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Conversations with business leaders and changemakers on how they built their business and what keeps them going.
Pankaj Raval (00:03)
All right, everyone, welcome back to Letters of Intent. My name is Pankaj Raval. I'm the co-host and founder of Carbon Law Group, and I'm joined today by my co-host, Sahil Chaudry. Sahil, how are you, man?
Sahil Chaudry (00:12)
I am Sahil Chaudry, corporate attorney with Carbon Law Group, and I'm very excited for today's episode. Today, Pankaj, we're gonna be diving into an issue that affects every business owner and is your expertise. Carbon Law Group has been a leader in IP when it comes to...
trademarks when it comes to contracts, when it comes to registrations, and there's a lot of complexity involved in IP. And if you're a business owner, this is actually maybe unknowingly potentially your most valuable asset. I think people don't realize that when they're coming up with a name or a logo or a trademark, this is an asset that is going to serve you when it comes time for a sale or licensing. This is a major revenue generator. So I want to talk about IP.
Today we are in a globalized world. The world is flat. We are interacting and engaging with business people across borders. We're selling our products and services across borders. So it can be very confusing to figure out how do we protect our brand internationally. So I want to dive right in Pankaj.
A lot of US founders assume that their US trademark protects them globally. Can we start by examining when a business owner is launching a business and they want to register a trademark, do they just need to think about the US or are there other?
countries or other international systems that let them register their trademark internationally? How does a business owner, especially a small to midsize business owner, think about their trademark when they're launching their business?
Pankaj Raval (01:43)
Yeah, sounds great question and you something that I think a lot of business owners overlook honestly when they're when they're thinking about a brand or thinking about a brand name. A lot of them are just a lot of people come to us so kind of concerned with okay, you know, can I get this mark here? Can it does it work? You know, there are other people that might block me if they even get to if they even do like a proper search. Some people just register without even thinking about these things. So if they are, you know, little
a little bit ahead of the game, a little bit more sophisticated and realize, okay, yeah, you've got to do a search. You've to clear the name. Now, you you have to look at the industry you're in. So, you know, if you're a local restaurant, you know, with family-owned business, plans of going globally, okay, yeah, maybe you can constrict your search to the US, right? Because you also want to make sure that you're not conflicting with someone else who has a trademark in another state.
But if you're like a CPG brand, if you're a cosmetics brand, if you're a apparel brand, where there's a very real possibility that you could be selling overseas, and there could be a demand for your product in other countries, you need to be thinking about the global protection, not just local. And I think that's something that a lot of people forget to do is that, hey, we can do a search for you in the US. But if you're a brand, if you're an alcohol brand, if you're a, you know,
car brand, if you know, there's all these different products that are also sold overseas, you want to make sure that you are locking down that product name here, but also in the other countries that you're operating in. For example, you know, we work with a lot of cosmetics brands. And a lot of one of things we do is like, say, Hey, yeah, one issue is the name here. But what about people operating in other countries? And people also really need to remember that, that the US actually has a slightly different trademark paradigm and regime than it does than other countries in the US.
there's kind of two elements to trademark protection. It's actual use in commerce, but also and also filing and other countries oftentimes is just whoever's first to file. So if you're the first to file a name, even if you're not using it, you're going to get rights to that. And and companies like Apple have dealt with this. know, someone registered the iPad trademark in China and Apple fought that for a long time to try to get that trademark for them. So a lot of issues that people need to consider if you're if you're a product, company selling a product.
If there's a potential that you may be operating in another country, you need to make sure that you are registering and protecting in these other countries.
Sahil Chaudry (04:01)
So cosmetics, that's a really good example. It's a product that you could ship all over the world. So you've got a website, you've got a brand name, you're based out of LA, let's say, but now you're selling in Europe, you're selling in South America or Asia. Does that matter? Like, do I need to, if I want to sell in these other countries, do I need to register a trademark there?
Pankaj Raval (04:22)
Absolutely, yeah, mean, you need to think about it for two reasons, right? So IP protection in general is relevant for two reasons, and the most simple way to put it is like offense and defense, right? You've gotta be able to play both. So you've gotta be offensive, meaning that you've gotta actually be proactive in the marks so you can actually sell in those countries and you don't infringe on something else as good. You're also offensive because you wanna prevent others from trying to take
take that mark before you. So if you're selling in the US but maybe you don't have plans to expand to Asia or the UK quite yet, you still need to be offensive and register in those countries because once someone you're selling here, they very much could just easily file for a trademark in China, in the UK, a European country, the EU, and now you have to fight them and now you have to kind of be defensive because now you have to kind of
fight them for that mark and argue why you should have rights to it. And in many cases, you may not even have rights to it because those are first to file regimes. So you got to be offensive got to be defensive. You got to be filing here, but also protecting other places against people who may try to squat on your name, but also to prevent others from entering the market and competing with you a confusingly similar name.
Sahil Chaudry (05:37)
So does that happen where you launch a successful brand in the US, you have the trademark, and it's doing really well abroad, and then someone internationally files the exact same trademark name to leverage your goodwill?
Pankaj Raval (05:50)
Absolutely. Absolutely. It happens a lot more than people realize. you ⁓ know, for example, Apple, Apple had to fight for the ⁓ iPad trademark for a long time. I think Apple also had to deal with a lot of like, I like people, you know, they use that I for a while in front of their different product names. And I believe they dropped that because all these conflicts, everyone else is registering I as well in front of some whatever product it was.
and they're seeing a lot of there. So they've now turned to the Apple, you know, just the Apple logo with the Apple phone or iPhone. So you can see that they've actually moved away from that for branding purposes. So those are things you got to keep in mind as a smaller business or as someone who's trying to sell it overseas. how do you create a distinctive brand, your brand identity you have right now to expand it to other product lines overseas? But you want to make sure that
You are clearing your mark in those other countries as well before you move forward with a huge push and capital in your brand.
Sahil Chaudry (06:51)
well, is it expensive? Like let's say I wanna register my trademark internationally, how much is that gonna run me?
Pankaj Raval (06:58)
Good question. And is it expensive is always question I get from a lot of clients and obviously relative, right? If you're a multi-million dollar business, it's not expensive. If you're just starting out, you don't have a lot of capital, could be expensive. it's all kind of relative, but also it's expensive to fight for these things. It's expensive to build a brand and now have to be money on litigation, right?
It's kind of you want to also consider as owner, brand owner, when do you want to incur that expense? Do you want to incur the expense now and be preventative and make sure that you have the rights? Or do you want to deal with that expense later on when potentially you have someone who's arguing that challenging your brand or you're unable to get your trademark in those countries and now potentially unable to sell your product in those countries? What's more expensive for you is a question I often ask my clients and people come to me with that question. So
⁓ As far as like actual numbers, there's two ways of registering a trademark generally globally one is through something called WIPO based on the Madrid Protocol It's an international kind of treaty that many about 90 I think over a hundred countries are part of so Madrid Protocol It's a treaty between all these countries that says okay, you can use a WIPO. It's central service to register your marks
in multiple countries. You kind of check the box on which countries you want to file in and it actually files your trademark in all those countries at once and then you pay a filing fee. It's still not cheap. You're still going to be spending five to $10,000 maybe based on the number of countries you're going to be registering in, but could be cheaper than going individually to each country. The downside of going with WIPO is that if someone were to challenge your mark, they can challenge it.
centrally through WIPO and potentially invalidate all your filings at once if they find there's some issue with your filing. which is why oftentimes the more sophisticated, larger companies will have us work with our partners in each country. We have cultivated a network of lawyers and law firms around the world that we work with, that we use to register with using them in those local jurisdictions.
country by country. And that means that if there's a problem with one country, it's not going to affect the other countries involved. So that's why a lot of times people will opt for going country by country as opposed to using WIPO. But you know, if in a pinch, if you want to save a little money, if you're not ready to make that investment, WIPO is a good option and opportunity for a lot of clients.
Sahil Chaudry (09:17)
And let's talk about timeline. If you're using WIPO, the Madrid Protocol, from the date that you file, how soon can you expect your trademark to be registered?
Pankaj Raval (09:27)
mean, realistically, if you don't get an office action, then you're probably looking at like six to nine months with WIPO. If you do get an office action in those countries, you do have to hire local counsel then to kind of argue why your marks should be pushed through in that country, which will probably delay it three to six months. So, you know, if you're able to overcome the objection. We've been successful in many situations, but in some situations, perhaps there's a conflict that the other party fights it. And now, you you can't really ⁓
can't really get around it in that country. Which is why also it's good to do those searches first to understand, you know, what are the risks out there before you file. But yeah, you're looking at probably six to nine months now, because there's been a lot more filings lately, maybe up to 12 months, like in the US right now, it's usually around, 10 to 12 months. there's other countries, yeah, six to nine. But then, depending on on office action, it could be more.
Sahil Chaudry (10:12)
So once a founder files internationally, what ongoing monitoring or enforcement should they plan for?
Pankaj Raval (10:19)
That's a great question. So that's another big area that I think people forget about a lot of business owners saying, I filed now don't worry about it. You do have to worry about you do have to kind of continue to monitor your mark. Because you know, if you allow people to infringe on your on your mark, and don't do anything, you could lose your rights, you could lose your rights to enforce that mark. So it's really important in the US and also globally to continue to be monitoring your brand, doing Google searches, doing the setting up a Google alert to see if your name ever pops up.
Because ⁓ if your name is popping up and people are using your name, you want to be aware of that and you want to take be proactive and make sure that it doesn't continue to cause consumer confusion because that's terrible for your brand. It's terrible for someone to use your name and essentially profit off your goodwill and now dilute your brand and essentially cause your consumers to not trust potentially your brand and where it's coming from.
Sahil Chaudry (11:09)
So does this apply to manufacturers as well as sellers? Let's say I have a brand that I'm selling in the U.S. but I'm manufacturing it in Mexico. Do I have to register my brand in Mexico too?
Pankaj Raval (11:20)
that's a great question. And yes, I mean, I would say it's a good idea to do that. Because as you you know, your experience with with apparel in India and other places, it's important to have your marks in those countries as well. Because what we see oftentimes, and you can probably attest to this is that some factories will try to sell your your goods, you know, without you knowing some factories will try sell under your brand name or, or see an opportunity and you knowing that.
be most proactive and to be safest, it's always good to have a really good manufacturing agreement in place that protects your IP, but also your IP in those countries in which you're manufacturing.
Sahil Chaudry (11:55)
in the years you've been practicing IP law and trademarks, what's the biggest mistake you see founders make over and over again?
Pankaj Raval (12:03)
it's waiting too long to kind of start their brand analysis and do their trademark due diligence. Too many people come to us too late in the game where they've already spent tons of money and time in their advertising for their brand and then say, OK, the last thing we should do is probably get this trademark. You should be thinking about that first. You know, you have a very brand forward product like cosmetics or apparel or whatever might be.
You should be thinking about that sooner because you need to make sure it's cleared and you need to make sure that because the process to registration takes nine to 12 months, you want to start that earlier rather than later. So you have the registered markets at some point earlier in the game. And also, yeah, just being being proactive with with monitoring. You know, this is another area where people forget they need to really be proactive with it, you know, on social media now, as well as in a.
all types of sales and use on the internet. You want to really proactive. And this is something we help a lot with is sending cease and desist letters, people know immediately, hey, we see infringement, we want to be on it. we're going to send them a very nasty letter, oftentimes saying, you we want to be nasty, but also, don't want to have this blow up in the media. say, hey, you know, what you're doing illegal. it's violating our intellectual property rights.
We need to stop immediately and show us that you've stopped, prove that you stopped. Otherwise will engage and usually file a lawsuit using one of our local partners if it's in another country.
Sahil Chaudry (13:24)
and what happens if you do nothing? Like let's say someone starts using your name and you say, well, you know what, I'm not selling in Portugal and some Portuguese company is selling under your name, I'm selling in the US. What happens if you do nothing? You don't send a cease and desist and you don't engage?
Pankaj Raval (13:38)
I mean, you could very well lose your rights that person. the end of the day may lose your rights. If it goes on long enough, they could argue, no longer have the rights to enforce your brand here because you didn't do anything about this. And now you're kind of stuck. you could still fight going to be a much steeper hill to of your
Sahil Chaudry (13:57)
Yeah, that's a very interesting concept in the law where there's such a responsibility placed on a business owner or any property owner actually, whether it's real estate or IP, the government expects you to fight for your rights. And if you don't, your rights erode. So I think that's something that founders wouldn't really expect is that if you do nothing, you're creating confusion and then the government will take that into account.
Pankaj Raval (14:09)
Yeah.
Sahil Chaudry (14:20)
when we're talking about the USPTO, we're talking about the rules in the US. But when we're talking about internationally, there are these treaties that apply. so is there a governing body that maintains a registry of all of these international trademarks? Or does each country enforce their trademarks separately under the treaty? How does that work practically?
Pankaj Raval (14:41)
Yeah, so it really depends on how you register it. There is a Madrid protocol where you can enforce it under the WIPO and through those, methods. But generally speaking, if you register in each country, then you have to file in each country to to protect it. And, you know, we oftentimes will do that with local partners to enforce people's rights. Unfortunately, the legal systems in other countries, you know, maybe not as developed as us. You know, it could take a lot longer, you know, in India.
Court cases can go on for years and years, know tens of years and so those are things you have to be kind of be aware of and that's also where strategy comes in right? What's the most effective way to to address this? there PR issues we should consider this is also where you know, we like to kind of think about this strategically and creatively with our clients because the reality is enforcing your your rights in the court can be very slow
not very helpful for businesses. know, very, could be detrimental because you could be just waiting years and people know that, especially like in China and things like that. Like you could be, it could be years before you can do anything. So what can you do to stop it now? You know, you could make, you know, you can make complaints to the platforms that it's being sold on, you know, on Etsy or on TikTok or whatever it might be and say, Hey, you know, this is a violation of our trademark. You need to show them proof that you have a trademark and then maybe they'll take it down.
So there's different ways you have to think about enforcing your mark, not just filing a lawsuit, but this is something that we like to do and we do with our clients when something comes up, how can we address this? nip this in the bud before it becomes a bigger issue?
Sahil Chaudry (16:08)
Should our listeners trademark their TikTok handles?
Pankaj Raval (16:11)
I think it's a great idea. because now someone comes out with something confusingly similar, say, hey, I have a valid trademark for this. You're infringing on my rights. you could sue for damages, are things you could do. Proving damages in trademark is not as easy. Copyrights have like statutory damages, especially if you're doing like something counterfeit or even like, you know, copying something in copyright.
But still there are damages in trademark law. you have more more tools at your disposal when you have a registration versus not have a registration. And I think that's one of the main things I want people to take away today.
Sahil Chaudry (16:43)
So in the age of social media, people can build a brand through these platforms, nobody, you know, we don't own that platform. We own access to the platform.
In that case, does it still make sense to file a trademark? Like, let's say I have an Instagram handle. Now I've gained 5 million followers. What's the benefit to me of filing a How do I enforce that? What are my rights? Where do my rights start and where do the platform's rights start?
Pankaj Raval (17:08)
Very good question. So where do your rights start and where the platform's rights start? platform does have a lot of rights, you know, and it kind of really depends on their terms of everyone should kind of be familiar with those because, know, for example, on some platforms, people have the right to repost, but others, maybe they What are those rights? As far as your handle goes, we see a lot of copycats out there on Instagram, TikTok.
people will say, my handle is Pankaj Raval and someone puts Pankaj Raval underscore space space exclamation mark, right? So now that's a whole different account that someone could leverage my name and post whatever they want. And not as much I can do about it. You could make a complaint to Instagram and TikTok, but if you show them, hey, I also have a trademark to this. a valid right to it.
they're going to be much quicker to act. also, because of DMCA in certain instances, platforms do have an act quickly. better when you copyright to images as well as a trademark to name, because it forces these platforms to act. And also, you can name them in a lawsuit if they don't take action.
Sahil Chaudry (18:15)
So if we had to sum up a brief strategy for either a founder or someone who's launching a new brand today, what's the first step they should take?
Pankaj Raval (18:24)
early on in the process, you need to be thinking about the importance of your brand and what you want to do with it. Do you want to expand into merchandise as an influencer? Do you want to expand into different products? Will you be looking at your sale of cosmetics if you're an influencer, right? And if you are, then you need to think about, how do you protect your name? How do you protect your brand? And how do you do it globally?
⁓ I mean, starting with the US is probably good, but I think globally, Mexico, where there's a potential that you might be selling sooner rather than later, you need to be thinking about that now, especially if you're serious about the business. I think it's something very much worthwhile a very important investment to make.
Sahil Chaudry (19:00)
Well, Pankaj, thank you so much for the information. ⁓ IP is complicated, but we make it simple here at Carbon. Stay tuned for more information on corporate law, IP, corporate governance. We are here to be your deal counsel and here to guide you as you take your big bold risks in the world of business.
Pankaj Raval (19:03)
My pleasure. Yes.
Wonderful. Thanks, Sahil, for a great conversation, great questions. And yes, if anyone has questions about IP, please leave them in the comments. Like, share, follow. We always love to hear from our listeners. We want to know why you're listening, what you're listening to, what you're looking out for. And if you're looking for a consult or more advice, please reach out. love to help. And someone will be in touch.
Thanks.