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:
Anne had employed Rob many times to deal with Trade Mark infringements and Trade Mark registration.
Trademarks protect you, your name, your brand, and possibly also your images or logos from being used improperly or without permission.
There are both state and federal TM processes and requirements that can take some time to complete.
You can register yourself but it is wise to have an attorney do it for you.
Prior to filing, you want to search the databases of applied and granted trademarks.
An attorney can also aid you in negotiating with a company who disputes you and better understand the process.
You must send a ‘specimen’ that proves the use of your mark in business.
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.
Cease & desist letters are a courtesy and usually a way to avoid having to go to court when no damages have taken place yet.
There are many ‘classes’ under which you can file a TM.
TMs are good for 10 years. But you must show proof of use at 5 years.
The internet is creating a culture of theft that many people believe is acceptable.
Voiceover actors are subject to identity, intellectual property, and fraud theft.
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Referenced in this Episode
Direct links to things we brought up ++
Read more about Rob
Get $5 off Rob’s book Voiceover Legal with promo code ANG
Check out our previous episode with Rob
Learn more about the US Government Trademark Office
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.
Anne: And I’d had my group for such a long time. I probably could have tried to fight that using the common law, but I was lucky because I don’t believe that that business ever took off. And because I had not filed for a trademark, you know, until I saw that, and then it was almost too late. I think you had mentioned to me we might have tried to fight that, you know, because I had been in business for so long, but it helps certainly to have a trademark for that. So I was lucky, and I didn’t, and it’s kind of a process because I didn’t actually get the trademark certificate for both VO Peeps and VO BOSS, which I’m so thankful for, because we had another incident with VO BOSS, until March of this year. So that was a good, I would say, what, six to eight months of a process of filing, having it out there for publication, which I assume they must let it sit there for so long?
Rob: 30 days.
Anne: 30 days? Ok.
Rob: Published.
Anne: And then to award the trademark certificate.
Rob: I mean, it’s the government, so it takes them –
Anne: [laughs]
Rob: They have to sign on an attorney, the attorney has to go through everything, then they have to see changes, which many times they want changes. You have to send a specimen – that’s what they call it, a specimen – to show or prove that you’re in business. So like if you’re selling shoes or something, you need to send a webpage with, you know, the cart showing that you can buy the shoes for whatever amount of money. If you don’t want to have that, you have to send pictures, and a lot of the times they want more specific specimens. That’s like the most common thing that you’ll get from the trademark attorneys. The other thing is that they think it’s too close, they also search to see if it’s going to conflict with another name. So sometimes they’ll do that. Other times there might be an application that’s filed that they think is close, so that they’ll suspend both applications, or they’ll suspend the later one until the earlier one is adjudicated.
Anne: Well, I’ll tell you, I’m so thankful that I did it, because we then had, just recently, an issue with the VO BOSS trademark where it came to my attention from someone who pointed out, there was a website out there called Voiceover Boss. And it was a new website where the person was trying to sell courseware for people getting into voiceovers. And the whole story was, yeah, I started off on fiver and now I only work one day a week, so you too can be a successful voiceover artist. And this person had social media set up, they had Facebook page, they had a website. Not only was it voiceoverboss.com, but it also had a tagline from one of our very good friends’ books that has been out for a while, Elaine Clark. “There’s money where your mouth is” was the tagline, and it had the font and the colors of one of our sponsors, Voiceovers.com, so there was all sorts of things going on there. Gosh, it just made me angry. And I just, when I contacted you, Rob, I was like “what can we do,” he’s like, “well, we can certainly send a cease and desist because now we have a trademark.” But let’s talk a little bit about that, and what are the actions once you’ve a trademark, and somebody, you feel somebody has infringed on it, what’s the process?
Rob: Sure, and that’s actually one of the major benefits of filing, and registering, and going through that process, because you have statutory remedies under the law. Even if you’re not actually damaged, because you know, you’d have to prove some kind of damage otherwise, you can rely on the statute which has penalties. So if the person keeps infringing, you can just take them to federal court and ask for statutory damages, and the court is going to set the award based on the statute. You don’t need to send cease and desist. That’s, most people –
Anne: Ah ok, but I did.
Rob: – because they don’t want to go to court. You can just file an infringement action if you want to. And then it does happen very often, you know, big companies, Apple versus Samsung, whatever, they just file a suit. They don’t send a cease and desist, because you know they got to get in there right away, because you know, for them it’s millions and millions and millions of potential damages.
Anne: Yeah.
Rob: You can send a cease and desist, which basically just says, “stop using my trademark, or I’m gonna sue you,” so you know it’s a demand letter, because they’ve already infringed, even when you send the cease and desist, because they have a duty to check themselves, the federal trademark office, to see if someone is using that name, and it’s very simple to do a search these days.
Anne: Right.
Rob: You don’t have to send that cease and desist, but you did it to make them stop because nothing had happened yet basically so that was a good course of action.
Anne: But it was all set up to happen, I mean he had domain name, website, email, he had everything under that domain, so I assume he had a considerable amount of effort and investment – maybe not considerable, but he definitely had invested in it thus far and was getting ready to launch.
Rob: Exactly, he was just starting to launch it, so –
Anne: Right.
Rob: It wasn’t something where it was, you know – if it had been in existence for five years, say, it would have been –
Anne: Might have been a fight. [laughs] might have been a different battle.
Rob: A different back and forth, for sure.
Anne: Interesting. So I actually did catch in the very beginning and asked you to send your device, and you had said let’s send a cease and desist. And I said, do it because I was, I was livid at that time. And thankfully it worked out. He – and I believe when you send a cease and desist letter, it’s 10 days, they have 10 days?
Rob: You can say whatever time you want, but I put 10 days because, like I said, it has the potential to cause, start causing you damages, if you don’t try to catch it quick enough.
Anne: This makes me think, isn’t it just coincidental that he took a name that was similar to something in the voiceover industry, he took a font and a color, right, of all these other industries – excuse me, all these other businesses that were successful, and was trying to then launch his own business? I feel like that was just an intentional thing.
Rob: It could be, it could have been intentional. He was probably trying to emulate those things, you know. I don’t know if it was intentionally infringing the trademarks, but you know, he was borrowing. Put it that way.
Anne: Yeah exactly. [laughs] I’m just wondering if that’s a strategy or a tactic that – or you’re finding things like that. Is that a common occurrence? Is that something you’ve seen before?
Rob: Yeah, absolutely, that happens. It happens all the time. People that are successful in business, other people want to do the same thing, so they follow that business model, and a lot of times, they copy the intellectual property as well.
Anne: What do they say, it’s the sincerest form of flattery? [laughs]
Rob: Exactly.
Anne: [laughs] See, Gabby, how successful [laughs] VO BOSS is.
Gabby: Rob, what does it cost to file the trademarks, to maintain them? What’s a rough idea, so people know?
Rob: If you’re gonna do it completely online, and you’re gonna use a whole bunch of categories that are already preset by the trademark office, it’s $225 per class to file an application. Per class would be like, voiceover would be like one class. If you’re gonna do like acting, voiceover, education, you’re gonna sell some mugs or products, like that would be four classes. So it’s expedited application online, it would be $225 per class plus the attorney’s fees. I charge around $500 for attorney’s fees to do it, which includes the search and everything. I do that search before.
Gabby: And how long is the trademark actually good for?
Rob: Trademark is good for 10 years. After five years, you have to send evidence that you’re still using the mark, so that costs like $150 or $125, something like that. After 10, you have to refile. You go through the process again.
Gabby: Tell me if I’m wrong, but I feel like social media is where we see the most infringement right now. You know, I’ve had Voiceover Vixen trademarked for a really long time, and I’ll occasionally see, you know, people use it on social media, or you know as a hashtag. It’s one of those things where you kind of go ignorance is not an excuse, right? [laughs]
Rob: Yeah, social media and the Internet, that’s really how infringement is happening these days, I mean, because it’s just the easiest way for people to communicate.
Anne: Gabby was telling me even, the other day, right, about what happened with our good friend and colleague Lisa Biggs.
Gabby: Lisa Biggs. Yeah, I think someone else found it and brought it to her attention, that a woman in the Philippines was using Lisa’s photo, multiple photos of her, different photographs, and promoting herself as a voice actor on Fiverr under a different name. It was crazy, and when you pulled up her Fiverr profile, there was three or four photos of Lisa.
Rob: Wow.
Gabby: So she immediately, of course –
Anne: What’s –
Gabby: Reached out –
Anne: Yeah.
Gabby: Told her, knock it off.
Anne: What’s that classified under? Is that copyright, Rob?
Rob: That’s identity theft.
Anne: Identity theft, oh, ok.
Rob: That’s even further than trademark.
Anne: Further than that.
Rob: Trademark is basically just your name, you know, your trade name with the trademark infringement. Occasionally I see bootlegged copies of my book on the Internet too, and we have to pull that out. It’s just, happens. I mean, it’s the Internet. That’s why it’s important to protect these things.
Anne: Right.
Gabby: And I mean, we have seen this elsewhere in voiceover too. We’ve seen people’s logos lifted and minutely changed and you know, repurposed. There’s so much of this going on, but in a case like what happened to Lisa, with it being international, what are the laws? Do we have anything that protects us? How does that work?
Rob: Well, that’s clearly a crime. But I mean, when you’re talking about places like the Philippines and China, those types of places, good luck. You know, you’d have to go like get the FBI involved and stuff, but they’re not gonna deal with that.
Gabby: Right.
Anne: Right.
Rob: They’re trying to find missing people and stuff. They’re not gonna deal with that kind of stuff. So I mean basically what you’d have to do is contact Fiverr, get them involved, get them to pull the pictures down.
Anne: Rob, if we can, let’s talk a little about copyright because I, reading the forums the other day, and I saw you were involved in a discussion about copyright.
Rob: Trademark, copyright, this is called intellectual property. I see all over voiceover artists, like you just said, Gabby, you see like they’ll take logos and you know, change them. I even see voiceover artists take famous logos and change them. They borrow them, as I say. It extends to demos too. People will take a Stephen King book and read five pages of the book and put it up on Facebook. Probably not gonna see like the FBI at your door, or Stephen King’s not gonna show up, but that is copyright infringement. Technically if the publisher wanted to or Stephen King wanted to go after you for whatever reason, they could do it or sue you. Are they gonna do it? Probably not. But you know, there are certain companies out there that will do it, you know like Disney. They’re gonna chase you. The Minnesota Twins, look, Major League Baseball. So it’s not whether they’re going to do it, and that’s what everybody argues. “No, they’re not gonna chase you, don’t worry.” That’s not the point.
Anne: Right.
Rob: Whether they decide to exercise their rights or not, that’s a separate question than can they? And they absolutely can. You have a car. You own the car. You can say who drives the car, when they drive the car. Same thing. Intellectual property, you own the words, the ideas in that story, so you’re the one that decides who can reproduce it, who can publish it, who can put it out in public. Putting music on demos that, you know that you don’t have clearance on, the writers can come after you, the publishers. Taking pictures, because I actually have a couple of cases going on right now where voiceover artists will take, download pictures off the Internet, and they’ve gotten bills for those because they didn’t license them properly. That’s a big thing now because there’s actually a couple of companies out there that have been created just to like scour the Internet for these automatically.
Anne: And I’ve heard of them too. I’ve heard of some people just, yeah, they’re getting fined.
Rob: Yeah, saying “that’s my photo.”
Anne: “My property.”
Rob: “I want $200 or $700,” whatever the number they make up. Basically all you really need to do is ask for permission. If you wrote to the publisher of Stephen King’s book and said, “can I use these three pages? I’m gonna post it online,” they’re probably gonna say yes. 99% of the time they’ll be like “sure, no problem.” You can’t just assume that’s OK. It’s not. You’ll see it all the time on the groups, and I hear it a lot where people come to me, a client, who they gave permission to use their voiceover for a year, say. After two years, they’re still using it, and they want to go sue them, or chase them, or get money from them for using their voice for more than a year. It’s the same laws that they’re going under for that, to collect, and they go crazy about it. So it’s like, when it happens to them, it’s like the end of the world. But they have no problem go and take a book and read it. Artists need to respect other artists’ work.
Gabby: That’s a great point, Rob. Thank you so much for saying that.
Anne: Yeah.
Gabby: And Rob, please share with us the name of your book and of course your website, and how folks could get in touch with you if they want to retain your services.
Rob: The book is Voiceover Legal, voiceoverlegal.com, really hard –
Anne: [laughs]
Rob: – is the site. And I’ve been working on like the second edition for so long, and it’s gonna be out soon, but I just need to stop coaching softball, and it’ll be out one of these days. But the book is still obviously valid. But they can contact me, probably easiest way is through my website, my law website. It’s robscigesq.com.
Anne: Thank you so much for helping me with my trademarks and VO BOSS. He’s amazing. Rob, thank you so much for being with us today for the second time. Yay!
Gabby: Yay!
Rob: Yeah, that’s so cool, thanks.
Anne: I’d like to give a big shout out to our sponsor ipDTL.
Gabby: And of course Voiceovers.com who, if you haven’t seen it, they just released a big video about what’s going on. There’s all kinds of activity happening. They’re getting ready to do a soft launch on the new platform. Voiceovers.com.
Anne: OK, guys. Have a great week, and we’ll see you next week.
Gabby: Bye!
Anne: Bye!
Announcer: Join us next week for another edition of VO BOSS with your hosts Anne Ganguzza and Gabby Nistico. All rights reserved, Anne Ganguzza Voice Talent in association with Three Moon Media. Redistribution with permission. Coast-to-coast connectivity via ipDTL.