Trademark Advice for Amazon Sellers with Suzi Hixon — Entrepreneur Unveiled Series #002

Trademark Advice for Amazon Sellers with Suzi Hixon — Entrepreneur Unveiled Series #002

About the Series

The Entrepreneur Unveiled is a series of interviews with entrepreneurs at varying levels of building their online business. The goal is to have an open dialog about what it’s like to be in the trenches; what is working and what is not.

Introduction

If you sell on Amazon (or anywhere online, really), trademarking your brand is critical to retaining control over your business. This interview is nearly an hour long, but it’s packed full of trademark advice for Amazon sellers.

  • Having problems with other sellers hijacking your listings?
    …This video is for you.
  • Want more control over your brand?
    …This video is for you.
  • Think you’ll ever want to sell your business?
    …Then this video is for you!

In this episode of the Entrepreneur Unveiled series I interview Suzi Hixon, The Private Label Lawyer.

She’s both a private labeler who sells on Amazon AND a trademark attorney who specializes in trademark advice for Amazon sellers. Her advice is invaluable!

Episode #002 Key Concepts

[00:02:33] Suzi’s background

[00:05:51] Ree’s personal trademark horror story

[00:09:24] The purpose of a trademark

[00:13:29] Trademarking a logo vs a word or words

[00:14:22] Should you trademark your slogan or tag line?

[00:17:03] How “first to use” can work in your favor

[00:19:05] Steps to take before filing your trademark application

[00:21:08] How the “likelihood of confusion” or a “famous” mark can affect your trademark application

[00:25:48] Costs involved in filing a trademark application

[00:34:34] Video resources at the USPTO

[00:35:42] Monitoring and protecting your mark

[00:43:08] Don’t underestimate the value of your brand; it’s more than just your inventory!

 Video: Trademark Advice of Amazon Sellers with Suzi Hixon

Handy List of Links and Resources From This Episode

Episode #002 Transcript

[00:00:23] Ree: Welcome to PrivateLabelPreneur. This is episode number two in the Entrepreneur Unveiled Series. This is a series where we interview entrepreneurs of all types, and all levels of success to try and figure out what motivated them to start a business, and what they’ve found success in, what their challenges are, and so forth. Today I have a special guest to bring to you. Her name is Suzi Hixon. She is an interesting entrepreneur because she is one on two levels. First she is a private labeler, and she sells on Amazon. Then the second is that she runs a service called Private Label Lawyer, where she offers trademarking services, and other services that help private labelers in the Amazon space, and also in e-commerce.

I wanted to bring Suzi on today to talk about trademarking, and the importance of why we should consider, as a private labeler, trademarking early on in the process rather than waiting until later. I have a personal story that I will share with you in a minute, that if I had started the trademarking process earlier I could have avoided a headache, and potentially even having to maybe trash my inventory. So that’s why I thought it was so important to bring Suzi on to talk about trademarking. So with that let me bring Suzi on, and we’ll get started.

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So Suzi, welcome to the show. Thank you for taking the time to come and share with us what you know, and helping us to figure out whether or not trademarking is the right thing for us to do.

[00:02:18] Suzi: Thank you for having me.

[00:02:19] Ree: You’re welcome. So let’s get started. Why don’t you tell the listeners a little bit about yourself, how you got started with private labeling, and a little bit about your trademarking services.

[00:02:33] Suzi: Okay, sure. So my name is Suzi Hixon, and I started practicing law about 13 years ago. I actually started out in patent prosecution, and it was fairly boring. So I have tried to evolve my practice into more general intellectual property law, and ended up pigeonholing myself again into trademark work, which I actually really love. So I’ve been doing that for 13 years. Last year I had a client who was doing some private labeling on Amazon, and I wanted to get a better handle on exactly what it was he was doing, because he was throwing around some terms I didn’t quite understand. So I started doing my own research, and I thought well this looks pretty cool, I think I want to try this.

So I started private labeling last year, I imported my first product, and I did pretty well with that product. Then I did another product under the same brand and it was a complete flop. So just a little tip to any of your listeners, you’re going to have ups and downs with private labeling in the Amazon sphere. So don’t give up if you end up having a bad product, and don’t get overly confident if you have one that’s just a runaway success. But by hanging out on the forums, and on Facebook, and just being in the sphere, I realized that there were so many people who were having problems with counterfeit activity on their Amazon listings.

So I recently rebranded my practice to focus on helping people who are in this Amazon sphere, helping them protect their brands. Helping them pick a strong brand, helping them get a trademark for it, and also, by the same token, actually helping them enforce their brand. So a lot of people think that once they get that trademark it’s a one and done deal, but the work is just beginning in terms of brand protection, and brand enforcement.

[00:04:44] Ree: In fact, that’s how we met. I had posted an article on my blog, PrivateLabelPreneur, about the four types of hijackers, and how I deal with them. You reached out me, and we had a conversation about that. When I actually started talking to you I thought oh my gosh, she’s awesome, let me bring her on the show. So that’s how we connected. It has been really great getting to know you. The beautiful thing is that you have got personal experience with being a seller on Amazon, and private labeling, which I think makes you uniquely qualified to help people like me, and our listeners. So let me give a little bit of context to the listeners about the story I alluded to earlier. I think that will help to add a little bit of color to the importance of trademarking, and why that gives you leverage when it comes to your brand.

[00:05:51] Ree: So earlier this year I was at the ASD Trade Show. I woke up on the day that I was leaving to an email notification from Amazon basically saying we’ve been notified that you are infringing on somebody’s intellectual property, therefore we have removed your listing, go work it out with them. So I’ll try to keep it long story short. But the basic thread was that in trying to figure out who it was that had the takedown notice implemented I thought that it was one company. I thought that because I looked on the USPTO, which is the United States Patent and Trademark Office website. The brand that I’m talking about where the listing was removed is called My Beer Cozy, and I have written about that on the website PrivateLabelPreneur. But they had taken down the very first beer cozy set that I had put up.

So I was looking for anything where there might have been somebody who filed for a trademark on My Beer Cozy, or whatever. What I discovered is there was a company called Cozy Brand Corp., and they had filed for the trademark Cozy. I thought those were the people who had taken my listing down. Long story short it turned out it wasn’t them, but it was in fact the Bic Corporation who owns the trademark Koozie. I had used that term in my title, not as my product name, but as a way that people referred to it, because I wanted to use it as a keyword for organic search. So it turned out it was them. We got that all resolved, that was no problem.

But what happened was I realized there was a real chance that if the Cozy Brand Corporation actually got the Cozy mark assigned to them that they could do the same thing that the Koozie trademark did to them. Then I would have to trash all of my inventory because that word is in my brand, and my brand is on my product. So it now has become a big issue. I filed for the trademark myself. It has been rejected. Now I’m going to have to fight that. So in order to have avoided that I should have filed for the trademark early on. That wouldn’t necessarily have stopped somebody else from applying for the trademark, but it would have given me a lot more leverage. So there is some context for the readers about that.

So why don’t you talk a little bit, Suzi, about what a trademark actually is. Is it limited to just the United States? Is it for someone who is just selling at a brick and mortar store in their state, do they need to worry about it, or do you have be in interstate commerce? What are all of these things that go into considering whether or not you should trademark?

[00:09:24] Suzi: Sure. There’s a lot of things I can address in that question Ree. But in its most basic sense a trademark is a source indicator. So when you look at a trademark as a consumer you should think about the source of that product. That is what the goal of that brand owner is, that’s why they trademark something. So for example, and I use this example a lot. If you’re driving down a road and you come to a red light, you lean down in your car and look over, and you happen to see the rims on a car, and you see maybe a blue and white cross logo. You probably don’t even have to look at the car to know that the origination of that car is BMW. So that is at its most basic sense what a trademark is, it’s a source indicator.

A trademark really serves two purposes. One is to help a company build brand value. The second is to help consumers know the source of a product. So there’s a lot of policy reasons behind the protection, and the fact that the US government will help you protect and enforce a trademark. It’s really at the end of the day to help consumers distinguish across product lines, are we looking at a product that’s a completely generic product, are we looking at Tide laundry detergent, are we looking at Gain laundry detergent, are we looking at some generic laundry detergent. That’s in its most basic sense what a trademark is. I mentioned that the federal government helps you in this endeavor. To protect your trademark, or to file with the federal government you would go to to the USPTO.gov. You can file a trademark application as an individual. You don’t need a lawyer to help you do that. You might need a lawyer to help you respond if you do get a rejection from the USPTO.

[00:11:30] Ree: I’ll interrupt you, and just say having done that myself. The only reason I felt confident filing, and I wasn’t even 100 percent confident, I was confident enough that I went ahead and did it anyway, because these classifications are complicated. So there’s international, and then there’s local, or United States ones. It’s hard to know exactly sometimes. Your product may not exactly fit in any one. So do you do just one? Do you do multiple? Does that cost more? I would think it would be worth the money to hire a trademark attorney for the first one you do at least.

[00:12:23] Suzi: There are some challenging things during the initial application process. It’s not super complex, but there are always little hangups that you may not be aware of as a first time filer. I’ve filed probably over 600 trademark applications at this point, so I know what to look for. Also, I’ve seen the results of my filings, maybe where I’ve made mistakes, or maybe where we should have classified something differently. Maybe we shouldn’t have entered what’s called a disclaimer proactively, we should have let the USPTO tell us to do that. We should have filed a logo in black and white instead of color. Just little things like that, just little hangups that people often get involved in, I think it can be problematic. That’s where a trademark attorney’s expertise, just because we’ve filed and prosecuted so many of them, I’ve noticed that a lot of people do get hung up on.

[00:13:29] Ree: Another thing that you’re talking about is this idea of trademarking a logo versus trademarking a term. That’s another thing that I think people have to figure out what’s the best thing to do. I tend to just go for trademarking a wordmark rather than a logo.

[00:13:53] Suzi: Right. If money is an issue at the start of your business, which it is for 99.9 percent of us, I tend to recommend people trademark the words first, and then later on revisit their logo. There are actual distinctive and unique elements about their logo that qualify them to actually be protected with the USPTO, but typically it’s suggested to file for the wordmarks first.

[00:14:22] Ree: Then another thing that I think is worth considering. So My Beer Cozy is the name of my brand. Then I have a tagline, which is chillin’ with an attitude. So I didn’t trademark that. I tend to think that for, and correct me if I’m wrong, that for people who are just starting out that you should not trademark the tagline. Because I have on other projects that I have done, I changed the tagline after I got started. If I would have trademarked it then you feel like you’re stuck, or then you have to go back in and pay the money to trademark another one. So in my opinion, and correct me if I’m wrong, I tend to think start with the smallest amount that you can trademark to get yourself some protection, and then you can always add.

[00:15:21] Suzi: Yes. That’s right. I recommend looking at your slogan later on as well, or your slogan/tagline. When you’re using it you’ll still want to use a little TM next to it. You’ll see a superscript or a subscript next to a lot of trademarks. You don’t have to have a pending application to use the little TM. The reason a lot of companies do that is that it does put third parties on notice that you are claiming that as a trademark. In terms of when you should file something, like a mark, or even a slogan or a tagline, I suggest people really think about whether or not it is considered an asset of their business. Do you consider it a value just like you do your computer, your iPhone, or anything like that.

I also think people should think about whether or not they would be emotionally impacted if they saw someone else using that. Lastly, I think people really need to think about would you be ready, willing, and able to enforce the trademarked. Like I had said earlier, just filing a trademark application, and going through the process, and getting the registration, and getting to use the R in the circle, which it totally awesome alone, that’s just half of the battle when you’re dealing with trademark work. Your work has just started. You have to be ready to proactively monitor your mark, to make sure others aren’t out there using it willfully or unintentionally. You have to be ready to enforce it if you need to. Are you ready to have an attorney send a cease and desist letter on your behalf.

[00:17:03] Ree: The truth of the matter is you have those burdens regardless of whether you’ve filed for a trademark or not. My story that I shared earlier is a case in point. I never filed for the trademark, but I in my mind thought, because I did the research to see if anybody else was using it, I thought okay, why file a trademark because I have first use. Which is giving me a little bit of an advantage in my effort to get the other person’s mark disqualified. But it may not be good enough.

[00:17:45] Suzi: It’s not good enough. In the US it is kind of awesome because we do recognize common law use rights here, which is we recognize the first use of the trademark, but that’s typically limited to geographic territories. Of course now we’re dealing with the internet, so those geographic territories are very blurred, and so I’m not exactly sure myself where we’re going with that. But to really be able to enforce a mark it’s really great to have a trademark registration. Once you get that trademarked registration what that means is that you have presumptive rights to that trademark for those goods and services as of either the date that you first filed it, or the date that you first used it, whichever comes first. So there’s a lot of benefit to filing the trademark application as soon as you can to try to beat others to the USPTO. If finances are a major issue for you don’t totally freak out about it, but try to file it as soon as you possibly can.

[00:18:50] Ree: Before somebody does a filing. So let’s say that I had decided I was going to file for that trademark. What should I do before I actually file? Are there steps that I should take?

[00:19:05] Suzi: There are steps that are strongly recommended that you take before you file, and even before you start using it. Before you import your first private label product, and you slap your trademark on there you really need to do a preliminary trademark search. You’ll also hear this called a knockout search, or a cursory search. You can do these on your own. You can get on the USPTO’s website, which is USPTO.gov. Of course you can use Google, which is fantastic in terms of letting us know what all is out there in terms of trademarks that are already being used in commerce. A really good platform that I like is called Knowem.com. That’s a really good platform to see if your wordmark could be used as a domain name, or as a social media handle, or user name. Although those aren’t necessarily considered trademark usage, it’s a good way to just start seeing how your mark could already be used out there. If you see a mark that you want to use being used as a Twitter handle you’re going to want to go to see what those people are doing.

[00:20:31] Ree: The reason for that Suzi is because, and I just wanted to pull this out of you, is to make sure that if they’re using that mark they’re using it in a completely different way than you would use it. So we could use the example of My Beer Cozy. If somebody was using My Beer Cozy, or even just the word cozy, but they were selling car covers, that is completely different, and there is no likelihood of confusion with my product, which is a beverage can insulator.

[00:21:08] Suzi: Sure. The fact that the goods are different leads us in the direction of there not being a likelihood of confusion. However, there are several different things that really should be taken into consideration at the end of the day. For example, is that underlying mark famous? So for example, I don’t care what you want to do with the word McDonald’s, or Starbucks, you’re not going to be able to use it. I don’t care if you’re using it for something totally different. So there’s a lot of different factors that go into that likelihood of confusion analysis that people need to think about. This is what makes it difficult when you do it on your own, and you don’t have a trademark attorney do it. Because we know the different factors that go into that analysis, and someone who doesn’t do this every day doesn’t know that, they don’t know that that could be an issue.

So after you do a preliminary search, and you feel a little more comfortable with a mark, at that point you may want to talk to a trademark attorney to do a comprehensive search for you. The attorney won’t actually do the search, we’ll order a search through a company like Thomson CompuMark. I use Thomson CompuMark. There are other companies that do this that do a really robust search of different spelling variations. It will search common law uses, Dun & Bradstreet, the USPTO filings, and registrations. The good thing about it really with this kind of comprehensive searching is that it does take into account spelling variations. So for example, if your mark is checkmate, the search will search chickmate. So it would search chickmate. It would also search checkm8. So it will search all these different variations.

[00:23:11] Ree: I would never to look for that, or think that there was a likelihood of confusion.

[00:23:17] Suzi: Even if you did you don’t have the time to search all of the different iterations. Using a company like Thomson CompuMark, they have the software place that does that. So what I’ll do is I’ll order a search. Then when those search results come in I will review those results for my client based on what their mark is, what their goods are. Then I can also see all those results. Sometimes I have to dig deeper. Sometimes I have to consider the fame of an underlying mark. I will consider who owns an underlying mark that could be a concern. Is it a big company like Starbucks? If it is a big company like Starbucks that owns some random mark. They own a ton of different marks, not just Starbucks and their mermaid logo, but a lot of their different coffees, for example, are trademarked.

So I’ll consider, okay, I know Starbucks owns this mark, and I know that they’re going to aggressively protect all of their marks. I know that they’re monitoring everything. So if a result like that came up for my client I’ll have to tell him hey, I know that Starbucks owns a mark that could be considered confusingly similar to yours. I just want to let you know that they’re going to aggressively protect it. So there’s a lot of different factors that go into that comprehensive analysis. It’s not required, it’s suggested, and they can be pricey, so most people do opt to go ahead and file an application.

[00:24:53] Ree: But the USPTO, when your application is assigned to one of the USPTO attorneys, they will do a search, at least some level of a search. So you want to make sure that you do something before you file, right?

[00:25:10] Suzi: Yes. So the USPTO examining attorney will only search the record of the USPTO. He will not go beyond that record. He will not utilize some common law usage of a mark as a basis to refuse your mark, he’ll only utilize what’s on the USPTO record. That’s another reason to file a trademark application, because when you do even when you have a pending application your mark could be used as a basis for a rejection for a subsequently filed trademark. That goes back to what we were talking about a minute ago, why it’s good to file early.

[00:25:48] Ree: Yes. Talk a little bit about the costs involved, and the services that you provide, so people have some kind of sense of what they’re looking at if they try it themselves, versus they have an expert, like you, help them.

[00:26:06] Suzi: Sure. The initial filing fee with the USPTO is currently $275 per mark, per class. You can get that down to $225 per mark, per class, but you have, got to be very specific in the goods that you pick with respect to that trademark. If you don’t file it online it’s $325. But I have been doing this for 13 years, and I have never not filed a trademark application online. Everyone files it online. I’m sure there are a few stragglers, a few of your old trademark attorneys that have been doing it forever, and they haven’t gotten with the program to file it online. But there is that incentive of $50 savings to file it online. So you’re looking at about $225 or $275 per mark, per class, and that’s if you do it on your own. Now you can get a trademark attorney to do it for you, and their costs are going to vary wildly. It’s going to vary on the geographic location of the attorney, and the years of experience.

I’m currently offering flat rates for initial filings, and a lot of attorneys, I think, are starting to go towards a flat rate system. So if you already have an attorney you work with make sure you ask them about a flat rate option, because that really helps entrepreneurs who need a lot more predictability in that initial filing. So I’m currently doing a flat rate of $600. That does include the initial filing fee, as well as the preparation in the filing and the docketing of the trademark application.

[00:27:53] Ree: The research as well, right?

[00:27:55] Suzi: That does not include the research. The comprehensive search, that really robust search that we have to pay Thomson CompuMark for, I do a flat rate of that for $1,200, which is crazy. I know people are like oh my gosh, that’s more than just filing a trademark application. But the flat rate includes the outsource fee that we have to pay to Thomson CompuMark, which runs between $500 and $700 depending on the search parameters that we have them do. So those searches are expensive.

[00:28:37] Ree: Then the analytics after you get it back is what makes up the difference.

[00:28:42] Suzi: Sure. Yes. That gives me time to review it, and report to you, and give you that analysis of whether or not…

[00:28:49] Ree: So for the initial filing flat fee, I just want to make sure that our listeners have a general idea, should they do a cursory search themselves? Then are you relying on that?

[00:29:08] Suzi: I am, yes. If someone asks me to do a cursory search for them I will do it on my hourly rate. I would prefer to not opine on a cursory search, because it is impossible to reveal everything that could possibly be out there in terms of trademarks. Even when I do the comprehensive search for someone, the really robust search and analysis, I always have to utilize disclaimer language that not every search can reveal everything. There could be stragglers out there, or marks that just haven’t been revealed.

[00:29:46] Ree: I would assume there would have to be some go back and forth between yourself and your client, where you would say this one came up. I would put it in the not to worry about category, but I wanted to run it by you because you may know something about your business that I couldn’t anticipate.

[00:30:05] Suzi: Sure. I come across situations where maybe the name of the company that owned a mark of concern seemed closely related to my client, and I’ve had to go back and say hey, what do you know about this other company? Do you know anything about it? Are you remotely related to this other company? You’re located in the same city. This is a very big coincidence. What’s going on here? So yes, there’s always some going back and forth, and getting some more clarification about what their knowledge is of the industry. Sometimes it is an industry specific situation.

[00:30:44] Ree: So going back to then just the flat fee for the filing. I’m just going to give the listeners my personal perspective on the value for hiring someone to do that initial filing, even though you as the client are doing the majority of the research to make sure that there’s no perceived conflict. I still think that there’s value in hiring an attorney, and from my personal experience it has a lot to do with the classifications, how to figure out which ones you should use and why. Then also it’s the managing of the process. Because filing a trademark isn’t something where you file an application, and two weeks later you get the stamp that says you’re good to go. It’s six months for this piece, and then there’s the publication in the The Gazette, which gives the world an opportunity to object to your filing, and that lasts 30 days. Then there’s the six months after that where if you’re not in use you have to file your 1A filing, which amends the application. I mean there’s a lot.

[00:32:04] Suzi: Ree, you have learned a lot in this.

[00:32:05] Ree: That’s because I actually did work with a law firm on a trademark for a project I had called The Escaping Dodge, which is still out there. It’s a personal finance website. I trademarked that from the very beginning with an extremely expensive law firm, and I had to catch their mistake. So I am a little bit familiar with the process, and I also know that you have to be an evolved participant. If you’re going to hire an attorney you need to be responsible for what’s being filed, because mistakes can happen. Anybody can make a mistake.

Secondly, I still think that it’s worthwhile hiring an attorney. A flat rate I think is really great because you have a better idea of what to expect. But the process has a lot of legalese. When I was in corporate America I worked in a legal department, so I have that little bit of an advantage as well. But if I were coming in as a lay person, I mean just trying to figure out the classifications, and understanding the back and forth between the USPTO attorney, and any, it’s an office action where they send you something saying well this little piece in your description would require another class, or you have to modify your description and file that. So these little things all can be time consuming if you try to do it on your own, and time is money. It can also be something that is very difficult to figure out if you’ve never done anything like that before. So I really do think that hiring an attorney is not a bad strategy if it’s your first time in particular.

[00:33:57] Suzi: It’s just one of those things that I think is good to outsource. Because the USPTO website is complex, and I have grown with it over 13 years, and I have seen it evolve, and different incarnations of it. I’ll be looking at it one day, and there will be a new note with a little asterisk that says please read this, and please check this box. I’ll think, how could someone who doesn’t look at this on a daily basis, this has got to be mind blowing.

[00:34:34] Ree: They do have, I will give them credit, they do have quite a lot of very good videos. So if you are the type of person that wants to go through, and watch all of the videos you can probably do it. But if you’re at all not interested in the legal aspects of your business, and managing that process. Because it can take a year, if not longer, then it definitely is worth hiring somebody to help you with that.

[00:35:08] Suzi: I think one thing too that has been official about using a law firm is just being on their docket. Sure, you can calendar your own things, but it sometimes is a little more complex when you’re having to calendar things that are so far out. Like you mentioned earlier, the USPTO is very generous with their response requirement deadlines. It’s all six months out. A lot can change in a business in six months.

[00:35:42] Ree: So moving on from the process of trademarking. How can someone tell if their trademark is being stomped on? What do you look for? What should you be doing?

[00:35:59] Suzi: Do you mean is someone infringing it, or you think is infringing it?

[00:36:03] Ree: Yes.

[00:36:04] Suzi: Well of course, I mentioned this, it’s really important to monitor. You can use a company, like the one that I suggested a minute ago, for doing those comprehensive searches. Thomson CompuMark, they also will police a trademark for you.

[00:36:17] Ree: It sounds like that would be pricey though, based on the first…

[00:36:20] Suzi: It’s not really as bad as you would think. There is an annual fee. It runs about $300 and up per year just to monitor the USPTO filings. So I think it’s worth it, especially if you don’t want to take the time to proactively monitor constantly. Which if you’re not going to use a company to police your mark for you then you need to do it yourself. You need a calendar monthly to do that. You can use Google Alerts to help you. Otherwise you can get on Knowem, which I mentioned earlier, to do those preliminary searches. You can also use it to continuously check and see if a similar mark is out there. The good thing about using a company like…I know it sounds like I’m trying to sell Thomson CompuMark, but there’s dozens of companies out there that do this, and it is just the company that I have used for a long time. Just like I mentioned earlier when they do those comprehensive searches they can do those different iterations of your mark.

The same thing goes with policing, it will police different spellings. Because a mark doesn’t have to be exactly the same as your mark for there to be a concern of infringement, or a likelihood of confusion. So let’s say that you’re proactively searching, or you’re using a company like CompuMark to proactively search, and a mark comes up that is what you consider confusingly similar to yours. The next thing you’re going to need to do is some due diligence. You’re going to need to look at that mark, see who owns it, see how long they’ve been using it? Have they been using it yet, or did they just file an application on an intent to use basis? Have they been using the mark longer than you have been? If they have been you’d better not send them a cease and desist letter. You don’t want to send a cease and desist letter to a company that has been using the mark longer than you’ve been using the trademark, for obvious reasons. So you need to do that due diligence.

You can do the due diligence on your own, and of course there are companies that will do the due diligence for you. I’ve used a company in the past called Marksmen, and they do what are called Marksmen investigations. They will do an anonymous investigation into a company and a trademark to try to get a really good idea for how long a company has been using a trademark. They have some very sneaky ways of doing those investigations, and it’s kind of interesting. But that’s a really good way to see if a mark has been put in use yet, and if it has been how long they’ve been using it.

The best situation really is when a mark hasn’t been put in use yet, and then you can proactively let that company know, because oftentimes they don’t know they’re infringing. We have to assume that they don’t know that they’re doing what they’re doing, that it’s not an intentional situation, and usually it’s not. So your best situation is when you can proactively contact them and let them know hey, we have a problem here. Your mark is confusingly to my client’s mark for these reasons. We have concerns here. We strongly suggest you choose another mark. A lot of times they are innocent. They’re like oh gosh, wow, we didn’t know, we’ll change our marks. Of course there are also situations where you get pushback, where they’re like no, we’re not changing our mark, go take a hike.

[00:40:02] Ree: So it sounds like from the monitoring point of view part of it, I would think, in our listeners to logic through when you would really have to start worrying about that, it probably isn’t something that in the very beginning you worry about. But once you start to see a product and a brand gain traction then these are the kinds of things that you really want to start adding to your business management lineup, and say okay, it looks like this might be something that I could actually grow. Now I file for my trademark, because I just want to make sure that I’ve got myself covered to start, but I did a simple filing. Now I need to really start managing to see if anybody is trumping on my territory. Then I could, as the business owner send a simple letter. I’ve done this myself. I’ve reached out and emailed people and said it appears you’re infringing on my mark. I’d like to give you the benefit of the doubt in the even that this was an innocent issue. Please remove your listing, or whatever it is I’m asking them to do. Then if I don’t hear from you within 24 hours I will take the next step.

[00:41:25] Suzi: Right. In many instances I encourage my client to be the one to initially reach out to the other party. This is not necessarily an Amazon hijacking issue, this is more just business to business. I just feel like once you get an attorney involved in this it escalates the whole thing. If I send a cease and desist later to someone they’re going to have to go lawyer up, I mean they need to. So that’s why I really try to encourage my clients to send that initial letter. I say, why don’t you reach out to them and see what’s going on. Of course I’ll look at the letter, and make sure they’re not saying anything there that could put them in danger. But I definitely think it’s good when people can work it out without having to get lawyers involved.

[00:42:20] Ree: I have been very successful with that. I have a post that I’ll link to in the show notes that points to the process that I’ve used, and I really haven’t had any trouble yet, other than this other company filing for a trademark. So I think we’ve covered a pretty broad scope of why trademarking is important, and what the process is, and why using an attorney might be a good strategy for somebody who is not that confident doing it on their own. Is there anything you can think of that you feel would be important at this point to cover in this higher level discussion?

[00:43:08] Suzi: I have a lot of things that we could probably cover. But one thing that I really want to make clear to people, especially in an e-commerce sphere, and selling on Amazon, is to not underestimate the value of your brand. I think that a lot of people think that the value is the product. That they put the value on the trinket that they’re importing, and that they’re reselling on Amazon. But they have to realize that that brand is so important. I cringe when I hear people say just slap a label on it, the brand doesn’t matter.

There’s a reason why companies in this country spend millions and billions of dollars on their branding. There’s a reason that we have luxury goods here. Dolce & Gabbana, brands like that, there’s a reason that we have those. When at the end of the day I could probably buy the exact same product from a less expensive brand. Not spend $2,000 on a leather handbag, but probably get a very high quality one for $300. People are spending money on brands. People need to understand that the value of your business as you grow is very dependent on that brand. Think about a company like Dolce & Gabbana. They have a lot of different products, and all those products in and of themselves are valuable, but just the name brand could be valued more than the tangible products themselves.

[00:44:57] Ree: I think your point is super well taken, and I’m going to add another angle to that. So many people who are going to be listening to this conversation we’re having are going to think in their mind, well I’m never going to grow to be a product, I just want enough to pay down my mortgage, I want to be able to retire someday, I need a little extra cash, I’m not going to ever be a product. But with that person in mind, who basically is me. I’m never going to be a product. I don’t want to be a product. That’s too much work. But I would like to be able to sell my business someday, and if I let, to go full circle back to that story that I told in the beginning about how another company has filed for the mark cozy. If they win then they basically tank my business. I’ll have to trash the inventory I have, and start over with another mark.

But if I win I can do what the Bic Corporation did to me, the organization who actually had my listing taken down because I used their mark. So anybody else that uses the mark cozy in a confusingly similar way, I would now have the power, if I win that mark I would have the power, which makes me have a much easier time down the road when I decide to sell that business. I don’t want to stay in the cozy business forever, I’ll just be honest. But if I could build it, and secure it to a place where if I have that trademark that means that that company has the value.

The point you were trying to make, the value is stronger, and a higher value because I have the trademark on that, and nobody else can get it. Otherwise anybody who might be interested in buying My Beer Cozy is really just buying my inventory. Then they have to worry about whether or not they can secure a mark on the word cozy or My Beer Cozy.  So I think for those people who don’t intend to be a Prada, or a BMW, or a Nike, they just want some extra income. But they don’t want to be kicked off their brand if somebody else tries to kick them off, whether they have the right or not. It’s best to trademark first. Be the first one out of the gate, and get your trademark.

[00:47:29] Suzi: Yes. I mean not all of us want to be BMW or Prada. But I think if you’re going into the cars business, or really any business, you have to think about what is your exit plan in five to ten years. Do you have one? Do you care? Are you just going to wrap it up? Or do you think that you maybe want to build a brand, and eventually sell that brand. Because if you do grow a valuable brand, and a strong brand, and there’s a lot of steps over the years that you can take to grow that brand, at the end of the day you’re selling that brand. It’s going to be this intangible thing that seems harder to find, but that very well could be more valuable than any of the tangible inventory that you have on hand.

[00:48:15] Ree: I’m glad I asked the question, if there was anything else, because that point is super brilliant, and really critical I think. So Suzi, we’ve been on the call for I think a little over an hour, and that’s longer than most people can stand to sit  and listen to a thing, although I know there’s a lot more we could talk about. So where can people find you? I know that you have two really awesome handouts that you’ve created. One is how to deal with hijackers, and it has a lot of really great content in it that my posts don’t cover, so I think that’s super. Then one is a really awesome resource about trademarking. So I’d like you to share where people can find you, and where they might be able to get these tools.

[00:49:11] Suzi: Sure. Thank you for giving me the opportunity to give this information out. To get the checklist, it’s basically about how to build your Amazon listing to help deter counterfeiters. You can grab that on my website, that’s www.PrivateLabelLawyer.com. On that website you’ll see a link to the free checklist. If you just click there that’s where it will take you. For the trademark common questions, I actually don’t have that up on my website yet, but I am going to. If anyone wants the common questions with the answers they can just email me. My email address is suzi@theprivatelabellawyer.com. You can also contact me through that website,www.PrivateLabelLawyer.com.

[00:50:17] Ree: That’s great. Suzi, thank you so much for your time, and all of your amazing information. Hopefully we’ll have you back in the future, and we can talk more in depth about any particular area that you think would be useful for my listeners.

[00:50:35] Suzi: I would love to.

[00:50:36] Ree: Thank you very much.

[END]

Entrepreneur Bio and Contact Info

Trademark Advice for Amazon Sellers with Suzi Hixon — Entrepreneur Unveiled Series #002Suzi has practiced intellectual property law for just over 13 years. Her extensive experience, combined with over six years of experience running her own businesses, including an Amazon-based private label brand, has provided Suzi with a unique skillset combination specifically geared toward helping private label sellers protect their online brands.

When Suzi is not helping her clients navigate Amazon, you can find her tending her small chicken flock on the family farm, or spending auntie time with her precious (and precocious) niece and nephews. Suzi is also a serious chocolate addict, self-proclaimed dog-whisperer and book worm. Writing, teaching, and enjoying home-grown greenhouse tomatoes with her beloved all make her pretty happy, too.

You can find Suzi over at www.ThePrivateLabelLawyer.com. Email her at suzi@theprivatelabellawyer.com.

What Are Your Takeaways From This Episode?

I can usually find at least one valuable piece of information from any book, podcast or video interview I consume. Did you get something from this episode of Entrepreneur Unveiled? If so, please share it in the comments!

Now back to work for me!

Ree Short Sig


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  1. Ross Lukeman September 7, 2016 at 5:56 PM

    Thanks for the info. This interview was enlightening and now I kind of feel like I should trademark my brand.

    • Ree Klein September 8, 2016 at 7:47 AM

      Thanks for letting us know the info was helpful, Ross!

  2. Suzi Hixon August 24, 2016 at 4:56 AM

    I hope everyone who listened to this podcast enjoyed it and learned a ton! I’ll be checking here regularly for questions! ~ Suzi

    • Ree Klein August 26, 2016 at 3:25 PM

      Thanks, Suzi, I really enjoyed the discussion. A bit long, but packed full of useful information!

      • Suzi Hixon September 6, 2016 at 9:34 AM

        Hah! I’m fairly introverted but once you get me talking about something, sometimes I can’t stop! 😉