Warning: A legal post!
Due to so many posts I make about slice of life and everyday mundane events that have nothing to do with law or the practice of law! I am, in fact, a lawyer certified to practice in the state of CA, and have been for the last 6 years. Wow, 6 years of being an attorney......I've been an attorney longer now than I was in both undergrad and law school combined. Pretty amazing and worth thinking about when a young student or someone switching careers, a career usually lasts much longer than just the years it takes to get a schooling, so get prepared.....I feel like when I decided to "be a lawyer" in college I focused more on the definitive 3 years of law school that it took to be a lawyer, but not necessarily the more undefined years of law practice that those years of schooling would lead to. It could be a long time.....make sure you know what you're getting yourself into or what the job actually entails.
I'm not certified to do IP law, but for the last few years I've worked on the side for my uncle in China who owns his own company selling a special type of knife. I helped my uncle's company apply for and obtain trademarks for various types of goods in the U.S. and was the attorney of record on the case signing off on trademarks (it's really more official-sounding than it is, I filled out an application through the USPTO website and signed it at the end, "Robert Yan, Esq." so really, not exactly rocket science. However, it does go to show the inherent power of having a bar license, more than the fact that human beings show respect to having a license and understanding that it took some sort of special training to obtain that license and that that license meant something, it also qualifies me to do certain work that others can't do simply virtue of that license. It's not like I got superpowers or anything with a bar license, but in the eyes of the law it allows me to do more.)
Anyway, my point is filing for a trademark isn't all that difficult if you go step-by-step, a lot of what lawyers do are procedural, going through contracts and just reading through the instructions and legalese and certain conditions that must be met. I also contacted a representative of the USPTO, who asked me questions about the trademark and what it covered. The whole process took about a few months to do and to make sure no other trademarks are already registered in the USPTO system that came before one's own trademark and would therefore bar later trademarks from being approved. After we sent the application and some modifications to the application required by the USPTO including certain good types that our company's product didn't qualify other, the application was approved and I received the USPTO certified trademark registration in the mail. With the official stamp! It's a good feeling to get that official stamp, as symbolic as it may be, still get a sense of fulfillment after getting it. I believe in lawyer-speak it's called "adding value to the client."
Trademark litigation, however, is a different issue and perhaps the new challenge. What happens if a company is infringing on your company's trademark? Well, as an attorney I had to research the issue and as it turns out, as with most things in law, it's better to attempt to resolve the issues first out of court, with the first step to notify the other party of the infringement. (Huge thing in law is to get things in writing, and get that writing to the other party and put them on notice). That's also why putting in email is important if you want to make things official, and don't put it in writing so that it can't be used against use later. Lawyers LOVE to use things that are in writing because there are no "accounts" or "versions" of what happened, the writing speaks for itself. Especially in today's digital world of the internet, you gotta watch what you write on the internet and email to people.
Once you notify the infringing company (it might be through a cease and desist letter), hopefully you get a response, and you can go from there to go through arbitration, discuss the parameters of the infringement, talk about resolution. Unfortunately the law is a combative process and can take time to go back and forth with other parties, and the ever-so-difficult "no response": not moving forward, not making any progress. Welcome to the bogged-down process of litigation, where things slow down depending on whether lawyers want to do for their client and want to do for themselves, charge more legal fees, etc. If there's no response, one can go to the companies listing the products on their websites, which are big online retailers like Amazon, Walmart, etc. and request that the products be de-listed and give them the reason why and refer to the USPTO registration for official confirmation that one's trademark claim precedes other parties'. That's the main part of trademark law, is preventing another company's product's mark to confuse customers as to the nature of the product and dilute the value of one's own brand if it gets mistakenly associated with the other company's trademark.
I haven't gone through trademark litigation yet and filing a lawsuit like in normal civil litigation suits, but it's an interesting area of the law and I look forward to finding out if the client decides to go through that step! That's the thing about practicing law, despite how much you get trained in law school and how much you pay in law school, a lot of the actual work lawyers do and procedural steps like filing paperwork is only just learned by oneself out of necessity. It's a very build-your-own-work and build-your-own-business sort of industry.
I hope you've enjoyed this "dumb-it-down-for-normal people" version of Bob Yan Law Blog!
Fantasize on,
Robert Yan
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