Very Demure Trademark Battle: what it means for influencers

if you are not legally protected in your business you are leaving money on the table hey I get it the legal side of business can feel intimidating but the good news is it doesn't have to be if you want to build your business on a strong foundation and if you want to know that your rights are protected when the unexpected happens with a client or a customer then it's time to get legally protected this means no more using free contracts that you've downloaded off of the internet this means partnering with a law firm that actually believes in your vision and can help you achieve it this means legally protecting your brand so that no one can steal your good ideas there are a lot of ways to grow and scale but if you want to grow a strong business it's time to get legally protected if you're listening and resonating with this then my signature service the legal upgrade just might be perfect for you the legal upgrade is a straightforward structured process to give your business the legal protection that it needs to thrive click the link in the show notes and schedule a call with me [Music] today hello and welcome to the legal upgrade podcast I'm your host licensed attorney Christian Hammond this podcast breaks down the legal side of business to reveal key legal strategies that can help you take your business to the next level please note that none of the following is legal tax investment Financial or medical advice without further Ado let's get into the show there has been a ton of information and misinformation about the very Demir very mindful trademark battle so I'm on here today to talk about what's real what's not and importantly what does it mean for viral influencers if you're new here welcome my name is Christian Hammond I'm a licensed a tra trademark attorney based in Washington DC and I specialize in helping small businesses entrepreneurs and Founders get legally protected and we need to talk about this trademark battle because there is so much information information misinformation myth Legend surrounding it and it's so important to talk about it and what it means for all influencers regardless of what platform you might be on and so if you have been living under a rock or if you just don't have social media to quickly catch you up on what's been happening there is a Creator on Tik Tok her name is Jules LeBron and at the beginning of this month she went crazy easy viral because of several of or a series of videos in which she's using catchphrases such as very Demir very mindful very cutesy and these videos have completely blown up theyve been everywhere and uh worldwide really and she currently has over two million followers on Tik Tok um and that's just on Tik Tok that's not even counting her other platforms so this has been a huge Trend over the past month but what has also come out in the news is that other people have been trademarking or at least applying to trademark her catchphrases this has been all over the news and the big questions are is she too late has some have these other people managed to steal her trademark and what does this mean so first I think we have to talk about what's been going on so far because a lot has been going on and this is a developing news story so I fully expect that if you're listening to this a week from now things will have already changed but I have created a timeline of what has happened so far so at the beginning of August these videos go viral on August 20th someone applies for the trademark very demure very mindful three days later someone else applies for the trademark demure and the day after that someone applies for very Demir uh and two sorry very Demir very cutesy and then three days after that someone applies for always Demir and very mindful so in a 7day time period we have four trademark applications all relating to Demir and these are just the ones that we can see because there can often be a 4 day sometimes even a week-long delay between when someone applies for a trademark and when it actually appears in the trademark database so these are only the ones we can see and it's been four applications in only seven days so that's a lot of that's a lot of activity and people are and the questions people are asking is is Jules LeBron too late is it too late for her to get her trademark back how would she go about getting her trademark back and is it actually possible to steal someone else's trademark out from under them so to begin to answer these questions first we need to talk about what actually qualifies as a trademark a trademark is a three things it's a source indicator for someone who's providing goods and services and those goods and services have to be provided in Commerce to in a type of Commerce that Congress can regulate typically that's going to be either interstate commerce or commerce between the US and a foreign country so those three things a source indicator for someone providing goods and services in a type of Commerce that Congress can regulate what does that mean it means that you can't just trademark a catchphrase that you like to use you can't just say I like to say Taco Tuesday so I'm G to trademark Taco Tuesday you have to be using the trademark to provide goods and services and in most cases what that basically means is you need to have customers or clients who are outside of your home state so can so does the first question is do viral creators do viral influencers do they have trademarks do they actually have trademarks in the catchphrases that they might be using and the answer is maybe if they are if every if they can show that they are associated as the source for some kind of good or service and so the question is okay is Jules LeBron offering some kind of a good or service and I would say she is there are options for example to say that you're offering a series of videos on the internet that's class 41 in the trademark system um she has also had several different brand Partnerships and um sponsors so that is also a service that could be characterized ized as advertising services or maybe other types of services so no you cannot just trademark a catchphrase so just the fact that you've gone viral or the fact that you went viral using a catchphrase that's not enough to have a trademark but if that trademark is being used in a way that identifies a source and that source is providing a good or a service and people are receiving that good or service um from outside of your home state then that constitutes a trademark and so does she have a trademark does she have a fight here yes it would seem that she does um so then the second question is can somebody steal your trademark out from under you and this is where we need to talk about the difference between copyrights trademarks and patents and because each one functions differently when we think about okay can someone steal it from us so when it comes to copyright for examp example copyright is pretty objective either you wrote the book or you didn't and so even if somebody else tried to register the copyright and say a book that you wrote the there would be ways to prove that that registration was incorrect because you actually wrote the book now different from copyright is patents and trademarks where it is much more possible for someone to steal say that intellectual property from you patents are about kind are about who got there first um it is relevant who actually filed the patent first so it actually is possible in the world of patents that you would create an invention and somebody else would file the patent first now when it comes to trademarks It's Kind it's it's almost kind of like the middle ground between those two things on the one hand the moment when a trademark legally exists is when those three things I just mentioned happened you are using the trademark in interstate commerce and you're using it to provide a good or service Boom the trademark legally exists now just because you legal the trademark legally exists does not mean that you have an enforcable right in that trademark and that is where registration comes in so it's great to have a trademark but if you want to be able to enforce that trademark Nationwide in all 50 states and also in the US territories you're going to need to take that trademark and register it with the United States patent and trademark office and so the question is okay who who has the superior claim is it the person who first started using the trademark or is it the person who actually registered it and that is actually a pretty complicated question on the first like on one hand the first person to use the trademark has the superior claim has the upper hand this is what we call Senior rights you were literally first now on the other hand the person who registers the trademark if they are successful they have what's called a prima fasy assumption that they are the correct owner that's just legal speak for meaning that if there was ever a lawsuit about who owned the trademark they are a assumed to be the owner unless somebody can prove them wrong key unless somebody can prove them wrong so if you were first but you didn't register first that is bad that that is making your life harder but there is still that chance to prove the registrant wrong so can somebody steal your tradem mark out from under you kind of a complicated question but the short answer is if somebody registers your trademark before you uh that is a that is a issue that's going to make your life harder that's probably going to make mean that you're going to spend a lot of legal fees trying to get it back but ultimately if you are able to show that you were in fact the first user for those goods and services in interstate commerce you then do have that opportunity to make your case and reclaim your trademark so it's a yes and no to that question now another question people have been asking is can can Jules LeBron trademark now is it too late for her to submit her own trademark application and the answer is no and in fact whenever I have a client and we know we know for a fact there's a competitor for the trademark it's often a really good strategy to go ahead and submit our own application now we know that we're going to have to you know probably fight over we know that there are things that we're going to have to do but it's re it's often a really good strategy to have that application in the wings to have that application in waiting so that once you finish challenging that other trademark application and doing all the things you need to do to kind of move it out of the way boom your application is in the wings it's on deck and it's ready to move into registration once everything has been settled and so it's often a really good idea if you know you have a superior claim and if you know that there is competition for the trademark often times it's a great strategy to go ahead get your own application in so it can be on deck once all those other issues get resolved um now another important consideration is that yes all these at least four other people have applied for these other trademarks but when you apply for a trademark you don't get to apply well unless you can afford to um you're not applying for every good and service on the face of the Earth so when you apply for a trademark you actually apply in categories those categories are called classes there are 45 different classes covering PR any good or service you could possibly imagine now you don't get to just add as many classes as you want to your trade Mark application the government charges for every single one of those classes which means that most people only apply for the classes that they absolutely need AKA those classes where they are actually providing goods and services and so each of these applications has applied for their trademark you know be it demure be it very demure very mindful yes they've applied for a trademark um but they've only applied in one to two classes which means all the other 40 plus classes are still available and in fact sometimes you can actually apply in the exact same class for a very similar trademark um but just for different goods or services because these are very broad classes um a good example is class 28 class 28 includes everything from water bottles to dog bowls so those are two very different products right so even within a single class there can be a very diverse list of goods and services which means that for someone like Jules LeBron yes people have applied for these trademarks may be covering some goods and services she's interested in but there are many other things potentially that she could also apply for and so um is she you know can she submit her own trademark application absolutely absolutely and she could submit it in the exact same classes as other people because she knows she's going to challenge them or she could even submit it for other goods and services that she's interested in um so another question that people are asking or related to that question is the question of you know is she too late or what exactly is going on with these other trademark applications now there's been a lot of misinformation about this people have been saying that people stole her trademark people have been saying that other people trademarked her catchphrase what's actually happening is that each of these people have submitted an application application is the key word here because the trademark process is very long very complex and has a lot potentially a lot of bumps along the road so these people have submitted an application it's going to be 8 months before the government reviews those applications and once the government reviews them they're going to make a legal determination they're going to make a determination of whether legally those trademarks can proceed to the next step and most of these people who have submitted applications did not use attorneys which means that these applications have their own issues and might ultimately be rejected by the government and even if they can get past the government stage the next phase of the trademark process is called publication publication is a 30-day period where anybody and everybody can object it's called oppose oppose your trademark and that is the perfect opportunity for someone like Jules LeBron to step in and file an opposition against these other trademarks showing that she was using the trademark first she was using it as a source indicator and she was using it for specific services such as providing entertainment videos and also advertising services so this is far from a done deal now a lot of times people will often say well hey could she maybe buy these trademark applications again these are just applications they're not actually trade you know trademark registrations yet could she buy these applications from the these other people and that's an option but honestly that's not an option that I typically recommend it's kind of like movies where people say we don't negotiate with terrorists that's kind of my Approach if you if you buy a trademark from a trademark troll you're just reinforcing and encouraging the trademark Troll And if you have a senior claim if you have a legitimate legal basis to claim that you are actually the more senior trademark owner then why pay a troll which is only going to reinforce and encourage more trolls that's just my perspective uh so is she too late no she has plenty of options for um for reclaiming her brand Shing up her brand and making sure that she is able to ultimately secure trademark registrations and um file her own applications now the last thing I want to address is that there is one of the people who applied for the trademarks this is someone who applied for the trademark very demure very cutesy uh this applicant has said via Tik Tok that the only reason she applied for very Demir very cutesy was to kind of protect the trademark for Jules LeBron and ultimately be able to um just give it to her later so she didn't actually trademark it to be a trademark troll according to her she trademarked it in order to be able to protect it to make sure that nobody else could get to it before Jules and to be able to give it to Jules LeBron now while that is a wonderful intention and sentiment the problem is that that is not possible under us trademark law so something I really want to make sure everyone understands is under us trademark law there is no such thing as trademarking something for somebody else there is no such thing as filing an application in order to protect a trademark for somebody else and here's why under us trademark law in order to even file an application two things have to be true one you have to be the legitimate trademark owner and two if you you are filing the t uh what's called a 1B application a 1B application means I'm not actually offering these goods and services yet but I plan to that's what a 1B is it's basically a trademark reservation it's like when you call a restaurant to make a reservation hey I'm not ready to eat dinner yet but at 8 o'clock next Tuesday I'm going to be ready to eat dinner um a 1B trademark application is basically a trademark dinner reservation but when you file a 1B trademark application the only you have to sign off saying that you have a bonafied intention to actually use that trademark to provide those goods and services and if those two things are not true if you are not the trademark owner or if you don't actually have an intention to offer those goods and services then the trademark application is autom automatically void which means that while it's a really nice idea to try to get a trademark for somebody else that trademark application is actually completely worthless because the moment it was submitted by someone who was not the owner and did not actually intend to offer those goods and services it was void it was void from the very beginning and is therefore basically worthless which again means that um for anybody who might want to secure their trademark they have to do it themselves they have to do it firsthand there is no such thing as secondhand trademarking in the United States and under us law okay that was a lot of information and knowing me I was probably talking way too fast but if anyone who's here has questions feel free to drop them in the chat I'm happy to answer them um but I really want to also talk about what this means for other influencers what does this mean for you as an influencer if one of your videos and especially if one of your catchphrases goes viral well if you are an influencer and you go viral to the tune of you used to have however many tens of thousands of followers and now you have over a million followers in you know the span of a week or two weeks or a month if you have gone viral to that extent it's probably time to call a lawyer it's Pro it's probably time to reach out call a lawyer and figure out what you need to do now going viral is not a picnic if you've ever gone viral then you know this there is a lot coming at you when you go viral you're trying to juggle a lot of different things you're trying to be faithful probably to your fans and respond to their comments people might be blowing up your phone with brand deals and brand Partnerships you're trying to decide which ones you want to do and which ones you don't every time you go viral there's always going to be negative people and haters and you're dealing with that emotionally and so there's going viral is not a picnic going viral is not easy and probably the last thing you want to have to do when you've gone viral is try to figure out okay how am I going to go get a lawyer how am I going to go get a CP a it's probably the last thing on your mind so if you can a good idea is to plan ahead plan ahead for Success now when things are calm now when things are not too crazy you can start thinking about who am I going to want to work with who am i g to want on my team as my business as an influencer continues to grow do it in the calm so that you don't have to do it when things are on fire figure out who you work well with now figure out how much it costs now figure out what it would take to get started now and you don't have to make any promises or commit to anything before you're ready but figure out what it would take now do it in the calm so you don't have to do it during the storm of unexpected going viral and as I mentioned before you know you can't just trademark a catchphrase that you like to say it can't just be like hey I like tacos and I want to trademark Taco Tuesday and so if you have had a catchphrase go viral then and this is something your lawyer will help you with sit down with your lawyer and talk about okay what goods or services might you want to offer do you want to sell tote bags are you really into makeup do you want to have a fashion line do you want to have a line of journals do you want to have a Blog a podcast sit down figure out what those things are that you're interested in offering under that brand and then that becomes the basis for the trademark application and again any good trademark lawyer that you work with should be able to help you work through that and figure out what kind of goods Services products you might want to offer and then important importantly the faster you can get that trademark application filed the better because like I said there's a um Natalie I or natal I do see your question I'm gonna get to it right after this um like I said there is a trademark application option that allows you to reserve things in advance so you don't have to be selling your cookware line right now to apply for the trademark it's going to be eight months before before the government even looks at your application anyway so if you're a year or a year and a half away from launching whatever it is the blog the podcast the cookwar line the fashion um the fashion brand that's okay you can submit the application now in advance and then you have a really long time to be able to actually launched because it's going to be eight months before the government looks at the application anyway um so for influencers for influencers who have gone viral for influencers who um are just working on growing their following Their audience Etc these are the things they can do but it's so important um when that moment happens to find that attorney and to lock down the trademark lock down the intellectual property do not end up in the situation where somebody else got there first because yes as we've discussed there are options that can be very fixable there are ways to address it but why have to go through that if you don't have to all right so I have a question here what does an artist do if their designs get stolen overseas what is the international law that's an awesome question now a design could fall could fall under Patent Trademark or copyright actually depending on what kind of design it is um so um I'm not sure by the question which one we which one we would be dealing with but the long story short is that each country does have its own intellectual property system and it has its own intellectual property office so generally speaking if you want to apply uh for a copyright or a trademark abroad um you can do that and that's generally what would have You' have to do because each country has its own system now there's some new Nuance in there because of social media so there's a difference between what you would need to do to protect your intellectual property to be able to bring a lawsuit versus what you need to do to protect your intellectual property to say just get a um like another social media account shut down those are two different questions because many of the major platforms will accept a tradem Mar registration number or a copyright registration number from any country so that's the difference what you need to do to bring a lawsuit is different from what you might need to do just to shut down someone else's social media account so for example if there was someone copying um copying say your copyright and it was on Etsy um Etsy has a process to submit those kind of intellectual property complaints or at least they did the last time I checked so you might be able to get somebody else's you know Amazon Etsy Instagram account um either shut down or at least access to that specific content restricted having only registered in your home country but it does depend um Natalie on what type of design is it and are we talking copyright trademark or patents but that is the um that is the quick answer to your question thanks so much for asking that all right we have covered a ton of ground during this live stream and um mostly I just really wanted to bring some clarity and some truth to all the information that has been swirling around about this trademark and I especially want those of you who are influencers or who are content creators to know that you have options and that there are ways to protect your intellectual property but speed it is speed is going to make your life easier speed will make your life easier the faster and the sooner and the earlier that you can move to protect your intellectual property so thank you guys so much for being here today I really appreciate it if you had a question and you were too shy to ask in the comments or I just didn't get to it or you're watching this later feel free to send me a DM I'm happy to answer those questions and I will see you guys next time bye [Music] hey thanks for listening to the show the legal upgrade podcast is a bevel law production for more information about the legal upgrade you can follow on Instagram at bevel law or find even more information on the website bevel law.com if you enjoyed the episode please remember to subscribe leave a review and share it with a friend see you next time on 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