The “VERY DEMURE... VERY MINDFUL” Trademark Case - On the Record with Attorney Shay 411

okay all right so I am Live on YouTube and I'm live on Instagram so I wanted to wait for a few more people to join but I'm actually running a few minutes behind so let's see if we could probably get like two maybe three people on and then I'll get started so just give me maybe like another two minutes okay oh I have someone on YouTube too okay so we got two people so okay so I said two people so we'll get started um and I have someone also on YouTube so thank you for joining on YouTube as well as Instagram so today I wanted to talk about the viral the viral trademark situation um it's kind of turned into a bit of a trademark battle um but I'll just Jump Right In First by um introducing myself giving you some background information on who I am uh my name is Shay the Bullock holder I am a IP attorney based in Maryland I'm licensed in Maryland and in New York intellectual property is my passion specifically my practice is primarily made up of trademark prosecution and so this matter is quite interesting to me because I think there's a few points for us to learn from outside of rushing to file a trademark application there's a few other things that I think we should consider so just a little bit about my background um I'm the owner and principal attorney for the law office of shevy holder again I'm based in Maryland licensed in New York and Maryland um outside of trademarks I also work with copyrights as well as contracts so if you have any contract matters specific negotiation contract formation as well as nil matters which directly relate to contracts as well as IP for student athletes so I just wanted to back up and tell you a bit why I'm passionate about intellectual property I view intellectual property and trademark rights kind of like a social justice civil rights issue specifically because typically creators or business owners of color there's a barrier of Entry as well as sometimes we don't have the proper information to properly protect our rights and oft times we do see infringement happen so that's hi everybody that joined that's um where my passion for that comes from so I actually spent a few years as an IP Legal Assistant for NBC Universal in La before going to law school I also interned at the US copyright office so I do have quite a bit of experience in this area so we can kind of Jump Right In if anyone has any questions feel free to always leave in the chat but just to give you guys some background information and while we're here I'm pretty sure at this point you've heard the viral term very Demir very mindful it's gone viral over the last I would say maybe 10 days 12 days and so ultimately there is a content creator um Tik tocker named Jules LeBron and so um this content creator pretty much was given an explanation of how you should dress and how you should present yourself at work and so that came across with them saying very Demir very mindful very cutesy kind of describing how you should present yourself at work so over a few days it went viral everyone's using it celebrities included um I think maybe a few days ago is when the Tik tocker came back and kind of posted um a video crying saying like I dropped the ball someone's trademarked my phrase we have an issue so from that I think there's a lot for us to learn as content creators as business owners and just as people who consume um social media um I think there's a lot of misinformation that's going on as far as trade Mark so I just kind of want to back up and see some stuff that thank you thank you girl you got me laughing um uh just back up and kind of give us some information on like that we can use we can use so again if you have any questions you can drop it in I do want to kind of give you a status update as far as the trademark filings so far I've counted maybe like five different people who who have applied to trademark some variation of very miror very mindful very cutesy at this point so it's obviously very popular um the first trademark application that cus the stir um was filed on August 20th for um class 20 I'm sorry for class 35 services for advertising marketing and promotional services and so this was the first application that kind of caused a stir and had Jules LeBron like oh my gosh somebody got my trademark um since then someone has filed an application for very demure very mindful without the um without spacing um but also for class 35 Services um there's also been an application for very Demir very cutesy that was filed on August 24th there's been another application for always Demir and very mindful so um I will say that adding the word and or spacing or always versus very that might not really differentiate the applications so that's another point that I think we can learn from but I'm going to jump right into to the I have about five points that I think we can learn from and again if anyone has any questions you can let me know so first what is a trademark so that's the main question what is a trademark so a trademark is a source identifier for a good or service so simply because it's a catchphrase and you originate it and you're the originator of the catchphrase that doesn't mean it's a trademark so what you want to think about okay if I have a catchphrase and it's catching on what services or Goods will I associate that with so I believe that this content creator wanted to associate that phrase with clothing and I think at this point she's actually filed a trademark application but the whole point is you can't really just own a phrase just because you came up with it it still has to be associated with a good or a service so that's the first thing for us to take the next thing is is the catchphrase actually can you actually distinguish it is it distinctive so we may run into to a problem with that because at this point it's becoming part of popular culture that's my threeyear old it's becoming part of popular culture so I think I have a question should a person trademark a wine festival um sure yeah yep and we could talk about that more offline if you want to set up some time for us to kind of go through the facts of your situation so I can get more information but yes festivals yes um so but uh the point I was making is that when a turn becomes a popular term it becomes part of the culture it becomes a common term you run into an issue because now it's not really distinctive so that may be an issue since the term is so popular now once the USPTO the United States patent and trademark office which is the federal agency through which you file applications for trademarks they have to come they have to do an evaluation and an an analysis and determine whether it is distinctive enough to stand as a trademark at this point so there is a downside to having something go viral in that regards um I can think back to I think it was 2019 LeBron James wanted to trademark Taco Tuesday and the USPTO was like it's a common term we're not we don't want to block that term off it's a popular term everyone uses it um we're going to keep it open um I think more recently though the USPTO has kind of shifted on that determination and they have started to allow trademark registrations for um different variations of logos for taco Tuesday but that's just an example and this is some language from the USPTO and how they deal with um situations when the term has become viral or too popular um this is from one of their decisions the apply for Mark is a commonplace term message or expression widely used by a variety of sources that merely conveys an ordinary familiar well recognized concept or sentiment so if they determine that to be the case for your trademark or for your catch term you may get denied so that's one thing that we need to consider is it a trademark is it tradem markable um another thing we need to consider is um what is the class or good associate associated with the catchphrase so I mentioned this earlier so just because you come up with the term a catchphrase something that's popular that doesn't mean that it's actually a trademark or that you can trademark it unless and until you actually associate with a good or a service again I believe in this situation Jules wanted to associate The Catch Phrase very Demir very mindful with clothing which is fine but just to own a term straight out no it has to actually be associated with a good or service so that is a point that I did want to make um if anyone has any questions feel free to drop them in the comment section next another thing that we can learn is whether the trademark is just in the application process or whether it's registered again Jules kind of went into panic mode which I understand once she learned that someone had applied for the trademark that doesn't mean the person owns the trademark or that the trademark is registered to that person so an application is just that an application so you submit the application and you're essentially saying to the USPTO I want to register this as a trademark it still has to go through the proper channels and be approved to be registered as a trademark so during that process of application someone can oppose um you can drop the ball and then your trademark becomes abandoned the USPTO can issue you an office action where you have to answer questions and pretty much um verify that the trademark that your the term or the catchphrase or the logo that you're trying to trademark should stand so there are quite a few barriers to receiving trademark registration and simply filing the application does not mean that you have a registered trademark so that's another part um that I wanted to mention looks like I have another question does it require an attorney at any point in the process whether you have an attorney or not is like every other legal question it really depends you can file an application on your own if you're a US citizen you can file an application on your own it's not required if you're a non- US citizen you do have to have a US attorney file your trademark application you can file it on your own but I will say that nearly 50% of Us application trade us trademark applications receive office actions and so office actions are letters from the US PTO which is the agency that grants trademark registrations and the letter may say we need more information or this wasn't filed properly we need you to make this change um we need you to argue why this doesn't um why this should go through because it looks like we have a conflict of interest essentially so at that point you may want to get attorney an attorney involved but it may cost more because now they're doing they're trying to fix an issue so investing on the front end is always a good idea if you have a simple phrase that you think is going to work by all means but part of the benefit of an attorney is to determine whether you even have a trademark to begin with is a tradem markable um is there um is someone else in the marketplace that's using something that's confusingly similar where you may have an issue because then you start to get into trademark infringement issue so then that's when people be will be sending you C and desist letters um so you can always take a chance but the safest smartest thing to do is to get an attorney involved on the front end um sooner than later and hello everyone that joined I have another question is there a price associated with trying excuse me to create a trademark when you say create a trademark do you mean like build a brand or apply if you're saying apply for a trademark yes so it depends on the type of filing filing basis um that you're doing so it can be 250 it can be 350 per class yes to apply the the lowest um fee is $250 per class of good or service so if you have one class it'll the application will be 250 if you do it on your own if you do it with the standard application but all of that is part of what the attorney will help you determine um what goods or services you should apply for the filing basis the type of application um those are all things that the attorney would help you with and so that kind of goes to my next Point um filing bases so people when you file a trademark application generally there's two filing bases there are there are more but for the purposes of this we're going to talk about twoo so you can file a trademark application saying hey I intend to use this Mark as a use this logo word phrase scent what have you as a trademark or I currently in so all of the trademark applications related to very Demir very mindful very cutesy that I listed off earlier in the session it was about five all of the filing bases are intent to use that means that everyone's saying I'm not using it as a trademark yet but I plan to so think about it that way too even if it's you're in the early stages of planning you can always file an application before you actually started to use your mark as a trademark in interstate commerce so the whole point of trademark law trademark rights and protection is that you're saying I as a business or I as an individual I am using this word this color this phrase this sound this scent what have you as a distinguishing Source identifier for me in the market place so that consumers know that it's me when they see this when they hear this when they smell this what have you um scent marks are harder to get um I know Plato has one and I think Crayola just got one oh Verizon has one too but it's not a lot of scent um trademarks that kind of make it through but ultimately that's the whole point of trademark law and so when somebody sees that Source identifier they know it's you so brand recognition Goodwill um Customer Loyalty all that all those things are wrapped up in it so it's not just the point of owning a phrase just to own it the point is that you're trying to use it in interstate commerce and use it in the marketplace and make money by having your customers associate with the brand that you spent time and money and invested and building up hello to everyone that's here so those were the two filing bases so again all of the trademark applications that we see right now for very de miror very cutesy very classy I'm sorry what it a very classy in there I don't think for the applications for the applications that we have everything is a variation of very Demir very cutesy always Demir and very mindful very very Demir very mind F so it's like a combination of those they're all an intent to use so intent to use there's no barrier to get your application in because you don't have to provide evidence that you're using as a trademarket you're just saying I plan to let me put my hat in the ring and we'll get there and so the Trademark Office allows you time to provide evidence and proof that you're using it in Commerce and so you can also renew the time frame to have um more time to respond so you may say hey I'm working on Research I need more time and and they'll allow that and ultimately what you're doing is you're going to provide them with evidence showing that you're using your trademark as a trademark in interstate commerce not just within your state and Interstate Commerce interstate commerce has become way more um common now also because of the internet and the world has become smaller so it's easier to have customers in different states across state lines and that's what's required for a federal trademark now you can do State trademarks as well but for federal trademark registration that's what's required okay do we have any questions no looks like we're all cut up on the question so the last takeaway point is build a team build a team so if you are a content creator you're a business owner um you're in the early stages and maybe the resources aren't there just yet I would advise to kind of do your vetting on the earlier side so a lot of attorneys they'll do um complimentary um cons ation to kind of get started so you can kind of see do I want to work with this person you can kind of build your dream team and so when something hits you already have people in line and they can advise you and you've already kind of opened the door um and so in this situation again with jewels how would you know that it was going to blow up you wouldn't know right until it does but having the proper people in place once stuff starts moving you can kind of say like hey like what's going on I need some advice like what should be my next step so I think that is one of the things that maybe could have saved this situation some but I think everything happens for a reason because um it does look like jwes was receiving brand deals and partnership deals early like immediately almost immediately after it went viral and so my thought there is what could have been done different is once you starting to get the deals like you should be thinking about trademarks immediately like once you seeing it like catch I mean have a few days but again like I said although people file applications first that does not mean that they're going to get registration because Jules has clear evidence of being the first person using the mark But was she using the mark the apply for Mark as a train Trade Mark is something different that will need to be um appr proven in order to receive the trademark registration so um I have another question can you distinguish copyright from trademark regarding our rights yes so a trademark as I was saying is a source identifier so ultimately a trademark it can be a word a phrase a logo it could be a name um it could be a sound um a sense we kind of went over a sense sents aren't as common it could be a color but ultimately a trademark is where you're saying this is what you should think you should think of me when you see this in the marketplace so you think about the Nike swo you think about the target the circle with the little Circ ins have the McDonald arches all these different things these are all trademarks and branding so it's the way that people experience your brand or your business and it's the association that's Crea in their mind and the Goodwill that's associated with your business so it's the Hallmark of a business um I will go so far as to say trademark before business registration so um that is a trademark I hope I've answered that for you clearly um and trademark rights start from the time that you start using your mark as a trademark but you don't have to necessarily file your trademark application right away so that's part of the benefit too of having an attorney because just because you search something in your search engines and you don't see that someone's has a YouTube channel or a Instagram account or a Tik Tok account using that name that doesn't mean people aren't using it so you can have somebody in Oklahoma that's using your exact term or phrase and they're running a business and maybe they have a shop on Etsy and they just don't promote on social media that doesn't mean they don't exist they could be the first user of that term phrase color whatever in association with the particular class that causes Conflict for you and then you can end up in a trademark infringement matter simply because you weren't aware so um that is a trademark and then copyright