When Do I Need My First Trademark: An Interview With Donna Tobin

Narrator: This is the DarshanTalks Podcast. Regulatory guy, irregular podcast, with host Darshan Kulkarni. You can find the show on Twitter @darshantalks or the show's website at darshantalks.com. Darshan: Hey, everyone. Welcome to another episode of DarshanTalks. We have a very special guest. We have Donna Tobin, and Donna is someone I've known for several years, and she is what I refer to as the trademark lawyer extraordinaire. She has been someone I have reached out to for complex trademark type questions. She's going to talk to us a little bit about trademarking, because we've got a lot of questions that have been asked about, "Well, do I need to file for a trademark? How early should I file," et cetera. So, Donna, do you want to introduce yourself before we go on? Donna: Sure. Thank you so much. Thank you for those really nice words. I have been practicing trademark litigation and prosecution, and prosecution means actually getting a trademark registered in the trademark office. I've been litigating them and prosecuting them for over 35 years. Hard to say without choking, but anyway, yeah, I've mostly practiced in the trademark arena my entire career, and a lot has changed, which I think will come up. Darshan: I'm sure. Donna: Yeah. Darshan: So, where are you now, Donna? Are you on your own, or... Donna: I am at a law firm that's based in Philadelphia, called Royer Cooper Cohen Braunfeld, mostly corporate M&A lawyers, and a year ago I brought a trademark group to them, because that's a practice that fits right in with what they're doing. A lot of their clients, once they have businesses that are up and running, one of the next things that you should think about is your brand, your trademark, and protecting that and enforcing it, and making sure that you're not stepping on anyone else's brand. So, it's been great. It's a year old. Half of it was established in a pandemic. I hired trademark associates, two of which I haven't met in person yet, because they started the day we shut down. So, it's been interesting, but it's been great, and there was a little bit of a lull in March. People really were, for obvious reasons, taking a step back, but now people are thinking about their trademarks and their brands again, and it's kind of business as usual, which is good. Darshan: So, that raises the really basic question, Donna. If a corporate group brings in a trademark group to help them, it sounds like they think that, and I know this from experience itself, there is significant crossover and the timing is right for those two groups to be working together. So, this is a question I get asked all the time. "I have a great idea for a business. Should I first go after my trademark?" When do you think is the right time to apply for a trademark? Donna: That's a great question, and I want to answer it by not answering that question first. I think it's important to just start out with, what's a trademark, what's a patent, what's a copyright, because often those things are all developed around the same time. So, if you have a great idea for a business, let's say you're developing a new drug. There could be patents on the compounds, or on the method of manufacture. There could be copyrights on your text, your brochures, your graphic design. So, inventions are covered by patents, and then graphics, text, works of authorship, are protected by copyright. Then there's trademarks, and either they all sort of happen at the same time, or the patentable invention comes first, and then, what are we going to call this thing, and that's the brand. A slogan, a logo, a name, a color, or even a smell or a sound, can function as trademarks. Something that associates you as the source of a service or pr...