The Virtual CMO

Protecting Your Product Innovations and Intellectual Property with Devin Miller

May 27, 2021 Eric Dickmann, Devin Miller Season 5 Episode 6
The Virtual CMO
Protecting Your Product Innovations and Intellectual Property with Devin Miller
Show Notes Transcript

In episode 72, host Eric Dickmann speaks with Devin Miller, Founder and CEO of Miller IP Law. Devin just loves startups! He established his own first startup while earning his Law & MBA degrees. Since then, Devin has set up several 7/8 figure startups and enjoyed every minute of it. He has a real passion for a new business model--the prospect of a business startup always makes Devin's heart race!

Devin is an entrepreneur and a patent and trademark attorney. He obtained several degrees including a Law degree (JD) and a Masters in Business Administration. Miller even has degrees in Electrical Engineering and Mandarin Chinese!

While working for a large law firm helping Fortune 100 clients like Amazon.com, Intel, Redhat, and Ford with their intellectual property, he quickly realized that there weren’t many good intellectual property legal resources out there for start-ups and small businesses. As an entrepreneur himself, Devin wanted to help other small business owners learn about patents, trademarks, and copyrights so they can build value into their businesses and protect their assets.

In addition to founding and running his own patent and trademark law firm, Miller IP Law, Devin is the co-founder of several startups including a multi-million dollar startup for wearable glucose monitoring. He also runs a product development company that helps startups and small businesses with developing their ideas and products.

For show notes and a  list of resources mentioned in this episode, please visit: https://fiveechelon.com/protecting-product-innovations-intellectual-property-s5e6/

A fractional CMO can help build out a comprehensive marketing strategy and execute targeted campaigns designed to increase awareness and generate demand for your business...without the expense of a full-time hire.

The Five Echelon Group - Fractional CMO and strategic marketing advisory services designed for SMBs looking to grow. Learn more at: 

https://fiveechelon.com


Eric Dickmann:

Welcome to The Virtual CMO podcast. I'm your host, Eric Dickmann. In this podcast, we have conversations with marketing professionals who share the strategies, tactics, and mindset you can use to improve the effectiveness of your marketing activities and grow your business. This week, I'm excited to welcome Devin Miller to the podcast. Devin is a patent and trademark attorney and CEO and Founder of Miller IP Law. He also runs a product development company that helps startups and small businesses with developing their ideas and products. Devin is the co-founder of several startups, including a multimillion dollar startup for wearable glucose monitoring. He hosts the Inventive Journey podcast, where he talks to entrepreneurs, CEOs, and inventors on their path towards their startup success. Today, we're going to be talking about the importance of protecting your innovations by filing patents and trademarks. Please help me welcome Devin to the program. Hey, Devin. Welcome to The Virtual CMO Podcast. I'm really glad you could join us today.

Devin Miller:

Absolutely. I'm excited to be here. So thanks for having me on.

Eric Dickmann:

Let's kind of kick things off and just tell the audience a little bit about yourself.

Devin Miller:

Shortest questions always have the longest answer. So I'll try and keep it a bit shorter. So um I've got uh educational wise I ended up getting four degrees which my wife always says it was three degrees too many. So I have a electrical engineering degree, Mandarin Chinese, Masters of Business Administration, as well as a Law degree. Um as far as um family, so a father of four, I have four kids between the ages of six and 10 and uh also been married for 13 years and then a little bit on uh the career side of my of my uh background, so I've uh I kind of always had two passions. I love entrepreneurship, done several startups that have I've grown to seven and eight figure businesses, I also love the law. And so I always kind of have those I dunno competing interests because they work well together. But always kind of have those two passions that I chase. Right now um as long with some of the startups I do I also have Miller IP Law where he help startups and small businesses with their patents and trademarks, and other business related things. So that's just a a quick intro on myself and that could be a much longer conversation but I'll pause there.

Eric Dickmann:

I really don't get what you do to stay busy, you know? It sounds like you have a pretty relaxed life. So I'm curious you said this is one of several businesses that you've started. What was really the entree into your path as an entrepreneur Did it just grab you early and you just decided this is what you wanted to do, or did you stumble into it? How did that happen?

Devin Miller:

Yeah I mean it's probably always been to some degree in interests. And you know what I would say the the the real main entrance or the real for first foray was backing up to undergraduate. I kind of was getting towards the end of an engineering degree which was kind of a main focus, The Chinese was a secondary focus. And so I got to the end of that and said you know I like engineering but I don't want to be an engineer in the sense that I liked working on projects, like understanding how thing works seeing technology But I didn't want to be stuck on one project for months or years on end. Typically the engineering industry after work you know 15, 20 years of your career to really get up to management, be able to see all the big picture and have an impact. So it's I don't know that I want to do that So I kind of had two kinds of competing interests. I loved entrepreneurship, startups, small businesses, and I also loved the law, and I thought the Intellectual Property patents, trademarks were pretty interesting so that's why I ended up just doing double major. I decided I wasn't going to choose I just decided to do bowl, and so as I was going through the doing the double major, just give me a give me a context to talk about being busy I was doing two majors so do a law degree and MBA I'd had our first kid was two years old, we just had a newborn, I was working 20 hours as a law clerk and then I can't remember I was trying to remember back I never really remember It was either an email or a poster And I can't remember where I saw a uh basically said Hey enter a business competition It's one where Bolt I disciplinary different people. You all come together nobody knows each other You form a team and you put into a business competition So I went there thought it sounded like fun, we formed a team We enter something the first year that made gym bags, less gym bags less smelly didn't really go anywhere, came back the second year and um we were saying okay what can we do we're brainstorming self packing boxes and other crazy ideas. None of which really would have work and about that time I'd ran my first marathon So I'm like wouldn't it be cool if you're out of athletics running in that to be able to monitor your hydration level. And this was in the days before Fitbit or Iwatch really wasn't any wearables, so I'd say that'd be great If you could have a watch that can monitor your hydration level So that was kind of we came up the idea, pitch it to the Group I actually came home over Christmas break, worked on it with my dad that's also an engineer, built out the prototype tested it. We entered in the competition took second, which is a bittersweet, it's a much longer story or a gripe session Ion my part. But then I got to the end and I said Hey I think this has some our legs too I think it can actually go somewhere So I bought out the rest of the people that that were partners in the business competition, kept going on it and that business in a different form is still going today, and that was probably the first real foray I got into the entrepreneur side.

Eric Dickmann:

So many people have that entrepreneurial idea, right? They have something and then say, Oh there might be something to this. I see a real need. There's something that could be built here that could really solve a problem, but then they go to sleep and that's the end of it. They never take any action on it. And I'm sure as you've talked to a lot of startups and other entrepreneurs, the difference is these people took action.

Devin Miller:

Yeah and that's always you know I work with I've done I don't know three or four star five star I can't remember now how many startups and I've also I work with a ton of them on the IP side, and the difference is always you know I always say you know ideas are a diamond dozen people We sync the hard thing with businesses as they come up That one great idea There are people that have great ideas all the time and some of them really are good ideas And yet it's execution It's actually doing something with that idea actually implementing it building it into something That's the hard part So yeah ideas are diamond dozen It's the implementation That's the hard thing And that it separates It's people

Eric Dickmann:

So one of the things that I'm really interested to get into with you is when businesses start out, the things that they love to invest in are the fun things, right? Let me go get my business card, let me get my website done, let me do that fun stuff, and then yeah maybe somewhere down the line, I'll hire an accountant and then maybe even further down the line, I'll hire a lawyer because all these contracts that I'm using, I just downloaded from the internet. And, oh by the way we do have a really cool product idea but we haven't done anything to protect it. When in your business do you see people you know knocking on that door for the first time? What is usually the trigger if you will for somebody to come and see you?

Devin Miller:

Yeah And my quick or quick recommendation, do it a lot earlier than when do I get all the way to the business. I usually see it at two kinds of bands or two type of ends, one is a bad time and one is a fun time. I'll give you the bad time first. Problem I sometimes will see is people will say, Oh I've been in the business for four or five years, and I finally got to where we have a bit of money and we're just getting going, getting some traction, and now we should go get a patent or we should go get a trademark. And And then what's the uncomfortable because some of them have deadlines in the US and most of the rest of the world, if a patent, if it's in the public domain, you know put on a website out in the uh out in the public, to trade shows, sell it to people, you have one year from the time you originally put it in the public domain within what you can file a patent. If you miss that year, everybody gets to use it. And so we'll get people to walk in, Oh it's been three years we've been selling this product, just finally starting to take off, and I usually have a conversation- That's great that you have a great business. That's great that you got to get product. I can't help you because we're already past that year mark. So that's kind of the one thing where they get far enough along that they finally decide they'll get around to it, and by that time it's usually more costly cost of Eric, you know more expensive and more difficult if there are options. The other time that a lot of times you'll see it as when people are getting started And that's a better time to really come see an attorney And sometimes they're too early Sometimes they have an idea They're just working it out but they want to come in get a strategy get it And a roadmap in place which I think is a great idea If you're starting a business even if you're early on Go talk to the accountant go talk to the attorney Most people will give you and I'll do it And a lot of other attorneys will give you a 15 minute consult for free Give you at least some ideas of term timeframes and strategies And when you should start but go talk with them That's when they usually come in at somewhere around that The time that I'm best able to help them as they're getting going We strategize and either Are ready going then or we say Hey I'd wait three or six months and kind of down the road This is when you'd want to consider getting started And that's when they get going So it was kind of those two timeframes Better is the beginning But sometimes if you if you get the cease and desist letter you get down the road still go talk to an attorney because they can still generally help you It just gets more expensive and more difficult

Eric Dickmann:

One of the things that we talk about a lot on this program is that most products that are out there are not truly revolutionary products, they're an incremental improvement over something else that is there. I want to come to market with a new calendar program, and I've come up with this great idea that you can have alarms with it, or something like that. So you're not reinventing the wheel, you're just adding something that makes your product slightly different or more interesting than someone else's. In the world of intellectual property, that seems to get really hairy because maybe somebody owns a patent on a calendar or a widget or whatever it may be, but you've done something that's taken that in a slightly different direction. It's not the same thing, it's slightly different. You know without getting into too much of the depth of the law here, how do you start to figure out what you've actually got that you can protect?

Devin Miller:

Yeah and let me give me an example then I'll answer your question. You know kind of what you said, hard to completely create something new. Even if you were to say automobiles change the world, well there were horses and buggies before that, there were trains before that, after that there've been airplanes, there've been semi-trucks, there've been a whole bunch of things. So transportation has always been around and yet there's been that incremental horse and buggy was better than just riding a horse Right Uh B uh train was better than horse and buggy, a car or personal vehicles better than that. So you know there's always that incremental thing but where are you look at It is you know the example I always give is you know let's say you Came up with the black and white television, revolutionary. Everybody needs wants when everybody buys one and then somebody else comes along and they embed the color television So originally black and white color televisions and add addition great innovation took a lot of work to figure out how to make it in color but it adds on top of that. Then the question is is okay If I'm the guy that comes up with the television black and White I'm probably, Okay, first to create, first to invent. what about the black and white or the color television? It builds on top of it. It does something new And so when you get into that kind of thing, two standards is to get into patent or when you get into patentability. One is called novelty, other one's called obviousness. Novelty is basically any is anybody else Eric created this invention before they invented it before If so you can't get a patent So Black and white television, color television They're different So if you've got if they're the guy that does the color television, you're fine because the guy didn't are black and white color guide didn't create the color, so he didn't invent that. Second question you always have to ask is what's called obviousness and obviousness is kind of like well no one person has created this but if you were to take two or more things already on the marketplace combine them together You're really not adding anything new, you're just combining two things already out there in an obvious way. And so again that one is one where black and white television, color television while there's really not an obvious combination to make a color television. You're taking one thing but you're adding something new, so in that sense you're patentable. Now the other question that oftentimes people get a bit confused about is just because you're getting a patent doesn't mean you don't infringe on somebody else's intellectual property. So you take that same example Way Patton's work is if I get if I'm the guy that has a black and white television and let's say there's three components to my television just to make it easy A B and C I get a patent and says if you create an invention that as a B and C you infringe my patent Now I come along and make The The color television let's say I need ABC And then to make it color I need DNA Why you can get a patent because D and D are new They're not they're not haven't been previously invented They're not obvious So I can get a patent on the part that makes the color television but I'm still infringing the black and white television because mine has a B and C So you have to look at when you're getting a patent One is you can get something patent that's additive you mail It may still not be able to go and produce that unless you get a license you get permission you acquire it or otherwise work out a deal with the person that has the underlying technology I know that was a bit of a longer answer but that kind of gives A flavor for when they start to get into that

Eric Dickmann:

No, I think that was a great answer because I'm a huge Apple fan, so I follow them in the news all the time, and they're getting sued daily for these very minor little pieces of functionality that somebody has said that they've infringed upon. And it it goes back to your description there. Its a very small part of a bigger product, but somebody owns the patent of that very small part so they're going after them, because obviously they've got a big checkbook, and that gets into the whole subject of patent trolls and whatnot. But we won't go there today. But I think it's really interesting, how does this apply to software? I think I remember back in the days when AMD came out with a competitor chip to Intel, and it basically was a chip that performed the exact same function, but as long as they built it without ever seeing the Intel functionality, that was okay. Is that an accurate representation of what was happening there?

Devin Miller:

So the way patents work is it's kind of that again that A, B, and C so functionality or patents if it's a utility patent go towards functionalities they take the Intel versus AMD. They can have something that in the end does the same thing but if it has different components or works a different way, they don't necessarily infringe. So let's say Intel has again just using the simple example A, B and C and Andy came out and says, well we really need A, we really need B, we don't need C, we can do D instead. And so they'd figured out basically how to design around it. Well then they don't infringe on the Intel's patent even though they accomplished the same overall functionality of a chip though you know runs a program and run software because Intel has a pan on A, B, and C AMD figured out how to do it differently with AB and D. And so they both have patents, neither infringed, both can sell chips. And so and then you know the one interesting thing that people always you know look at or kind of hit on is you know sometimes it's that small and incremental variation They're saying how can they get a patent on that Well first of all the problem is always hindsight Bias has always every time after you see how somebody has invented at how The After you know how the magic trick works it loses his magic same thing with an invention Once you figure it out Oh yeah that makes sense I that And it's a person that fierce figures it out creates it test it out Does the R and D does all of that research puts all the time into it then it's you know that's why they get a patent on it And so that's why it's kind of you know after the fact you see a lot of those you're saying Oh those are simple but there was a lot of a lot most of the time a lot of time or research and effort that went into figuring out that minor variation that gives you that much better

Eric Dickmann:

So how does that apply to software? Because there are so many programs out there that really do very similar things, they have different user interfaces, and different ways of doing it, so is it the same model that's still in effect there, or is it because they've come up with an idea, something that is very unique within their software that there's still something that they can patent to keep people from doing the same thing?

Devin Miller:

Yeah, software is one of those where it's always it's it's it's never the same ,Eric. It's always a bit shifting ground So you know if you're going to go back 10 years ago it was fairly easy to get relatively easy to get a software patent They were pretty open And then about six or seven years ago you had some just really bad software patents that got through And they were basically taking things that people did in their head or on pen and paper They put it on a computer really didn't add anything new patent office they shouldn't have but they let any way get them through And so then you went to get all the way up to the Supreme court and anytime you get the Supreme court involved in patents they usually Mess it up but they you know The So the pendulum kind of swung from really easy Then the Supreme court took a look at this and these are junk patents which they were and they swung the pendulum to make it really hard to get a software patent And then kind of over you know over the course of the last five years has kind of swung back more into the middle So where it's not as easy as it once was It's not as difficult as it used to be but when you do patents kind of what all came out of that as in More interpretation of what's kind of called abstract ideas which is kind of when you get into software there's that third criteria we talked about Novelty obviousness If you ended up the software you kind of have what's called abstraction And basically ideas You're not able to patent something that is people can do in their head They can do And pen and paper they've done for a lot of long period of time If all you're doing is putting it on a computer or on a device if you're As an example you can't take two plus two People have always been doing math They can't just stick it on Or on a computer do two plus two equals four Now because I'm doing on a computer you can just go patent that Now with that said there's a lot of software pans out there that are very good And you take an example A few different fields Augmented reality that's really run on a lot of software And yet there's a lot of things that go into how you make sense or measurements how you display things how you rotate them how you interact with them Always take a lot of in or a lot of inventing a lot of time in development with software and you had a really software base And so that's another one Augmented reality is one You take AI or machine learning artificial insurance in intelligence or machine learning That's another area where you're trying to basically train it train a computer How to think very difficult takes a lot of work And so you can do that One of the interesting ones is even when you get into now again Hindsight is 20 or 2020 bias YouTube which is owned by now My Google came up with a patent and if you have most phones you can start to watch a video YouTube or watch Netflix and you want to scroll out and start looking at the internet or looking at your email You can scroll out and take the big screen make it a little screen and you can then move it around while you're interacting Well that took a lot of engineering now a simple once you see that but it took a lot of figuring out how do you make it Or small how do you make it So everything else that you can interact with it how do you move it around And so there's a lot of things that are incremental So yeah softwares Area where the pendulum kind of swings back and forth right now we're kind of in the middle It'll probably swing one way or the other again but definitely room to navigate in But one where you do have to have a bit more expertise and knowledges Do you what are their criteria and how you navigate that.

Eric Dickmann:

You talked a little bit about the year timeframe that you have after something has gone public in order to file the patent, but I know that with a lot of companies, they're constantly developing things in the labs, things that really never make it into a final product. So they're patenting little parts of products or unreleased ideas. How would you say a company should approach that if they've got creative things going on but then they decide, well this isn't really applicable to our product, but maybe it's applicable to something because it's a really good idea, what should we do with that?

Devin Miller:

Yeah and I kind of split that as you see the big companies you know and that's where when you always hear Hey Apple might be coming out with this new feature and they usually they'll go look in the pan saying Oh this patent has been coming out We don't know if they're really going to pursue that because Apple literally filed Thousands upon thousands of patents a year And they only actually go after an implemented small portion. So if you're a big company they're going to take the long run of Hey we're doing a lot of innovation, we have a lot of engineers trying out new things We don't know which of all we'll make another product, we'd like to protect that We'd also like to protect our other competitors from being able to pursue those so that we can leave the option So if you're a big company had the budgets I probably go after all that harder places When you get into a startup small business waste doesn't have the big funds that can disinvest in a lot of that because As a small startups on business you always have more things to spend money on than money to spend And so you're always saying where do we put the invest the money and that case then I would look at it and say if you only have a reasonable or limited budget look and see what are the critical things that you really need to protect And that can be everything from trademarks with branding to patents or whatever and say if somebody were to copy this as somebody to come along what would be the ouch factor When would it really hurt your business Somebody else would copy that And if you're saying okay we can live with this Yeah Somebody else were to come along and make a similar brand Really what we do as a product side we have the coolest whatever widget And that's what we need to protect Then I focus here on the other hand you're saying We got a product it's not bad but there's a lot of ways They're probably just as good but we really are good at branding We really get our name out there We have Kashi commercials you know we have really great customer service They need folks on branding So usually within the conversation that's Where is the core of your business What is the most seen That's invaluable to you and then that's where you start to protect it And then anything else that's kind of outside of that as budgets allow is you're able to protect it Go ahead but start with the things that are critical to your business first.

Eric Dickmann:

Hey, it's Eric here and we'll be right back to the podcast. But first, are you ready to grow, scale, and take your marketing to the next level? If so, The Five Echelon Group's Virtual CMO consulting service may be a great fit for you. We can help build a strategic marketing plan for your business and manage its execution, step-by-step. We'll focus on areas like how to attract more leads. How to create compelling messaging that resonates with your ideal customers. How to strategically package and position your products and services. How to increase lead conversion, improve your margins, and scale your business. To find out more about our consulting offerings and schedule a consultation, go to fiveechelon.com and click on Services. Now back to the podcast. I'm glad you brought up the whole idea of trademarks and what you have to protect from that standpoint. So you know maybe Joe's Pizzeria doesn't need to file anything for their business name, but at what point do you need to start protecting your brand, and to what extent?

Devin Miller:

Yeah so kind of to your point, if you're a small mom and pop shop or you're a local. And I love mom and pop shops so don't take anything against that. Um but if you're saying Hey I just want to serve the local community, I want to be a small restaurant, I just want to be a you know the corner shop, and I really not planning on building a brand. I really not gonna expand anywhere. I probably wouldn't get a trademark. You know make sure you maybe don't imprint somebody else's trademark when you do so you don't get a cease and desist letter but then I probably doesn't make sense to invest that in or invest money into getting a trademark If you're just going to stay small and say local. Where are you going to want to do that as if one if you're you know going if your intentions are either now or in the future whether it's, Hey we're going to franchise we're going to build multiple companies or a model that's going to do that or we're going to build a brand name around the Business You know you think of all the big companies Pepsi, Coke, MnM's, Nike, you know, Apple, Ford, Chevy, all those are name recognizable brands They built a big company, Everybody recognizes their brand. Their brand has a lot of value, think about Disney or Marvel, and how much money they generate from all of the toys that everybody gets a license from And so if your intent is is Hey we're going to be building a bigger brand than we're going to want to protect that. And that's when you're going to get trademarks. So I look and see what is the intent of your company again to stay small, stay local, probably doesn't need to if you're in plans or potential is you're going to grow it or are you going to be selling It across you know all the U S or across Amazon and have a lot of sales then you're going to want to protect it because it's trademarks as relative to other things are usually less expensive They can give you a good value The other thing I would do on both pans and trademarks is look at it not as just a way to protect yourself but also as an asset to your company meaning it actually is And the reason it's called intellectual property it is property but it's not something that's visible It's not tangible but it's none the less still an asset So you would think of it If you wanted to go buy Disney or you know you want to do Disney's brand is worth a whole lot It's an asset even though it's not tangible it's something So it's something you can build into your company that you know you're trying to get investor dollars So they're going to come in that that's an asset that they can invest in If you're trying to go out you're trying to do franchising Mar or looking to be acquired someday or do a merger or an acquisition All of those you can start to build assets into your company with the intellectual property by capturing all of that time and effort you put into your brand or into your invention or anything of that nature

Eric Dickmann:

I know for a lot of companies that are just starting out It's a real challenge to find that brand name because obviously everybody wants a web domain, right? And all the words pretty much in the English dictionaryhave benn taken and most combinations of two words have been taken as well. So now we're in the realm of made up names or foreign names or whatever to try to find things at work

Devin Miller:

Or you have those.dot something And then people are like is that a real URL? Because even though there's a whole bunch out there, nobody really knows if it's not.com they really don't know what's going on.

Eric Dickmann:

Yeah then you get to some software that doesn't recognize those extensions and it's all a mess. Yeah, its troublesome. But I still remember the days when you know we used to get yellow pages in the mail, and one of the things that you always noticed about the yellow pages is that there were page after page after page of companies named ABC something because they all wanted to be in the front of the book. So you take a company like Apple which you mentioned, there's you know Apple heating and cooling and there's Apple oil delivery or Or whatever it may be. The idea is that you can use a name that somebody else's trademark, correct? As long as it's not too similar or too much in the same industry. How does that work?

Devin Miller:

Yeah So way trademarks work is that when you file a trademark you know you come up with the world's perfect name for your product and you're really excited about it then you file it, you have to you have different classes or categories that you file it with the define what types of goods or services, what type of products or services you're going to use with that mark. And so let's say you tar you know you talked about you have a heating and air company and we'll name an Apple just so it's easy to remember Apple heating and air Well that's going to be completely different as far as the goods and services and smartphones and for you know uh compute super products such a people really aren't likely to confuse app or Apple the iPhone maker as likely getting into heating and air Now Apple's famous enough Maybe everybody thinks Apple anything is going to be with social with the company But if you get on a smaller level they're going to say okay we can distinguish this prob company probably isn't going to get into here The example I always use is Nike which does athletic wear sports gear and apparel They have it there They don't have a trademark on automobiles and they don't do anything with automobiles So theoretically you could go file on Nike automotive get a trademark on it because it's different than what Nike is doing So that's how you start to even within same or similar and company names or product names or logos and those types of things with brands If you're a far enough to build That you're not going to be confusingly similar And that's generally the standard is as long as you're not confusing the customers as to who's selling which product they're able to distinguish it because there are different enough in the word or the logo or they're different and up in the goods and services that it's not confusing then they can all coexist.

Eric Dickmann:

I used to work for a company years ago and their logo was exactly the same as San Francisco sanitation department. And for years they tried to do cease and desist get them to stop, but it was fine. You know it was a software company versus the sanitation company. There was really no overlap.

Devin Miller:

Exactly I mean most people are gonna say Oh yeah the sanitation company is also going to be software programmers I ain't going to buy the software from. And so even though they may not want other people to use it because they're far enough at different things and people's spines are gonna say sanitation company software company not going to be the same people that provide the goods and services therefore they can co-exist.

Eric Dickmann:

Your company name ,your brand name, your logo They're all technically different, right? And each one of those could be trademark separately. What about things like colors and fonts, can you go that far or combinations, where where does the line get drawn?

Devin Miller:

Yeah the general line and then I'll give you a few examples. General line is anything that is source identifying every brand meaning when people see that whether it's the name of a company, logo, color, smell, whatever is it's a source identification that when they see that, when they see it, when they smell it, whatever that they're thinking Okay That's what this brand so you're right So you can have general ones that most people go after is like logo name of a company a catchphrase a um You know name of a product Those are the ones I generally go after but you have a few examples of the different ones that are fun ones One is the smell of Play-Doh that's been trademarked So the actual Well um you have the color for and I think it's Mary Kay that used to have the pink I always get the ones confused but they had their if you got so high up in their organization they will give you a pink Cadillac And they actually trademarked that specific pink for a Cadillac because it was everybody associated that pink Cadillac with being so good or high up in the company Another one was I can't remember which football team it is now but one of the football teams and it was college level They had a red field that was you know a specific color red They trademark the red football field Because it was everybody said when they saw the red football bill thought of there So you can do colors and other one that's a sound So you can do if you remember you know used to be when the company Eric or computers would turn on you here Bum that was training Or a male that was also trademarks So you can do sounds you can do colors you can do smells really anything that's identified as a source identification The people associate with your brand It can just be anything that you want to trademark but as long as it's associated with your brand and what people think of it they think your rebrand you can trademark it.

Eric Dickmann:

And what is the difference just so people understand when you see something and it's got the TM to it or you've got the R.

Devin Miller:

So R is registered trademark went to the government and went to the trademark office You went through the process you got to trademark So it's been gone through the examination process for trademark ability That's what the R with the circle around it TM is Hey I think there's something here that might be trademarkable that I'd like to kind of people but putting people on notice better than nothing So I'll put a TM there There is some law or common law rights you know basically state law or just by using it They're Pretty limited rights So people generally just put TM there when they really haven't done anything but they kind of want to see if they can preserve a little bit of rights and preserve a little put up people I notice they'll do that So it's better than nothing Doesn't buy you a ton So I wouldn't rely on it but if you're going to do nothing versus a TM go with the TM

Eric Dickmann:

Hmm. No I think that's helpful. So let's you know switch sides here and let's look at the ugly side of this a little bit.

Devin Miller:

Sure

Eric Dickmann:

You get the cease and desist notice in the mail. do

Devin Miller:

Throw it away. about

Eric Dickmann:

it Wait till you get the third or fourth version.

Devin Miller:

That's all right That's kind of like when you get the this bill is late notice you got a couple more months. Don't do that. I'm just kidding. You know it But there is some truth I mean you get a cease and desist letter Some of them you know some places they just send out a there in the uh in the business basically the we'll we'll send out a thousand cease and desist letters Some people in the and then it'll say Hey you can either pay us this nominal amount or we're going to Sue you So sometimes they are just kind of a nuisance that they don't really have a legitimate claim but they figure if they send out enough of them some people will pay them That's not usually the case but you know that would be one that you can do And in those cases you can probably nor them but you're not You know don't just ignore the letter unless you know that that's the case Most of the time when you get a cease and desist letter you probably should at least reach out and respond And I you know usually when you get a cease and desist letters because somebody on the other side thinks you're infringing on something that they've done their trademark you know their brand or their copyrights or their patents They're going to say you're infringing on us So usually look through it see those legitimate do a little bit of homework See who's actually sending it before you go talk to an attorney do a little bit homework and see where it's coming from and what's going on Then after that go talk to an attorney Now your options are kind of you know you can go talk to an attorney They're going to usually tell you well you got a couple offers or you got basically three options or I'll give you a four One is doing Nora No the attorney will say don't ignore it Not a good idea Second one will be as you know you can try and go take a license You can you know go in and work out you know do something of that nature Pay sickly Pay what they're saying or do what they say in the letter to make it go away That's another option A third one is what I typically recommend is look for the business Still I always would say look for a business arrangement before you try and go down the legal recourse because businesses arrangement are usually have a better outcome They're less expensive and have a better a better overall effect or result And so that's a lot of times you know some attorneys just jumped right to the let's go Sue them or let's go fight it But I think a lot of times you can find that better business outcome If you take a bit of time There's a lot Most people not all but most people are pretty reasonable They're not trying to go onto everybody They're just trying to protect what they have and they wanting to just make sure that their businesses are continue on And so you can find an arrangement So go out and try and find a business arrangement If that's not the case then you basically have to go find them in court and some some And that and that gets into the corridors are most of the time the most expensive if you get into a patent lawsuit and it goes all the way through which most of them don't usually they settle out but you're up you're up over a million dollars to get all the way through a patent suit If you get into trademark suit you're at least tens of thousands If not hundreds of thousands to get all the way through And so that's why I said go for a business arrangement less expense a better outcome But if not you don't if they are if they send a cease and desist that's not legally binding it's technically you don't have to do anything now Well most of the time if you ignore it and they are serious then they follow it up with the lawsuit You can't ignore a lawsuit because if you ignore it you automatically lose and they get all the damages So that's kind of a general walkthrough a few options when you get that.

Eric Dickmann:

Hey as we're wrapping up today the last question that I wanted to ask you is as an employee What are your rights when you develop something that the company patents or you get into this crazy thing where maybe you've done some work in the office on your idea that has nothing to do with the company. What's the dividing line and what do people really have to be careful with here.

Devin Miller:

So the first thing is if you're ever going to work on thing do it outside the office. In the sense that so generally when you do it where you get where it's defined that is in your employment agreement So when you sign that appointment Agreement that half the time nobody reads and they just say how much are you going to be paying me How many days off do I get What are my benefits And I say Oh that sounds good Okay And they sign it and they never actually read it Well if The if you want to protect yourself first thing is read the employment agreement see what you're actually signing up for because some employers are going to be very lax and they're not going to have very many restrictions Others are going to be very are very restrictive and they're going to be very aggressive So Dude do take that in consideration when you're signing up now Let's say you want to you have an idea that's unrelated to your business or a hundred related to your current employment You want to start a new thing That's typically at earth It doesn't have anything to do with them Well then one thing is don't do it on your car Or company equipment don't do it on your company time Don't do while you're in the office because generally they have a better reach through if you're using any company resources using their time you're using their equipment you're using whatever So do it at home do it off time And then the other thing backing up one thing I missed I would also just tell your employer a lot of times you know unless it's a an environment where they're going to get mad or they're going to be worried that you're going to quit but if you're saying Hey I've got this small project I'm going to be working on on the side I don't think it's anything but just wanting to give you guys a heads up Most of the players are gonna say I don't care what you do in your free time But do it in writing so that you can always point back and he gave him the notice They said it was okay That's an easy way to start but then once you do that do it on your own time And then if you do come up with something then that's that's an easy way Now the problem is is let's say If you come up with something on the behalf of the company that you did when they were paying you for it you were using their resources They typically own it And the laws are most States and it does vary a bit state by state California is more employee centric and other States are more employer centric Um but Generally they're going to own it if you create it on their time or their dime So that's where you're going to have to delineate as to when you did it Um they own it Even if you're the inventor view almost all employment agreements are going to have a duty to assign that you have to assign over your intellectual property rights and that's part of the agreement And it makes sense in the sense that if our defendant players if I'm paying you to do a job I'm paying you to create paying you And I'm giving you all these resources all this training you're getting a salary and you happen and you create what you're employed to do Then I should probably have ownership of it because that's why I hired you On the other hand It shouldn't be fair that if you create something on your own time and diamond it's nothing to do with your employer You should own it .So that's a fairly good rule of thumb as to who owns it and how you are how you start to sift through that.

Eric Dickmann:

So it's fascinating to hear about and get your insights on, because I think it's something that a lot of businesses really don't think about until they're fairly late in the game. Devin it would be great If you could share with people where they can find more information about you and your firm online

Devin Miller:

Yeah absolutely So a couple places that I would put it one if you want to we do free strategy meetings where we sit down and strategize chat about a little bit what you have going on Answer your questions Um you can sign up for that Just go to strategymeeting.com that links to my calendar grab a day and time that works for you We'll have a great conversation. So easiest way to connect up with me is their strategymeeting.com Alternatively if you just want to go to the website you want to learn more about what our fees are, kind of about the firm about myself or anything else but just get some general information. And we also have a ton of material that you can just start to learn about the process about patents and trademarks, just go to Law with Miller all one word, lawwithmiller.com. And that's a great way to find out about the firm, so grab some time with me strategymeeting.com. Find out about the firm lawwithmiller.com.

Eric Dickmann:

Devin that's great. I'll make sure that we have all of that linked up in the show notes so that people can find you. Fascinating conversation, I really appreciate you coming on the show today and sharing your insights with our audience.

Devin Miller:

Absolutely. My pleasure.

Eric Dickmann:

Thank you for joining us on this episode of The Virtual CMO podcast. For more episodes, go to fiveechelon.com/podcast to subscribe through your podcast player of choice. And if you'd like to develop consistent lead flow and a highly effective marketing strategy, visit fiveechelon.com to learn more about our Virtual CMO consulting services.