Andrei Mincov's Trademark Factory Update - July 2016

Andrei Mincov - Founder & CEO

Trademark Factory®

news@trademarkfactory.ca
778.869.7281
https://trademarkfactory.com

Andrei - Facebook Andrei - Twitter

My Video Ad Banned By Canadian Law Society

 

One of the first things I did after I started my law firm in Canada, was I shot a spoof video where I was advertising Mincov Law Corporation dressed as a Russian mobster. 

A few days after I published that video, I got a letter from the Law Society demanding that I immediately take it down or risk being disbarred. In their opinion, with the video, I was creating an image unbecoming of the legal profession.

Seriously, consider the irony of the argument that my 21-second video would somehow damage the image of the legal profession... Horrifying, I know! If the whole thing wasn't so frustrating, I might have found this attention to my video flattering. I still wonder who was the snitch who reported me to the Law Society. 

Since I was only starting out, I chose not to fight the bully. The battle would require significant resources from me: time, money, and most importantly, focus.

Most importantly, even if I managed to win the case against the Law Society, this victory would not bring me any additional intellectual property law business. And if I lost the case, well, I'd lose the license that at that time I thought was very important. 

Really, it was a no-win situation. 

So I took the video down.

As you know, last year, I voluntarily gave up my Canadian lawyer license to offer guaranteed, predictable trademarking services to clients around the world through Trademark Factory®. 

At first, I simply made the banned video available again. But since it was touting the firm that no longer existed, Mincov Law Corporation, I also did a new voice-over for Trademark Factory®.

So watch the original and the new version and tell me what you think.

Do you think the Law Society were right in their decision to ban the video?



Acting Classes

 

As if I didn't have enough on my plate, this month I signed up for acting classes.

No, I'm not planning to become an actor just yet, but I do so much public speaking that I figured it wouldn't hurt to have better control of my body and voice.

I'm the only non-actor in the group, and what other people can do there absolutely fascinates me. That's exactly what I've wanted to be able to do for years, yet didn't really take any steps to learn.

Don't know how long it will take, but really can't wait to see some progress on being able to convey my message more convincingly verbally and non-verbally.

Wish me luck!



Trademark FAQ

 

Twice a week, I'm posting my short, specific, no-B.S. answers to commonly asked questions about trademarks

Do any of these apply to you?

When Should I Trademark My Brand?

Why is Google the Textbook Example of What Not to Do with Your Trademark?

You Received an Office Action  Now What ?

How Long Is a Trademark Registration Good For?

Trademarks vs. Trade Names

Look-alike and sound-alike trademarks

Will the Trademark Examiner Check Other Applied For Trademarks ?

Trademarking Words in a Fancy Font ?

Will the Trademark Examiner Check Unregistered Trademarks?

You Received an Office Action  Now What ?

How Long Is a Trademark Registration Good For?

When Should I Trademark My Brand?

Can You Trademark Book Titles? 

Andrei Mincov's story

Is registering a .COM domain name enough to secure trademark rights?

Why Is It Important to Preserve Evidence of Use of My Trademarks? 

Do I need an agreement with my logo designer?

What is Madrid Protocol?

Trademark Factory All-Inclusive package

Trademark Factory Ultimate package

What Are Official Marks in Canada?

Trademark Factory I Feel Lucky package

How Will a Trademark Examiner Examine My Trademark Application?

Does My Trademark Need to Match My Company Name?

What Is a Trademark?

Can I Add More Products and Services to My Trademark Application After It's Been Filed?

Where Should I Register My Trademarks? (Deciding on Jurisdictions in Which to File Trademarks)

What Is Conventional Priority?

Can I Change the Trademark Itself After My Trademark Application has been Filed?

How Long Does It Take to Register a Trademark?

Can I Trademark Dictionary Words?

Can I Trademark the Same Brand for Different Products or Services?

Do All Countries Protect Unregistered Trademarks? (Common-Law Trademarks)

Can I Trademark a Brand Before It's Launched? (Intent-to-Use Trademarks)

Is My Trademark Available?

Should I Trademark My Startup's Brand?

In Whose Name Should I Apply For My Trademark?

Will the Trademarks Office Help Me Enforce My Trademarks?

Should I Trademark a Logo Done On Fiverr?

How Much Does It Cost to Register a Trademark?

Should I Trademark My #Hashtags?

Are There Annual Trademark Maintenance Fees?

If I Register My Trademark, Does It Mean No One Can Use It?

Four Things Most Commonly Trademarked (The Trademark Dance)

How Does Trademark Factory's Guarantee Work?

What Are Nice Classes of Goods and Services?

Do I Have to be an American Resident to File in the U.S.?

How Are Service Marks Different From Trademarks?

What Are Oppositions?

3 Most Important Benefits of Registering Trademarks

Why Register a Trademark in Canada to Get a .CA Domain Name?

What is Post-Allowance Statement / Declaration of Use?

Am I Protected Between the Filing and the Registration of My Trademark?

What Is Post-Registration Statement of Use?

How to use trademarks to create a sense of uniqueness for your business?

What Goes Into a Trademark Application? 

What happens if you don't respond to correspondence from Trademarks Office in time?

What Makes a Brand Valuable? 



David Is Speaking Up

 

David (2) is now starting to speak. 

Just as his older sisters, he's great at picking which of the two languages (English or Russian) has the shortest word to express an idea.

If one of the languages has a one-syllable word and the other has a multi-syllable word, you can bet your last dollar, he's going to pick the one-syllable word. 

As a result, sometimes he ends up putting together some really funny bilingual phrases.

He is relentless in repeating the same word over and over and over again until I or my wife Emilia confirms that we understood what he is trying to say. 

This photograph was taken when we showed our kids around Kidtropolis. David is shopping for groceries. :)



Breaking Bad Habit

 

I have a confession to make: I have a bad habit that absolutely infuriates me: being late by just a minute or two.

I can comprehend being late by a lot. As disrespectful as it is to the other person, it can at least be of some benefit to the one who's late. At least you can get something meaningful done. But being one or two minutes late does nothing good to anybody.

I've been trying to eradicate this habit for quite some time, but nothing was working. 

So on July 1, I made an announcement on my Facebook that for the entire month of July, if I'm late to a meeting or an event, I will write a cheque for
* CAD $100 if I'm up to 4:59 minutes late,
* CAD $200 if I'm 5:00 to 9:59 minutes late, and
* CAD $300 if I'm late for more than 10 minutes
to whoever I'm meeting with or to the event organizer.

It's July 22, and this approach has worked great so far. It really pushes me to think twice before I "make just one more quick call" or "quickly reply to this email" before I leave for the meeting. 

As of today, I've written one cheque for $100 for being 2 minutes late to a photoshoot. I got to the building on time, but I just couldn't find the room quickly enough. Should have left earlier. 

As I wrote in my Facebook post, "No excuses. I've had enough."

Being late is a choice. Changing bad habits into new ones is also a choice.

I have not yet developed the new good habit to replace the old one. It still takes an effort for me to stop doing whatever I was doing and just get out of the door 5 minutes early. 

So, I will continue the experiment in August as well.



Trademark Screw-Ups of the Month

 

Hopefully we won’t be Banky McBankface’: Startup bank Mondo is changing its name and letting customers choose its new one: Another one bites the dust. Another startup does their own trademark search, invests in building a brand, only to be forced to change it as soon as the business becomes big enough for someone to notice.

Is Teva on its Way to Losing its Trademark?: That's what is usually called 'genericide', the death of a trademark by becoming generic.

This company ripped off a Native American tribe to sell beer. So the tribe fought back: Interestingly, there are no live registered U.S. trademarks for LUMBEE, LUMBEE TRIBE, or HERITAGE, PRIDE & STRENGTH. The only registered trademark for the logo of LUMBEE TRIBE OF NORTH CAROLINA was cancelled in April of 2016 for failure to file the required Post-Registration Statement of Use. So the question is really, should these marks be treated as unregistered trademarks owned by the Lumbee Tribe?

Toys-to-life game Fabulous Beasts renamed after Warner Bros. trademark dispute: In making a decision whether you'll run into problems with somewhat similar brands of others, a very important factor is, how much money does the other side have. Even if trademarks are not very similar, the risk of being forced to rebrand goes up substantially if the previously registered trademark is owned by a multi-billion-dollar company. As I've been saying for years, law is all about risk management. The bigger you get, the higher the risk that someone would go after you for even smaller infractions. Likewise, the more money can be thrown against you in a dispute, the more difficult it is to withstand pressure.

Wham-O Puts U.S Board Companies On Notice Over 30-Year-Old Trademark Laws: Misleading headline. It's not about a 30-year-old trademark laws, it's about asserting the rights in a trademark that was registered 30 years ago. Big difference! Apparently, Wham-O owns a trademark for color black applied to rails and pinlines for bodyboards.

Saab Automobile Officially Becomes NEVS After Company Fails To Secure Trademark: This raises a very important issue of making sure that the brand of a company going through a bankruptcy is preserved. I'm pretty sure that the company that invested to revive SAAB was hoping it would be able to use the name SAAB as part of what it paid for. Well, now they will need to create a brand new brand and somehow educate people that NEVS is just a next step for a car manufacturer formerly known as SAAB.

In N Out Burger has sued delivery startup DoorDash, alleging trademark infringement and “wrong designation of origin” – Escondido Technology Time: Usually, it's OK to use someone else's trademark if you are simply using it to name a product you bought and are now trying to sell—as long as you do not create an impression that you are an authorized dealer. For example, it is not an infringement of Apple's trademark rights for someone to sell a used iPhone on Craigslist. But it would be an infringement to set up an unauthorized store that only sells iPhones and to use the Apple logo to attract customers. Here the question is, does the food delivery company Door Dash that delivers from various food joints, including In-N-Out Burger, go beyond merely informing their customers about one of the locations they can deliver from and actually create an impression that such delivery is authorized by the burger joint itself? That's what the lawsuit is all about. 

Trademark dispute with Sky broadcasting sought name change for No Man’s Sky: How far does the trademark protection go for the brand SKY owned by the British telecom and broadcasting giant? Apparently not far enough to force Hello Games into renaming their game No Man's Sky. It only took three years of "secret stupid legal nonsense" to figure it out.

Aquazzura Files Trademark Suit Against Ivanka Trump Over "Exact Copy": As someone who really appreciates beautiful shoes, I have to admit, the two pairs side by side are virtually indistinguishable. Would be interesting to see the outcome of the battle.

Toronto Maple Leafs seek trademark challenge against Snoop Dogg pot logo: In theory, cigarette lighters are totally different from the products (clothing) and services (entertainment) that Toronto Maple Leafs trademarked, so anyone could trademark even a much more similar brand than that. The question here is, would TORONTO MAPLE LEAFS be regarded as a famous mark that should be grated broader protection. My prediction, LEAFS BY SNOOP should win the opposition proceedings if it ever gets there.

Mondo name change attracts 12,000+ entries after trademark dispute: Again, the point is not HOW you come up with the name for your brand (whether you do it yourself, use an agency, or crowdsource it). What matters is, are you going to do a proper thorough comprehensive trademark search to make sure the name (or a similar name) has not yet been taken? 



Newsletter not displaying properly? Click here to view on the web