An interview with
In the 66th episode of the On Branding Podcast, I interview Andrei Mincov and we talk about using trademarking a brand (name, logo etc).
Follow Andrei on social media: Website, LinkedIn, Instagram, Twitter, Facebook
You can also watch this interview on my YouTube Channel
*PS. Below you will find an auto-generated transcript of this episode.
Arek Dvornechuck: What’s up branding experts? — Arek here at Ebaqdesign, and welcome to On Branding Podcast, and my guest today is Andrei Mincov, and who is the founder and the CEO of Trademark Factory. So Andrew was an intellectual property lawyer for over 20 years until in June of 2015 he launched his own business Trademark Factory.
Where he helps businesses protect themselves, protect their brand, their logo, name, slogans, and more. So try trademarking is the best way to protect your brand from being stolen. So this is what we are gonna talk about on today's podcast. Hello Andrew. Thanks for joining us today.
Andrei Mincov: Thanks for having me.
Arek Dvornechuck: Thank you so much. Trademark corporate people often. Use these terms interchangeably. Can you explain the difference? What is a trademark? What is a co provide so that we are on the same. On the same page?
Andrei Mincov: Yeah, some people also throw patents in the same bucket
Arek Dvornechuck: That's right.
Andrei Mincov: we get all sorts of weird questions, you know, how do I patent my idea? How do I copyright my logo? Yeah. So there's a big difference between the three. I'll quickly outline it. So for copyright protects content, right? Protects books, videos, music, it protects whatever you.
In, in words, images or things like that. Patents, they protect underlying ideas for inventions products, methods, things like that. And trademarks, they protect brands. For example, copyright, if you have written the book and the book has a title, then the book itself will be protected by copyright.
But if you want to turn that title and turn that into a, Your copyright is not good enough. You have to have a trademark to be able to stop others from selling from, to stop them from selling merchandise with the name. So that's what trademarks are for example,
Arek Dvornechuck: And there is an important distinction. You cannot really incorporate a book title. Is that correct?
Andrei Mincov: In some countries you can, in some countries, in most countries, you can't Even if you could, there's very little you could do with that to enforce it because you can't stop others from writing a book on the same subject, for example. You, and unless the title is extremely original and inventive in that case, you might be able to do something with it. In most cases. Not really.
Arek Dvornechuck: Okay. So there's an important distinction. If it's a work of art, if you wrote something and even an article, a book, an anything, you produce your work, it's basically automatically cooperated, but it's really important to file for a copyright with U S P T O. Just to have that protection. So in case you see your work somewhere on the internet, someone is, profiting from your work, then you can file a lawsuit, right?
Andrei Mincov: Yeah. Yeah. So we'll, copyright you're absolutely right. I like when I'm talking to someone who actually has done their research and understands the subject. So copyright, yes, it arises automatically. You don't need to register anything to have protection, to have your rights in the registration may make it easier for you to go and sue somebody.
If they've infringed your rights. The registration can make it easier for you to go have a conversation. For example, investors or producers. But you don't really need that to to enforce your right. It just makes it easier which is very different from all the other types of ip patents.
They don't exist without registration at all. In fact, if. Make your idea public. If you put out a product that utilizes some novel invention and you just start selling it and people figure out how it's done, if you don't have a patent, just because you invented it, gives you zero rights, right? And trademarks that are somewhere in the middle where there's a tiny little bit of protection that you might get in some countries based on you.
Having established some reputation under your brand, but really the bulk of protection only comes after you've registered that brand. Yeah.
Arek Dvornechuck: So that's why it's important to trademark. So you trademark your logo and and you trade trademark your name, your brand name, so now let's talk about those. By the way, I just wanted to just mention when you watch, for example, shark Tank I like the show. So they often talk about all these things and, that's easy to understand because when you think about patterns, they always talk about patents in regards to usually a product, right?
So if you have a, like a unique product that you use is using a unique technology. Your proprietary processes or whatever, and they all sharks always ask those entrepreneurs, do you have a patent? What's it stopping you, me from starting this business tomorrow? And I was competing you. That's the easiest way probably to understand what a patent is. So it's about...
Andrei Mincov: So let me interrupt you for a second. I've actually done 12 videos on their own YouTube with me taking every single instance when issues of intellectual property were discussed on Shark Tank. So I have for season one, season two, season three, and they're getting longer and longer.
Some of them, I think, more than an. With Kevin asking all those questions with Lori, with mark, like they, even Mark who pretends to hate i e p when the situation requests that he would always ask exactly what you're saying, how do I, how do I make sure that I'm not investing into something that can be taken away from me like this.
Arek Dvornechuck: Yeah, that's, yeah that's a great way to, to describe that and anyone can relate to that because we all know this show. That's great. So now let's talk about a bit about the benefits of trademarking a brand. For example I have a unique name. The process of trademarking my name.
I've done some preliminary research, right? So maybe we can also discuss some of the process. But maybe we can start with the benefits. So I have a unique name. My name is IBE Design. It should be easier to protect that name, be because it's unique, right? So the biggest challenge with trademarking is that they're gonna check, they're gonna check for similar names in, in the same, especially in the same category, right?
So you need to select the right. You need to have a unique name and you need to have, you need to be using that name on some products or new website and so on. Can you elaborate on that?
Andrei Mincov: Yeah. Look you did a good intro, but so let's start with benefits. I think you're right. Be, before we go into details of how it's done, let's talk about why people may want to do that. And the way I see there are three big benefits. Some entrepreneurs will see benefit in all three of them.
Some will, for some, which will be one or two. Number one is when you trademark your own brand, it minimizes the risk of somebody else trademarking that and forcing you out of your own brand, right? Because if someone trademarked the brand that you were running with and you didn't have a trade you might be able to win in theory in court, but it's gonna take you years and it's gonna take you hundreds of thousands of dollars.
And most entrepreneurs don't have that luxury of being able to just throw away money and time, so they would often walk away. So when you trademark your brand first, you make it extremely unlikely that someone else will be able to force you out of your own. So it's not even about attacking others.
It's about protecting yourself. The second benefit is that it allows you to go after copycats. So you've got EAC design. If somebody, decided to start selling shirts with epac, Design, for example, right? Or just slightly different spelling or slightly different variation. Without a trademark, you really couldn't do anything to them.
With a trademark, you can, and usually if you don't have a registered trademark, you send a nasty demand letter to the bad guy is they read the letter, they, first thing they do is they check is this trademarked? And if the answer is no, then usually their train of thought will go like this.
They didn't bother. Filing for a trademark. They didn't bother, paying someone to do that. It's not that much money, right? Couple of thousand dollars to get a trademarked, they didn't do that. What are the odds that they're actually gonna go and hire lawyers to take me to court?
Very unlikely. So if you don't have a registered trademark, your demand letters are gonna be disregarded and ignored. Most of the time. If you do have a registered trademark, they get that. They check indeed it's registered. They see that you're treating your IP seriously. They might show it to their lawyer.
Their lawyer's gonna say, there's no way you can win this. Might as well try to figure out a way how to, walk away change the brand and, minimize the damage and hope they don't sue you. So that's the second benefit. It allows you to effectively stop copycats. And the third benefit is it allows you to build the.
It's actually an asset in and of itself. So my favorite example is Coca-Cola, right? They filed their first trademark in 1892, which is the year when they were selling nine drinks a day, right? I call it a lemonade stand with a dream. And so now they're branded brand is worth over 80 billion, right?
Just the brand alone, not the factories, not the employees, not the cans, the brand. And the other example is George Clooney, who came up with an idea for tequila, right? First thing they did is they trademarked the brand Casamigos. That was way before they found the distiller, right? They went out, trademarked the brand, then they founded distiller then they started making the the the tequila in Mexico.
And five years later, he sold the brand to Diaggio for a billion dollars. That's a classic case of how do you freaking print a billion dollars out of thin air? That's how and that's what the brand does because if he didn't have a trademarked, that'd be nothing for Diaggio to buy. So it's not, it's, and a lot of people will say, yeah, of course it's George Clooney.
He's a, a good looking guy. He's a celebr. But they could have paid him a lot less to promote their existing tequila brands. There was a reason they decided to buy a brand that he came up with and trademarked. So that's the three biggest benefits.
Arek Dvornechuck: Yeah, that's a great story, by the way. Yeah. Illustrates that, those benefits really well. Okay, so we've discuss, we've discussed those BA basics, and now can we talk a bit about the process? What is the typical process and what makes you different? Because I, I noticed on your website and you always talk about that, that you give this guarantee, right?
The problem is that if you fire yourself for a trademark or if you use some online services there is a p there is a, the ch the biggest challenge is to find the right class. Make sure you fill out all the papers correctly and then, follow the process. There is a huge challenge of your name of your application being rejected.
Can you explain on that?
Andrei Mincov: Yeah. So one thing that most people don't realize is that trademarking takes a long time. It takes well over a year in the us, takes almost four years in Canada close to a year in Europe. And that's one thing that people think it's like a domain name. I come up with a. I go pay someone a little bit of money and they rubber stamp it and I have it.
That's not how it works with trademarks. So the way it works with trademarks first thing you do, you're exactly right. You want to assess whether what you came up with is even trademarkable. Most companies and law firms prefer to skip that step. They even if they would offer you to do a search, they would offer it in such a way.
Most people would say, no, I don't need this. Because they would charge you like 500 bucks for a search. And they say it's not necessary. You don't need this. If you wanna do it, we'll do it for you. Like it's gonna cost you an extra $500. But if you don't understand what this is for, normal person is gonna say, yeah, I don't need this.
It's a unique name. I came up with it. And. The reason it's so important is because with trademarks, it's not just identical matches that matter, it's all the similar names. It's all the lookalikes sound-alikes mean-alikes translations, added words, removed words, suffix as prefixes, all of that stuff that's being looked at by the examiners to the trademarks office.
So when you do your free trademark search, on the trademarks offices' website, or there's some websites that, spit out automatic answers at you. My, my favorite game is, pick that, pick a database that says they're giving you a free trademark search and try to search for Microsoft Software Solutions.
And, microsoft has two words. Micro Soft Software Solutions. I'll tell you. Yeah, it's available. Let's go file it for you. Because they. Care to do a proper search. They just want to take your money to file your application. And you can guess how quickly you will hear from Microsoft's lawyers, right?
When you file that application. So what we do a comprehensive search just to make sure that all the is, are dotted and all the T's are crossed. And with Trademark Factory, if you came up with a brand. We tell you it's problematic. We'll tell you why. We'll tell you, there's this trademark, there's that trademark.
It may be descriptive, it may be generic, it may be this, it may that and if it's anything but Registrable, in our opinion, if we find any issues, you can get a full refund. Basically, we get a free evaluation and As your other option, we, you can keep sending us your, version two, version three, version 27, until you pick something that you love and that we tell you is trademarkable.
Nobody else does this. We're the only company in the world that approaches it this way. So the, going back to the process, you do the search, assuming that it's clear. And by the way, because we do the search, we. An unparalleled level of success in this industry. Nobody has it. We have 99.3% rate of success, right?
That's way above even the most expensive law firms out there, because again, we don't file trademarks that won't go through. We don't make more money by spending more time on your trademark because it's flat fee, right? Law firms, they make more money that if they file a flawed application, it goes, it comes back with an office.
When basically the trademarks office tells you, Hey, you got a problem, law firm says, oh, I'm sorry you got an office action, but don't worry, we can help you with that. Just, $500 an hour. Oh, I don't know how many hours it's gonna be. Just let us take care of it. Don't worry. And then, $5,000 later they say it's filed, don't worry.
And then a few months later, they get another office action and say, oh, you know what? They have another office action with, don't worry, we'll help. So we don't play this. Because I think that's insulting. I think that business owners really don't care how many hours the provider spends on getting you the registration.
All they care is about is binary. Did I get it or I didn't. Did it get registered or I didn't. So the whole idea behind trademark factory model was there's gonna be one flat fee, there's gonna be a hundred percent money back guarantee if it doesn't get through. Till, till this day. We've been doing this for 10 years.
And since 2013 under the trademark factory brand. So the company actually was started in 2011 and we've been doing this openly. We've got thousands of. And nobody has copied us because there's something special to how we do it. So again, going back to the process, you do the search, assuming it's registrable, you file your trademark and then you sit and wait.
You sit and wait. You sit and wait. You're right? You look at when you file your application, yes, you have to choose the classes because trademarks don't protect your brand in vacuum. They don't give you absolute protection for that name. They give you protection in connection.
Specific products and services that you want to be known for, right? If it's Amazon, they're trademarking, for online store that sells stuff, right? If you're Apple, you would have it for phones, you would have it for tablets, you'd have it for computers, you would have it for software, you'd have it for marketplace of apps, things like that, right?
And you have to list those goods and services in your trademark application, and you have. Split those products and services into specific categories. They call them classes. There's 45 of 'em, there's 34 classes of services and 11, sorry, 34 classes of products, 11 classes of services. So you do that split up, you follow your application, then you sit and wait and in 68% of the cases the trademark's office is gonna get back to you with what they call an office action.
It's a. Where they say, we don't like your trademark application. There's something wrong with it. And if you don't respond to that's it. Your trademark dies. And most entrepreneurs are not really qualified to respond to that unless it's something really simple when they actually tell you what to do.
Sometimes they'll say, Hey, you file your trademark. It says, for clothing, it's not specific enough. You may want. You wanna, you may want to clarify clothing, namely t-shirts, sweatshirts, pants, shorts, hats, things like that. And you look at that and you're like, okay, I can do that.
And you're just, reword it. You resend it and it's all good. But more often they're not than not, they'll provide. There are arguments in a way that unqualified people can't really respond to. And so you're back to square one. You look for an attorney who's gonna do that for you and charge you an arm and a leg with tmf, with trademark factory.
It's all included unlimited responses to unlimited number of office actions. After all that back and forth, assuming you were able to successfully convince the trademarks office, The the trademark is good to go. They'll publish it for opposition purposes. It's. They put it in a newspaper or journal or online for the world to be able to someone raise their hand and say, Hey, I have a problem with this trademark.
It's the best comparison is like a wedding, right? The, when the bride and a brewer are out there and the the priest goes does anyone have anything to say against this or, That's what opposition period is in some countries it's one month, it's some, it's two, it's some, it's three.
And if during that period someone raises their hand and says, I have a problem, then you have to fight that. The good news is that it happens extremely rarely in about 1% of the cases. The bad news is that if it happens, it tends to. Extremely expensive. It can easily be like 30 grand, 50 grand because there's a lot of back and forth affidavits experts.
You have to show all sorts of stuff to prove that it's yours. So we call it, we call oppositions anatomic bomb. That almost never goes off, you hope that it doesn't, and assuming your trademark survived the opposition, If you're in us, you'd have to prove that you have active use of the brand that you're selling it.
In most countries there is no such requirement. It just goes straight to registration. And once it's registered, it's good for 10 years and you can renew that every 10 years and it's like a few hundred dollars. So some people say are there annual fees? How expensive is it to maintain a trademark?
I always say, look, if you've been in business under this brand for 10 renewing that trademark will be the least of your worries because it's, like I said, it's a few hundred bucks and that's it. If the only one thing I gotta add, because a ton of entrepreneurs get burned because of that, is that in us, only in US, between the fifth and sixth anniversary of your trademark, There's an additional maintenance filing where you have to show U S P T O that, hey, we're still here.
I'm still selling these products, I'm still selling those services. And oftentimes the cheap trademarking services don't mention that. Most law firms rarely mention that, and they don't monitor that. So a lot of entrepreneurs who even got everything done right, they got their trademark.
They don't know that they'll have to do this mandatory filing and they lose their trademarks and there's nothing you can do about it. If you miss that the time for the filing, your trademark dies. And if somebody file a trademark with a similar brand before you refile, that's it. You can go back to U S PT O and say, Hey, I had this trademark five years ago.
They don't care to them. That trademark doesn't exist anymore. That's a shame. We've seen a lot of entrepreneurs who got burned that.
Arek Dvornechuck: Oh, yeah. Yeah. That's a great tip. I didn't even know about that, to be honest. That's a great tip. I'm sure that our listeners will enjoy to that. Yeah, I think we've discussed, we've covered most of the things that are important to, to know about trademark trademarking of brand.
What's the best way to connect with you? Are you active on LinkedIn? I know you have a YouTube channel. We're gonna link to your website.
Andrei Mincov: Yeah, so YouTube channel, we got about a thousand videos that talk about trademarks, right? So if you wanna learn about trademarks for free, YouTube channel, go. Slash Trademark Factory. We also have a paid course on the website at learn trademark factory.com if you really wanna learn. But if you want to get it done for you the easiest way really is to go to trademark factory.com and do it from there.
If you want to connect with me yeah, I'm on LinkedIn, of course. You gotta be these days. I'm on Instagram. We're really everywhere but,
Arek Dvornechuck: Okay, cool.
Andrei Mincov: Most prominent ones are yes, YouTube and.
Arek Dvornechuck: so for branding agencies or creatives who also, offer other services to their clients they may be interested in you taking on your course and learning actually how to do it themselves. But Entrepreneurs, business owners, they can just directly reach out to you.
And because it's actually, it's, it is it's not that easy to file yourself, right? You can make many mistakes in the application, and as you mentioned, it takes months and then your application gets rejected and then, you lose a year or so and you have to file again.
And so that's the problem you.
Andrei Mincov: yeah. So I wanna, I want, I wanna quickly share why I post all those videos, why we created. It's not because I want to create more entrepreneurs who can father their own trademarks. I think it's a really stupid idea for entrepreneurs who know nothing about trademarks, to learn about trademarks and then do it themselves, right?
Because this huge risk. And you say exactly right, the problem is not the money, the problem is the time. Because if you've been investing in a brand that, that you can't own for a year and you only find out about it. all of that is gone. And that could be really painful. The reason I post all this content is not just to bring clients to us.
The reason I do this is because there's direct correlation between how much I'm sorry. Gimme one second.
Arek Dvornechuck: I cannot hear you. Hold on, Andre. I cannot hear you.
Andrei Mincov: Can you hear me now?
Arek Dvornechuck: now, yes, let's continue.
Andrei Mincov: Just had to pacify my kids. So where I was going with that is the reason. We create all this content that we, put out there mostly for free, some for, as a course, it's not because I, hope that it's gonna generate a ton of clients for us. It does bring some clients, but the reas, the main reason is that there's a direct correlation between how much brand owners know about trademarks and the success of their trademark complication, right?
If you're an entrepreneur and you know nothing, you don't want to hear anything. Then it's very hard for us to work with you because when we start having conversation about goods and services, about specimens of use, about, when you can do certain things, the classes, all that, if you know nothing about this and you're like, yeah, just do my trademark, we can't really help you.
So what we found is that entrepreneurs who know at least a little bit, who have some frame of reference, who have some context that makes it much easier for us to give you. 99.3% rate of success that we do. So that's why we always put all this content out there in front of people say look at this.
Like even so here's the thing. For example, if you go to trademark factory.com and try to book a call with one of our strategy advisors, right? If you want a brand to protect, once you fill out that form, the first thing we're gonna do is say, Hey, watch this. Because we want you to watch the video to have a context of what trademarks are, what they're for, how long they take what you do.
You know how Trademark Factory can help you because if you're, if your idea of trademarking is like, it's the same thing as a domain name, it, is gonna cost me 50 bucks, I'm just gonna pay it and I'm gonna get it done the same day. There's very hard for us to have that conversation with you because that's not the reality,
Arek Dvornechuck: yeah. And you also have to reeducate your client take those small steps with every single client. No a good way to Your clients before they actually reach out to you or while they reach out to you. Now, just to note those basics, same with me. I also share some basics on my YouTube channel regarding, the design more, maybe more of the design aspects of branding, right?
You're more on, on the legal aspect. But yeah, that was great.
I really appreciate your time. I believe our listeners is gonna really enjoy the podcast because we went, all the. Questions that I had for you, so that's great. We are gonna link to your course, we're gonna link to your website and to your social media channels for you guys.
If you want to reach out to Andrew to learn more about trademarking your brand. Thank you again. Thank you so much for your time.
Andrei Mincov: Thank you for having me.