Business of VO: Copyright, Trademarks & More

It’s only taken three years but VO Boss is happy to announce our first recurring guest, Rob Sciglimpaglia. When it comes to legal matters in voiceover, Rob wrote the book. He’s an expert on all things Voiceover Legal and with a multitude of recent infringements (including VO BOSS!) taking place, plus confusion over usage rights, we asked him back to join us once again and share his wealth of knowledge.



Takeaways

Quick Concepts from Today’s Episode:

  1. Anne had employed Rob many times to deal with Trade Mark infringements and Trade Mark registration.

  2. Trademarks protect you, your name, your brand, and possibly also your images or logos from being used improperly or without permission.

  3. There are both state and federal TM processes and requirements that can take some time to complete.

  4. You can register yourself but it is wise to have an attorney do it for you.

  5. Prior to filing, you want to search the databases of applied and granted trademarks.

  6. An attorney can also aid you in negotiating with a company who disputes you and better understand the process.

  7. You must send a ‘specimen’ that proves the use of your mark in business.

  8. It’s shocking how many people don’t properly research their branding & naming decisions for a new company to make sure they are not breaking the law.

  9. Cease & desist letters are a courtesy and usually a way to avoid having to go to court when no damages have taken place yet.

  10. There are many ‘classes’ under which you can file a TM.

  11. TMs are good for 10 years. But you must show proof of use at 5 years.

  12. The internet is creating a culture of theft that many people believe is acceptable.

  13. Voiceover actors are subject to identity, intellectual property, and fraud theft.

Tweet This

Share ideas with your own network ++

If I don’t take the steps to legally protect my business, who will? #VOBOSS Click To Tweet

It’s amazing how many people are infringing on the copyrights of others. #VOBOSS Click To Tweet

Flattery or thievery? If you didn’t ask permission, it’s the later. #VOBOSS Click To Tweet


Referenced in this Episode

Direct links to things we brought up ++

  1. Read more about Rob

  2. Get $5 off  Rob’s book Voiceover Legal with promo code ANG

  3. Check out our previous episode with Rob

  4. Learn more about the US Government Trademark Office

  5. Recorded on ipDTL

Full Episode Transcript

>> Today’s voiceover talent is more than just a pretty voice.

>> Pretty voice.

>> Pretty voice.

>> Pretty voice.

>> Today’s voiceover talent has to be a BOSS.

>> BOSS.

>> A BOSS.

>> A BOSS.

>> Join us each week for business owner strategies and success with your hosts Anne Ganguzza and Gabrielle Nistico, along with some of the strongest voices in our industry.

>> Rock your business.

>> Rock your business.

>> Rock your business.

>> Like a BOSS.

>> Like a BOSS.

>> Rock your business like a BOSS.

>> Rock your business like a BOSS.

>> A VO BOSS.

>> A VO BOSS.

>> A VO BOSS.

Anne: Hey, welcome, everybody, to the VO BOSS podcast. I’m your host, Anne Ganguzza, along with my VO BOSS bestie, Gabby Nistico. Gabby, today we’ve our very first repeat guest.

Gabby: Only took us three years.

Anne: [laughs] Voice actor, actor, baseball coach [laughs] and lawyer, Rob Sciglimpaglia.

Rob: Thank you for having me. I’m honored. I didn’t know I was the first repeat guest. That’s awesome.

Anne: Well Rob, we’ve got a lot of stuff to talk about today. [laughs]

Gabby: Yeah, there’s been a couple of different instances these last few weeks, and Anne and I have really been wanting to do an episode about it. And I kept saying, “you know, here’s the thing. I’d love to talk about it, but we really, really need to bring in an expert, and I’m pretty sure we both know who it is,” and we’ve been holding off on recording this until you were available.

Anne: For sure. So back in, oh my gosh, I think it was July of 2018, I approached you because I had been alerted to something on a Facebook group that somebody was using a domain that was very, very close to VO Peeps to set up a site to solicit for business, for voiceover business. And they were looking for talent to sign up, and ultimately it was called VoicePeep.com. And so I brought that to your attention, and I said “hmm, Rob, what can I do about this? [laughs] I don’t want this to affect my brand.” And you had written back to me and said, “we can certainly look into trademarking it.” So I had decided at the time to ask you to go ahead and trademark both VO Peeps and VO BOSS. Tell us a little bit about trademarking, Rob, and why it’s something that we might need to think about in our businesses.

Rob: Sure. There’s common law trademark, and there’s official registered trademarks. Common law trademark is basically when you set up a business, and you start using a name, and the name kind of becomes known, becomes known as, associated with your business, that’s a common law trademark. Very difficult to protect the common law trademarks. You’d want to go through the registration process. You can register a trademark with – many states that have their own registration processes. Like if you have a local business, probably be smart to register it with your state. And then there’s the federal process. There’s the United States patent and trademark office, where you can register your mark, and for us voiceover artists, that’s the smart move is to register with the federal office, because then basically what it does is it puts everyone on notice that as of the date you registered, you’re taking claim to that mark for your business. If it’s a product that you’re selling, that’s a trademark. If it’s a service like what we do, that’s a service mark. I mean that’s just semantics because they’re basically the same thing. It just depends on the business. Basically what you’re doing is registering and you’re letting everyone know when you started your business also because like you don’t have to trademark it right away. You can file the trademark even before you start your business, but then you have to, once you do start, you have to show evidence you’re actually using the name in business. So what it does is it just puts everyone on notice that you, that’s your trademark, you’re using it in business as of such and such a date so you can protect it.

Anne: Well, I remember being upset because what I didn’t want was to have this domain tarnish my brand. So we went ahead and did the federal trademark. I remember you sending me an email on Christmas actually [laughs] I think we put it in motion in July, and on Christmas I had gotten the notice of publication confirmation for VO Peeps, and you were forwarding me stuff on Christmas day, so there’s dedication, guys. [laughs]

Rob: I just forwarded it from the trademark office. It’s done by computer obviously.

Anne: That was just the notice of publication. So what does that mean?

Rob: Yeah, so basically what happens is when you register your trademark, it has to, you have – there’s certain things that you have to, requirements that you have to meet. First of all, you have to let the, let everyone know what category, business category you’re trying to register the name. You can’t just register a name and no one else in any other business, you know, to exclude them. So it’s basically you’re letting everyone know that I’m a voiceover artist. I’m gonna use this for voiceover, that’s my business. And you file the application, you show evidence that you’re actually using that mark in business, and then what happens is there’s an attorney that’s assigned by the trademark office, and they review everything. Sometimes they come back and say they want you to review – revise and review this, this and this. You know, they’ll give you a whole list of things with a bunch of legal mumbo-jumbo as to why you need to fix this and that. Sometimes I debate with the trademark attorneys, and we kind of work things out. Because then what happens is next is that trademark, the application gets published in the federal register, so that someone can object to it. If they file an objection saying that’s too close to their mark, then you have to deal with that objection.

Anne: Now is that also so other people can search to make sure, if they choose a business name, that’s not the same? Is that also a purpose?

Rob: Well, you can search for applications that have been filed and that have been granted. Before I’d even filed an application, I would search, and I would do a deep level search. I would search common law, state law, you know, Google, I do a Google search, and I do a federal trademark search to see if there’s anything that I think is going to raise an objection.

Gabby: So how close is too close? What helps to kind of define that line?

Rob: Ok well, let me give you a couple of examples, a couple of objections that I’ve gotten. My daughters actually, they’re twins, so they started a newsletter called “Twins Times” that was a blog. So I said yeah, that’s a great, great name to trademark, so I filed the application. We get all the way to the publication process, Major League Baseball, Minnesota Twins –

Anne: That’s what I was thinking.

Rob: And they objected and they said, “we don’t want you to use this in Major League Baseball at all.” They were talking about softball stuff. So we worked out a deal where we just put a disclaimer up on a blog, not associated with Minnesota Twins or Major League Baseball, and they also made us agree that if they wanted to do like their own newsletter called “Twins Times,” that we would be OK with that and they do their own disclaimer. That’s how we worked it out. That’s – but I could have said “no, we’re not gonna agree to this,” and then it could have gone through the federal litigation process, it goes to federal court, and then you can litigate it.

Anne: I trademarked VO Peeps, the name only, correct? You can also trademarked logos as well.

Rob: Correct.

Anne: What would be the advantage, or is there an advantage or disadvantage to also trademarking my logo?

Rob: If you trademark the name, then just the name is trademarked. But if you have a special logo like Coca-Cola, they’ll trademark those as well so people can’t steal that artwork.

Anne: Good, got it, so they’re completely separate then.

Rob: You’d want to do two separate applications normally, unless the logo, you know like some logos have the name, but you know, it’s just one of the letters is inter-crossed, but you can still make out the name, but then I would just do the logo because then both, you get both are protected. That’s a call that an attorney would really have to make. You want them to have as broad coverage as possible. That’s the point of doing the trademark application and figuring out what category of business it goes in, try to make it as broad as possible. You want to protect your VO Peeps, so you want to make it as broad as possible. So if you just did the logo, that’s narrowing it. So you want to make sure that you’re not, that you’re keeping it as broad as you can so that you exclude as many people as you can that are trying to, get around your trademark.