Bi-Weekly Newsletter

November 21, 2019

I’ll Fight For Your Brand


She was one of Trademark Factory®’s first clients.

Back then, I was working hard to get people to know my firm existed and would routinely offer our services as a prize at events for entrepreneurs.

I hoped this would give us the exposure and generate a steady flow of customers from those who didn’t win.

Spoiler alert: it wasn’t working very well.

Anyhow, Silvia Martinelli won the prize.

She made an appointment to see me (we used to meet clients in our physical office back then).

Originally from Brazil, a marketing and communications major, Silvia used to work with brands and franchises for over a decade. She came to Canada to improve her English—and ended up staying. Then, she started her own business.

The business of… Brazilian cheese puffs; a common treat in Brazil, but virtually unknown in Canada.

She created the recipe, started her business… and everyone loved the puffs, but nobody could remember the generic name, ‘Pão de Queijo’.

So, after many false starts, Silvia came up with the name, ‘Otimo’, which means “awesome” in Portuguese, and created a recognizable logo for her brand.

This is when she entered the competition and won a package that included trademarking services from my firm.

With her marketing background, Silvia knew how important it was to own her brand. However—somewhat predictably—she didn’t have a lot of money.

No wonder she was so excited about the trademarking prize!

She had a dilemma on her hands, though.

The prize covered only one trademark, and she wasn’t sure whether to trademark the ‘Otimo’ name or the logo.

I explained the benefits of each option, and after a brief discussion with her business mentor, Silvia decided to move forward with both the name AND the logo. After all, she wasn’t trademarking her brand because she won some contest. She wanted to trademark her brand, because she valued her future.

Back then, Trademark Factory’s team was pretty small. It counted one person. Me.

I hustled to win new clients, designed our marketing materials, wrote code for our website, took all the phone calls, checked and answered all emails, did the trademark searches, drafted and filed all trademark applications, responded to all office actions…

In short, I WAS Trademark Factory.

So, when Silvia became a client, I did the search as best I could, saw no danger signs, filed her two trademark applications, and went back to hustling for new clients.

About 6 months later, we received two office actions citing the same objection.

Apparently, there had been a previously registered trademark I’d overlooked.

A multi-billion dollar company in the food industry owned the Ottimo trademark… with two “t”s.

To this day, I’ve no idea how I missed that one.

Now, if there’s one thing you should know about me, it’s that I hate losing, and seeing that office action was a vivid reminder of how I started my career as an intellectual property lawyer.

Back in 1996, I was a law student in Russia, and a radio station had stolen my dad’s song for a Samsung commercial.

At the request of my father, famous Russian composer, Mark Minkov, I sued the radio station for copyright infringement. I thought I did great—until we received a judgment saying we’d lost.

I had no idea what to do about it—until my dad came into my room and said if I wasn’t going to appeal the decision, I should quit law school and find a different profession. So, I appealed the case which went all the way up to the second highest court in Russia; just one level below the Russian Supreme court—and won!

Hence, when I looked at the two office actions, I knew I couldn’t go back to Silvia to tell her that her dream of owning the Otimo brand was over.

I didn’t want to even think about a refund, but it wasn’t because I was afraid of honoring our 100% money back guarantee (by that time, I already had a team).

Rather, it was about making sure we’d left no stone unturned, and that we’d done whatever it took to give Silvia the result we’d promised. After all, her success would be our success.

So, we revised Silvia’s application to remove products covered by the multi-billion-dollar company’s trademark, and wrote a 51-page sweat-and-tear-fueled response listing arguments explaining why we thought Silvia’s ‘Otimo’ brand was not confusingly similar to ‘Ottimo’.

4 months later, we received a second office action. The trademark examiner was not convinced by our arguments.

It was time for us to put our thinking hats back on. We realized the only way for us to secure Silvia’s trademarks was to go to war with the multi-billion-dollar company and attack their brand… yikes.

To put things into perspective, with our all-inclusive flat fee, Silvia paid once to get the process started (and got one of the trademarks for free as a prize), and was not expected to pay ever again. By the time we’d written the 51-page response, this file had already cost me a lot more than I’d made on it, and now we were about to engage in this big fight!

And boy, did we!

Incredibly, about a year later, we cancelled the multi-billion-dollar company’s trademark, opening the door to getting Silvia’s brand registered.

The whole process took slightly over 3 years.

It’s usually the first case that comes to mind when someone asks me why brand owners around the globe should invest $3K with us to own their brand.

Well, that’s why!

Because it gets you the results you pay for—whatever it takes.

If you are a growth-minded entrepreneur with a brand that helps you stand out from the crowd, secure it before you spend time and money trying to build it. Because hoping you can own it in the future if no one claims it before you is NOT a strategy.

As with Silvia, if we can help you, we will.

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