you want to build brand distinction. And so how the trademark office works or how and this is international, this doesn’t matter about if it’s the United States Patent and Trademark Office, or it’s Canada or China. Um, there’s there’s kind of a rule that when you start something, and you or you start out with like a generic name for a product, like Steve’s hats, well, it’s not. It’s it really gets a little, just a little bit of protection. But if Steve’s hats becomes like, Louis Vuitton, as far as bags, because that’s really someone’s name, right? I think at some point, Louis Vuitton was a person. I think he’s still around. But anyway, the point is, is he’s a designer, at the point where now you think Louis Vuitton you’re thinking, a whole brand and a whole brand experience? When you’re thinking Steve’s hat, you’re thinking through Steve, and what’s so special about these hats? So the Steve’s hats gets very little protection. And Louis Vuitton over the years acquires a lot of protection. So when we’re meeting with clients, yes, you get basic trademark protection most of the time, but we’re trying to figure out how to get this brand on steroids and get it the maximum amount of protection at the minimum amount of

Joe Valley 8:14

gotcha is it’s a it’s required on Amazon to get this enhanced brand content and those Amazon folks listening right now go on Joe now you know, your stuff. Come on that I’m getting it wrong.

Steven Weigler 8:27

That’s basically Right. Yeah.

Joe Valley 8:29

But it’s it’s it’s basically right. It’s I think it’s level two or maybe even three now. But it’s required to have that to have certain protections anyway and and get certain products on Amazon, isn’t it?

Steven Weigler 8:41

Yeah, I mean, Amazon on one, enhance your, your brand image you don’t have you’ll be limited to one up to four lines of content. Whereas if you’re on the Brand Registry, you’ll get a lot of description. And there’s rumors, and I’m not sure if it’s true, that you also be enhanced on the product list. So, um, your ASIN will come to the top of the list if you’re on the Brand Registry. If not, you’re at the bottom of Amazon. If I could just opine Amazon is a really interesting beast. And I’m I really, I had the opportunity to be on the, like a Amazon Brand Registry attorney. And so I would have a deal with Amazon where I could be wanting to have a contract with Amazon and be a Brand Registry attorney. Well, we we of course you know you that Amazon is a big brand, right? Also we have 1000 trademarks right now, but that’s not Amazon. So of course we’re a smaller brands. And so I thought about it long and hard. The problem with Amazon and and really working on an entire strategy if you’re a business person on Amazon is that Amazon in many times can be the bad actor, or they can be affiliated, especially with an Asian knockoff, affiliated many times with the bad actor. So I encourage you and your, your your listeners, when you’re thinking about an IP strategy. And when you’re thinking about a business strategy, strategy in general, of course, you need Amazon. If you’re an e commerce company, you can’t get around Amazon, you don’t want to, that’s a really good way to get it entry to the marketplace. But you really should be looking broader on your strategies. So you can maximize the value of your company, which might be creating your own Shopify site, putting your own resources into your, your third party site, as opposed to pitching your horse in less on Amazon. Now that of course, if you’re an arbitrage or, you know, you just have a nice and white label that you can do that effectively, that that doesn’t count. But I’m talking about for 90% of the Amazon sellers out there that are trying to create a brand.

Joe Valley 11:02

Tell me, I’m going to go right back to the Amazon affiliated with bad actors in China, for instance. In what way are they affiliated with them simply because they’re allowing them to sell on the platform, or they are?

Steven Weigler 11:17

It’s much more. It’s interesting, The Wall Street Journal just reported it. And I actually got a call from The Wall Street Journal reporter looking for clients that have been affected by this, but Amazon’s investing in Asian companies that can provide the goods and services much cheaper than the American providers, and they will have many times even to finance them at very low cost, or take equity into that, as reported i. So if you’re not part of those deals, but yeah,

Joe Valley 11:52

so and I’ve seen these, some of these nefarious sellers, will, they’ll do everything in anything they can to take down your listings or your account, get it suspended by literally somebody, somebody went as far as creating entirely fake documents and submitting them to Amazon. And even though they were fake, Amazon still suspended every account except for theirs. And not Amazon’s the guy that was cheating. suspended every account until those that got suspended could prove that they were fake. And this situation you’re talking about somebody doing that, and Amazon being in partnership with them. And so your your trademark or your IP in general is going to be critically important because you’re fighting the people that just took you down as well. Right?

Steven Weigler 12:43

Right, I think Amazon is looking at it is the cheapest sources of goods right now are in China or Vietnam or an Asian country. And that the IP laws in Asia and China, specifically, are very geared towards the Chinese. And so they will. And so they see if the end user meaning the consumer can buy cheaper goods that are looked the same and potentially have the same quality as well, why wouldn’t they be provide more options or cheaper products for the end user consumer? Okay, so where are they they’re not saying amazon seller, you can’t sell on Amazon, they they want you to sell to, but then they want to create competitors with lower price points. And they’re heavily subsidizing that. And sometimes, especially through the Amazon basics, they get the data see that this is selling and all of a sudden barrier competitor

Joe Valley 13:44

directly and everybody. Mostly a lot of people fear that when they sell to Amazon. Alright, let’s, let’s go through a couple of profit steps here. I want to know what the process of getting the trademark is and then how you fight it in a situation like that with Amazon. So what’s the process? How long does it take? What’s the cost things of that nature?

Steven Weigler 14:06

Sure. So first, and this is my latest blog if anyone wants to see it. It’s being published tomorrow.

Joe Valley 14:16

But yeah, that’s our that’s on your website, EmergeCouncil. Is it gonna be Yeah,

Steven Weigler 14:20

it’s gonna be so the name of my law firm is EmergeCounsel. And we have three attorneys and about seven so total staff. We have a program that’s trademarked called TotalTM and our totalTM. The reason I did it is it is very, very easy to follow your own trademark. And chances are it’s going to have zero strategic value to you. And so sure, you can pick a name. So especially if the name is made up of violet at the trademark office as long as the name doesn’t go against anyone else’s name ultimately You’re going to get the trademark. The issue is, is if you want to create a business and grow that business, you have to file trademark strategically. So our TotalTM process includes first a discussion on strategically, what are you trying to do? What are you trying to protect? Are you trying to protect a unique name? Are you trying to provide a protected descriptive name, are you trying to do that for as many products as possible, are to how you can have separate names for each product, you have to strategize and figure out the brand, and what elements of the brand you’re trying to protect, before you do a thing. And so that’s a big part of what I’m good and thorough trademark attorneys do. And so we include that as part of our TotalTM service. Even if you decide not to work with us, that part of it is usually complimentary, and we’ll even do a free knock. So then at that point, we know that there’s a strategy behind it, then we work up the mark for, for filing, the first thing we do is we order an international search through a search algorithm company that looks at the market and has a 99%. They advertise 99% likelihood of success in determining if this mark is going to be an issue for our clients. Moving on down the line, there’s many times that the trademark office will okay the trademark, but other things outside the database that the trademark office has, will cause issues for our trademark holder, for example, we’ve gotten a lot of trademarks through and then subsequently issues come up that a third party thinks that it’s infringing on them, and will sue. And so the purpose of this search is to take care of all those issues, take a look at the entire landscape in the world, in common law on the web, everything beforehand. And that’s called them a thorough search and opinion. Once we get that and we classify it, we want to maximize the goods or services in the application. And also make sure that there’s no issues will provide a search opinion, then we’ll submit it to the USPTO. And they will have assigned an examining attorney to look at the mark on within four months of filing. After that the mark is published. And the general public has a right to look at the mark. Sometimes there’s issues and we handle those issues for our clients. Then, the USPTO has nine weeks after it publishes to issue a copy of a trademark certificate. And

Joe Valley 17:35

so that’s the general process from beginning to end when there’s no issues and that 99% chance that you’re going to get the trademark beginning to end we’re talking about

Steven Weigler 17:46

six months is about, I’d say closer to nine months because the trademark office will first almost 86% of applications filed have some technical issue. So that’s an example you do it yourself. All of a sudden you get this what’s called an Office Action. And there’s a bunch of technical arcane things you did wrong. Okay,

Joe Valley 18:08

so you do it yourself, you could screw it up, and then it’s gonna take even more than that. What seems like a long time, nine months anyway.

Steven Weigler 18:14

Okay. And you got to figure out what’s going on. And so

Joe Valley 18:17

assuming that there are no issues with this, and that’s nine months ballpark, what are we talking about? Cost wise, we talking about? 5000 bucks, 10,000 bucks, whatever.

Steven Weigler 18:28

So what we decided to do is we package our entire package at $925. And then there’s $350 USPTO fees.

Joe Valley 18:38

All right, I’m sure that’s subject to change, change folks as well.

Steven Weigler 18:43

I do that all the time. But it’s pretty.

Joe Valley 18:46

So why don’t you try? Not kidding, he didn’t charge me 10. Well, when things go wrong, when things go wrong like this, you know, in our situation, somebody disputed it. And so there are going to be additional ongoing costs. And that’s based upon the time that you put on, above and beyond, right.

Steven Weigler 19:07

Yes, we haven’t. We have that situation on it.

Joe Valley 19:14

Trademarks.

Steven Weigler 19:17

It really seems like it’s smooth, smooth sailing until it’s not smooth sailing, and you hit choppy waters. And then it’s really choppy. And then even like law clerks in federal court are like, I’m not sure I understand this law. And they’ll call you to find out citations because it’s so arcane. This area of law, and I’m not sure. It’s almost like the laws broken and that’s what we’re here to just steer you through. But I do think that it’s it’s very important. From a mission standpoint. We spent a number of years just putting together a process where it would be the same process that if you called a huge law firm and you were You know, you owned Oreos like Nabisco, you would get this, you would go through the same comprehensive process that we’re going to take you through, we can just do it, mostly because the software at a fraction of the price, where we start seeing issues is a lot of times were brought in later, when someone didn’t go through this process, or the attorney they hired, isn’t, doesn’t invest in the software doesn’t invest in the time, but charges him 500 bucks. Well, you know, again, you can get this done. But when you hit an issue, it is real, like, it is not something that is remotely remote possibility. You’re talking about fighting in the marketplace, you’re talking about your brand. And so a lot of times these spikes are going to be really large. So we have to deal with it.

Joe Valley 20:49

Timing wise, there’s probably people out there listening going, oh, wow, I’m ready to launch my product. But I have to wait nine months for the trademark. What do you recommend to people in that situation?

Steven Weigler 21:01

Sure. Well, thanks for bringing that up. The there’s a couple of things. The first is, that’s why the search is so important. Because if we can do a thorough search, which we do in 48 hours, if we can do a thorough search, including what I call an algorithmic search, like a computer slicing and dicing it each and every way, we can pretty much give you that opinion that it’s going to sail through or not sail through, of course, you get sometimes hit on the side that and that might be bogus claims or not bogus claims. But you know, we’re pretty certain once we go through that process. The second thing is, is Amazon and take this to note, Amazon has a new pilot, where you can take the serial number and have the trademark The moment you file. And you can give it to Amazon to get a priority access to the Brand Registry. And we’ve been getting having fantastic success, getting our clients on the Brand Registry very, very early. And we include that as part of the service. So we’re not I mean, where as I say, I don’t want to be in Amazon’s back pocket, like be an Amazon attorney. We’re working with them all the time and studying the Amazon website in order to get our clients on the Brand Registry very quickly. The alternative is you can go to an Amazon attorney and probably speed up that process.

Joe Valley 22:21

Okay, let’s talk about then, you know, we’ve filed for the trademark, got the trademark, you’ve done your search to give me confidence that I’m going to get it and I’ve gone ahead launch my product and I’ve launched it. Nine months later, I get the trademark. And that’s good. Because now I’m you know, 15 months into selling that particular brand and looking at an exit in another 12 to 24 months. But then I’ve got an infringer or somebody that’s cheating, lying and stealing to try to knock off my products. And they’re in China and Amazon happens to be an investor in their manufacturing facility. And it and now I’ve got to fight Amazon itself. How difficult is that when somebody is infringing on my trademark, and they happen to be partners with Amazon? Is it still a matter of black and white look US law? Or is it a lot of gray in there?

Steven Weigler 23:17

That’s it? That’s a good question. I mean, I think Amazon is so big that they don’t necessarily the departments aren’t necessarily connected on Amazon. Amazon isn’t huge on on enforcement, for Amazon sellers on their website. So one good thing would be to get on a Brand Registry, so at least they know you have a valid trademark. A lot of infringers are really crafty at how to infringe. And so for example, it might be a bag, let’s just go back to the Louis Vuitton bag, it might be a bag that kind of looks like a Louis Vuitton bag, has the same features and functionalities, but certainly doesn’t say Louis Vuitton, which would be a violation of trademark. So then it brings up a question. All right. You’re you’re starting out. You don’t have a you know, you’d rather not spend it on legal fees. And I always understand that. But when we’re looking at and this goes back to the strategy, when we’re looking at the product, when we’re looking at the brand, when we’re looking kind of at the business plan, that’s what I would like to see from a lot of my clients like what’s, what’s your strategy is it I don’t care if I sell five units this year, 10 units next job a day job versus I’m in it to win it and I want to accident five years and I want to exit a at a 10 times on revenue multiple. I want to know that because if

Joe Valley 24:46

10 times I just want to say I want to exit at 10 times revenue multiple as well.

Steven Weigler 24:52

Is that it? I’m used to a lot of software. I’m all in anyhow Not 10 times either. is you want to accident a multiple Not, not just last year sets, right? Sure. So, so at that, so I really want to find out that and then we’re going to take a look at all right, what’s a product look like? Is there a copyright? Is there some some copyright about element of it? For example? Is it? Is there some artwork? Or is there a design of the box? That or is there a design of the product? Or how you put the holes where you’re supposed to put the screws? You know, say you’re doing furniture or something? Or is it you know, an entire brand play like a cosmetic play or something? What What is it, then we’re going to take like an called copyright, which is protecting original piece of works of art. But you can protect all of that in one or many copyright applications. So we’re going to take little, relatively cheap tools and kind of add them all together to create the maximum amount of IP value. But the second thing is you brought up in China. We should and we do this all the time is if we know that the reason that you’re going to source from China that the clients can source from China, we’re going to also get the cop the trick copyright and trademark sometimes in China. It’s much easier to police knockoffs in China Believe it or not than it is in the United States.

Joe Valley 26:22

Okay, so you’re going to go for those in not just the US market but internationally. Okay. For for the idiot in me, and he’s pretty, you know, important. speaks a lot. What’s the difference between a copyright and a trademark

Steven Weigler 26:38

shows? Sure. So trademarks, protect brands. So usually a brand is a name bags. Yeah. So Steve’s bags is the name. Let’s say Steve’s bags has a specific design, like my bags are shocking pink, with yellow polka dots on them. So that would be my brand, not only my brand, maybe because it would be you know, that you wouldn’t be able to tell that’s a Steve’s bag. That’s a brand, but it’s also some original artwork that I put together on the back. And I can copyright the artwork, and also protect the brand.

Joe Valley 27:11

The slogan might be a copyright as well.

Steven Weigler 27:14

Right? If something can be because, think about it, a book is copyrighted. And so, so can a poem be so can a tagline be, but also a tagline can be a brand, it can be a trademark. Gotcha. Okay,

Joe Valley 27:27

let’s jump to something we chatted about before we started, you know, before I hit the record button and stuttered my way through the intro. And that is that some people are trying to dispute and shut down your trademark without you knowing about it good. And I’m getting that exactly wrong. So why don’t you enlighten us on what’s happening and what some of the schemes are now with? I think it might be overseas sellers somehow trying to negate your trademarks.

Steven Weigler 27:55

Sure. So generally, again, when you start up a business, and a brand, generally No one’s ever heard of it. Unless you’re famous to begin with, like, Kanye West? Well, sure, he starts up a new clothing line. Everyone’s heard of Kanye West. So they’re gonna immediately connect the car, and it will hockey stick, meaning it will, the revenues will go up very quickly. Sure, for most of us, we don’t have that luxury. And because no one’s ever heard of the brand. And so we’re say you’re trying to launch a launch a brand on Amazon, while might be a couple years and you hear nothing, except that you’re doing well. The next thing you know, you start seeing little aspects of your brand. In other postings on Amazon or other things that Amazon sellers are selling. You take a look at it, and you’re like, well, this looks like a cheaper version of what I have. Let’s take my Steve’s bags. With the yellow polka Did I say it’s shocking pink and yellow polka dots. And all of a sudden, you see one that has shocking pink and purple polka dots, but it looks pretty close. And it’s called Stephen’s bags. So you’re gonna, when you start becoming successful, it’s when you start seeing this, you do a little bit of research because it doesn’t take that much. And you realize the infringement is occurring. In China, it could be the same A lot of times, we have issues with the same manufacturer running access of your lot, or what you ordered, because they have the machines running and you haven’t struck an exclusivity deal with them. Plus, you don’t have trademark protection in China. So a lot of times what we encourage our clients to do, maybe not at the very beginning, but before success is obtain that trademark in China and also secure sole source vendor agreements. And definitely when COVID lifts, get on a plane and meet your manufacturer And make sure they’re for real, because a lot of you, not you, a lot of people are buying on AliExpress. And they have no idea who this vendor is, except that they can get it and the vendors willing to work with. Yeah, well, again, these are the formulas Berg, I can almost guarantee that you’re going to be once you start seeing success, you’re going to be start getting knocked off. So take a little bit of your budget, because it’s about the same that I charge to get that Chinese strategy in in place. And it’s really the same thing. It’s filing a trademark application in China, which is a first to file country. So they start seeing success. They’re going to Steve’s bags, all of a sudden, it’s successful here. Well, in China, they’re going to notice a success here, and somebody is going to file for that trademark, even though they don’t have the trademark. They have nothing to do with it.

Joe Valley 30:50

They just file for the trademark in China.

Steven Weigler 30:52

Yeah. And they just blocked you out of it. Because it’s the first to file country. Okay.

Joe Valley 30:56

Is there any way that they can sort of trying to get on the subject of what we focused on earlier, which was sort of somehow negate your trademark inside the US at the US? TPL? Did I misunderstand that conversation?

Steven Weigler 31:11

Yes. So that’s, that’s the beginning with that Chinese strategy, then at the USPTO, they can file and say that, that they have an issue with your American trademark, because for one of many reasons, it’s not strong enough, you’re not using it for the good and commerce, they can just kind of muck it up and make it very difficult for you to move forward.

Joe Valley 31:37

So they you do you all in this scenario, all you do is you file in the US, your brand becomes recognizable, it’s doing really well, Chinese sellers pick it up and they go, Okay, we’re gonna file for the trademark in China, preventing you from getting it and losing all those protections. And then on top of that, they’re going to then dispute your trademark in the US and muck things up for you a little bit and cost you legal fees, and perhaps your ability to grow and sell the business is that what we’re saying?

Steven Weigler 32:06

I’m saying if they were aggressive, it can happen. And it just, and that was what I was doing all morning is a situation where we do have a trademark, we do have copyright. My clients been extremely successful could have accepted a really good multiples, because the product is so unique. started seeing infringers on the website, we tried to take down the infringers. And we were successful in doing that. And the next thing, you know, they’re the infringers are from China. We don’t have any Chinese strategy, and they’re trying to they’re trying to cancel the trademark and copyright we got, I don’t think it will be very successful. But that’s an example of very aggressive infringers.

Joe Valley 32:52

Yeah, it may not be successful, but it’s a royal pain in the you know what, and it’s gonna cost legal fees as well, and probably some sleep for that business owner. These are stresses that people just don’t

Steven Weigler 33:04

need. I sold the business. And the other thing is, if you can prove our point is prevention. It’s not that different than medicine is prevention is, is 20 times cheaper, and less painful than going through it with prevention doesn’t reality.

Joe Valley 33:19

Come on, we know that it doesn’t sell but we are talking about

Steven Weigler 33:23

we’re trying to make ourselves cheap enough and say, when you buy an insurance policy on this once you for a couple $1,000 I realize money’s tight in a startup, but for a couple $1,000 once you execute a strategy to make sure that you can get to the m&a table. Yeah.

Joe Valley 33:43

Now listen, I wouldn’t have you on if I didn’t believe fully that people have to spend a little bit of money to get this protection in place. I had a client last year, we were three days away from closing. And they got a they got completely suspended from Amazon because they had literally factually file infringed on someone’s utility patent. And this is a person that lived in the US. And what they did was they just faked their way into a utility patent with you know, dates that weren’t accurate. These guys were selling the product first and it was from a manufacturer in China who gave this seller information in order for them to be able to file for a patent that he didn’t deserve. And the USPTO didn’t pick it up. And eventually, you know, we fought our way through it. We got through it and still closed my seller. She stopped eating for a while. She lost some weight is a great, great weight loss program but a very expensive one anymore. We managed to get the owner of the patent who knew he got it falsely, and knew that if my client wanted to fight it, they’d be able to fight it. And when it’s just would have taken years, he apparently didn’t know that. We got them to release them from being able to sell the product online, he didn’t know they were under contract to actually sell their business. And that was a critical part of it. But it’s stuff you don’t want to do after the fact, guys, it’s just that much more difficult to fight these things when you don’t have the protections in place in the first place. So I’m doing it now. With with Steve, on a separate business, I mentioned a few times I’m gonna leave it alone. It’s part of Quiet Light, it’s outside of Quiet Light at the same time. And we’re actually ones that somebody disputed it, they’re dead wrong. And we’re going to show them that they’re dead wrong, I had a choice. I could walk away and say, it doesn’t matter in this situation, that’s okay. It doesn’t matter. And it may or may not. But honestly, they pissed me off. So I’m going to spend money and have Steve fight it all the way through because they’re dead wrong. And it’s unfair. And I don’t like when people fight dirty. And that’s exactly what these people are doing. And and if I if I allow people to fight dirty, and you allow people to fight dirty, you’re going to lose sleep, and it’s just going to cause you more problems down the road. Somebody must have just showed up to my office because the dogs are getting activity. So we better wrap up this podcast before they start barking. How do people find out about EmergeCounsel, where’s the best way for them to reach out to you?

Steven Weigler 36:39

Sure. So it’s www.emergecounsel.com. We also have www.totaltm.com And we offer a free counsel and knockout search. So we’re we’re kind of just making sure that we’re in the same ballpark, on being able to get this, this trademark, and all you have to do is reach out, I’ll give you my cell phone number 720-480-8204. Because any listener Joe’s and who knows, Steve is, I want to make sure that I at least am accessible. And again, just for the record, we don’t push a lot of patents. And we don’t push them because they’re very expensive to maintain and defend against. At the same time, if there is one there, I’m certainly we’re not going to stay away from it. Because that will help Joe at the m&a table. Because patents really can create value defense, so not always. Yep. Um, and then the second thing is, just keep in mind that this little bit of prevention is not even a particularly robust part of, of how attorneys make money. They make money to the disputes, because that will, I’m working on a dispute right now, that is going to at least take me 70 hours this week. And it’s just the way things go. There’s because in a dispute, the facts in the law really matter. And you need to pay someone to, to get to the bottom of those facts and law and you have a federal court most of the time underneath it. And those are just, you know, kind of fat per turn. So, again, the prevention is not something it’s not like a pitch or anything. It’s just like, what I hope you guys think about because the other side is really nasty. And it happens when you guys are successful.

Joe Valley 38:43

Now it’s never, I never pitch on the Quiet Light Podcast. And you know, when we first met you were just helpful, helpful, helpful. the homepage of your website says strategic, empathetic IP and business counsel. And that’s exactly what it is, folks. If you need any help with any IP at all, I’d urge you to reach out to Steve that emergecounsel.com. I have a cell phone number, but I can’t I didn’t write it down when he gave it. I’m amazed that he gave out his cell phone number. Everybody call him at midnight on March.

Steven Weigler 39:17

I mean, I’m mountain time.

Joe Valley 39:20

And I might be turned off from now on.

Steven Weigler 39:23

Now. Anyone can call me anytime. I mean, you’re my clients. So in front, so whatever.

Joe Valley 39:28

It’s all good. I like it. I like it. This is small business attorney right here. Not fearful not I’m just really truly helping first, I guess, Steve, thanks for coming on the Quiet Light Podcast. I greatly appreciate it.

Steven Weigler 39:42

Good to see you.

Joe Valley 39:45

And that’s a wrap. Thanks again, folks for listening to the Quiet Light Podcast greatly appreciate it. Help us out. This is the year where we’re gonna keep asking for reviews. We want to see them jump up every single week. Please go to your favorite podcast app and give us a review. Help us out. We want to grow the business and help more people. Much appreciated. We’ll talk to you all next week.

Outro 40:10

Today’s podcast was produced by Rise25 and the Quiet Light Podcast content team. If you have a suggestion for a future podcast subject your guests Email us at [email protected] Be sure to follow us on YouTube, Facebook, LinkedIn, Twitter and Instagram and subscribe to the show wherever you get your podcasts. Thanks for listening. We’ll see you next week.

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