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These days, selling products beyond U.S. borders is just a click away on Amazon, and the internet provides easy access to foreign consumers of goods and services. Listeners will hear directly from attorneys in Canada and Mexico about the risks and opportunities available to them in those countries.
These days, selling products beyond U.S. borders is just a click away on Amazon, and the internet provides easy access to foreign consumers of goods and services. As women's history month comes to a close, my guests, Selena Altro and Gloria Niembro, two amazing women leaders and attorneys in Canada and Mexico respectively, discuss the risks and opportunities available to businesses expanding into those countries.
00:00:35.000 --> 00:00:39.720 www.TalkRadio.nyc: welcome to in time to by this is Matthew. How about your most?
00:00:40.990 --> 00:00:42.040 www.TalkRadio.nyc: Yeah.
00:00:43.400 --> 00:00:51.100 Matthew D. Asbell, Esq: Hello! This is Matthew. As well welcome to in tang. If I on talk radio, dot Nyc. Where we talk about the intangible aspects of business
00:00:51.690 --> 00:01:05.660 Matthew D. Asbell, Esq: as we close out Women's history month, this march of 2,023. I've invited 2 amazing women leaders with whom I have the great pleasure of working very regularly.
00:01:05.810 --> 00:01:09.410 Matthew D. Asbell, Esq: and and these are not just
00:01:09.500 --> 00:01:20.340 Matthew D. Asbell, Esq: leaders and women, but they're also people with whom I work from other countries. So I've reached out, and we have
00:01:20.360 --> 00:01:27.950 Matthew D. Asbell, Esq: Gloria and the embro from Mexico here and Selena outro from Canada.
00:01:28.010 --> 00:01:39.400 Matthew D. Asbell, Esq: and I asked them here today, really talk about in tangible aspects of business, in relation to the world of trademarks, and particularly trademarks when you
00:01:39.520 --> 00:01:46.030 Matthew D. Asbell, Esq: leave, when you sell your products outside of our us borders.
00:01:46.330 --> 00:01:47.600 Matthew D. Asbell, Esq: But to start out.
00:01:47.840 --> 00:01:55.870 Matthew D. Asbell, Esq: let me ask. Let me ask Gloria to tell us a little bit about her background. Gloria, can you? Can you share a little bit about yourself?
00:01:57.450 --> 00:01:58.890 Matthew D. Asbell, Esq: You have to come off mute?
00:02:01.690 --> 00:02:14.200 gniembro: Sure. Thank you. Thank you, Matthew for for having us. Thank you. Dog, radio and Yc: so sure thing I am a an IP lawyer. I live in Mexico City.
00:02:14.470 --> 00:02:17.030 gniembro: I am a mom of one year old.
00:02:17.530 --> 00:02:24.650 gniembro: So I am learning about how to balance work life with my personal life.
00:02:24.660 --> 00:02:29.440 gniembro: I did my Lm. A masters in law in in New York.
00:02:29.760 --> 00:02:34.070 gniembro: That was a few years ago, most
00:02:34.800 --> 00:02:40.890 gniembro: 7 years ago. Oh, my gosh! I had the fortune to to
00:02:41.080 --> 00:02:48.940 gniembro: to study New York, to lead the city to actually work in an IP Boutique law firm.
00:02:49.000 --> 00:03:02.160 gniembro: and to also set for the bar exam, which is a a challenge for those studying law in in in the State, and I don't know if you If you want me to talk further about that, or or
00:03:03.040 --> 00:03:04.970 gniembro: does
00:03:05.440 --> 00:03:23.690 Matthew D. Asbell, Esq: Thanks, Gloria, we'll we'll. We'll keep coming back and forth. So so that's a that's a good introduction. But one thing you you you raised, I mean your your one year old, and your work. Life balance makes me reflect a little bit on on my own situation. A. As you know
00:03:23.690 --> 00:03:28.900 Matthew D. Asbell, Esq: I have. I have this amazing mother, who's probably listening to this program today.
00:03:28.900 --> 00:03:45.630 Matthew D. Asbell, Esq: but she's a you know. She's almost 82 years old and a and went to med school at a time when women didn't go to med school and had children at a time, and and you know, raised us as a working mom at a time when women didn't work.
00:03:45.760 --> 00:03:57.210 Matthew D. Asbell, Esq: So I had the great pleasure of of knowing at least a little bit from personally, of the struggles that it it can be to have work like balance as a mother, which
00:03:57.350 --> 00:04:14.300 Matthew D. Asbell, Esq: I can't be, but I can certainly appreciate knowing you and knowing all you've accomplished, and all you do, which I know you're going to tell us a little bit more about in a minute. It's, you know. It's a lot to to have a small child and raise a small child and run a business.
00:04:14.300 --> 00:04:24.410 Matthew D. Asbell, Esq: and you know, so we we'll come back and talk a little bit about that. I'd like to to talk to Selena a little bit, Selena. Can you tell us a little bit about
00:04:24.570 --> 00:04:26.200 Matthew D. Asbell, Esq: about your background?
00:04:26.570 --> 00:04:33.440 selenaaltropaperman: Sure. Thank you, Matthew, for having me on this program, and
00:04:33.730 --> 00:04:43.500 selenaaltropaperman: well, i'm from Montreal in Quebec and Canada, and I went to school here, did my undergrad in psychology.
00:04:43.900 --> 00:04:53.420 selenaaltropaperman: and thought I wanted something a little bit more black and white. So I went into law. Ha, ha, ha! It's definitely not black and white.
00:04:53.470 --> 00:04:54.730 selenaaltropaperman: but it's
00:04:54.920 --> 00:05:08.380 selenaaltropaperman: very, very I I I found it very interesting, and was always learning more. So I went. I started off my career in a general practice firm
00:05:08.480 --> 00:05:19.680 selenaaltropaperman: where I didn't for the probably about the second year in the IP specialists in that firm suddenly had to leave. So they needed someone to fill in.
00:05:19.860 --> 00:05:38.260 selenaaltropaperman: and I temporarily filled in where I loved it. The clients really enjoyed working with me, and ever since then I've been in, you know, specializing IP, and about 15 years ago the firm closed, and I open up my own boutique
00:05:38.460 --> 00:05:46.620 selenaaltropaperman: firm specializing in IP, particularly trademarks, and from there.
00:05:46.620 --> 00:06:06.790 selenaaltropaperman: you know, started to expand and have connections with people outside of Canada. And I I've met. I I work with the attorneys, such as yourself, Matthew, where we're constantly working on, you know Canada and us. The clients are are always.
00:06:06.790 --> 00:06:19.540 selenaaltropaperman: you know. Someone's has a a a a trademark in Canada. They definitely want to look at the Us. And sometimes in the Us. They want to look at Canada because we're so closely related, especially in this global world
00:06:19.910 --> 00:06:35.700 selenaaltropaperman: and all that. I also I have 2 grown up children, and actually 2 grandchildren. So I've been working throughout and Gloria. Keep it up. I'm telling you it's it's well worth it. You can do it.
00:06:36.540 --> 00:06:39.680 Matthew D. Asbell, Esq: Thanks so much. Yeah, the the
00:06:39.810 --> 00:06:58.830 Matthew D. Asbell, Esq: you know the aspects of you know the 3 of us are are practicing law in a very specific field, but but the people we deal with from day to day are often people who are in business, smaller or midsized businesses.
00:06:59.050 --> 00:07:06.310 Matthew D. Asbell, Esq: and and they have issues and questions. And and I think an important aspect of
00:07:06.730 --> 00:07:12.860 Matthew D. Asbell, Esq: what we do is about that relationship with people in in businesses as well as the relationship with each other.
00:07:13.210 --> 00:07:27.660 Matthew D. Asbell, Esq: But that means we have to be able to. You know we can't just speak law. We have to speak business. We have to understand the people we talk to the psychology degree you have, I'm sure lens itself quite well to that. I have a psychology degree myself.
00:07:27.740 --> 00:07:34.070 Matthew D. Asbell, Esq: and and I think you know, having an understanding of people is a really important thing.
00:07:34.320 --> 00:07:42.990 Matthew D. Asbell, Esq: What I think about you know the the listeners in this program. The businesses particularly us based businesses that are listening to this program.
00:07:43.120 --> 00:08:01.420 Matthew D. Asbell, Esq: You know some of them are as an example. They're like sellers on Amazon. They've got their They've got their products, and they're and they're selling it, and I don't know if you've ever you've ever been a seller on Amazon. I have this great olive oil client that I help with on trademarks, but I I actually sometimes sell her
00:08:01.420 --> 00:08:04.500 Matthew D. Asbell, Esq: olive oil on Amazon, so I've experienced it.
00:08:04.620 --> 00:08:16.150 Matthew D. Asbell, Esq: And as a seller on Amazon, you know, you can just check a box and say, you know I've been selling here in the United States. I would like my products to be available in Canada.
00:08:16.480 --> 00:08:18.930 Matthew D. Asbell, Esq: I would like my products to be available in Mexico.
00:08:19.120 --> 00:08:29.020 Matthew D. Asbell, Esq: You can just check a box and start selling into a country I mean. The borders are so easily crossed these days harder between Mexico and the Us. But not that hard.
00:08:30.060 --> 00:08:33.520 Matthew D. Asbell, Esq: but but certainly between Canada.
00:08:33.659 --> 00:08:36.110 Matthew D. Asbell, Esq: you know you. You can just be.
00:08:36.220 --> 00:08:46.940 Matthew D. Asbell, Esq: You can be in upstate New York, and it's right over the border. So you know. What What do you tell, Selena? What do you tell? Clients that are.
00:08:47.020 --> 00:08:47.720 Matthew D. Asbell, Esq: you know.
00:08:47.920 --> 00:08:53.100 Matthew D. Asbell, Esq: just took over the border in Canada, coming into the Us. So what do you tell the clients that, Are
00:08:53.600 --> 00:08:58.340 Matthew D. Asbell, Esq: you just in the Us. And interested in in selling it to Canada?
00:08:59.600 --> 00:09:15.620 selenaaltropaperman: Well, Matthew, I think you bring up a very good point that it's so easy in our global world to really sell over there. There's no real borders you're selling on through Amazon, or however, you're selling on on the Internet.
00:09:15.660 --> 00:09:20.690 selenaaltropaperman: You you do cross the borders, and
00:09:20.710 --> 00:09:29.080 selenaaltropaperman: most of my clients will think, okay, I I have the protection in Canada. It's okay. I can sell anywhere I I want to.
00:09:29.380 --> 00:09:37.600 selenaaltropaperman: But you know I I I really have to explain to them and let them know that
00:09:37.640 --> 00:09:56.270 selenaaltropaperman: it does, just because you have a registration in Canada does not protect you elsewhere, or if you have a domain name, or if you have a company, name it still doesn't protect you, and that we have to. I I I work with the clients because a lot of my clients are the smaller
00:09:56.270 --> 00:10:11.650 selenaaltropaperman: small to middle on. You know the entrepreneurs, and they're if they're just beginning their businesses, they wanna get a an understanding of how best to protect their rights. And so we we we look at? Where? Where are their major markets? And
00:10:12.100 --> 00:10:22.540 selenaaltropaperman: usually it will be the Us. For for my Canadian clients, or and Mexico is also one of them has become very popular, too.
00:10:22.560 --> 00:10:40.190 selenaaltropaperman: and we look at it, and we we we I always suggest we should, you know, go into, look at at least do a preliminary search. See if it's available, and and and then look into protecting their rights in that country, because
00:10:40.200 --> 00:10:45.760 selenaaltropaperman: it will. They will not be covered, you know, if they have that registration in Canada.
00:10:45.880 --> 00:10:49.050 selenaaltropaperman: there's also different, you know.
00:10:49.230 --> 00:10:57.510 selenaaltropaperman: There's a lot of the same laws, but there are differences between the countries that they should be looking out for, and that's a
00:10:57.550 --> 00:11:00.860 selenaaltropaperman: we try. I try and work with them on it.
00:11:00.990 --> 00:11:17.900 Matthew D. Asbell, Esq: Let's come back on the on the differences, because I think that's a bit deep deeper. Dive and let's hear a little bit from from Gloria. You know that there allegedly is a wall between your country and ours, but apparently that doesn't really stop the flow of business.
00:11:17.900 --> 00:11:33.350 Matthew D. Asbell, Esq: So you know, i'm sure you have a lot of Mexican clients interested in the United States. And certainly you're dealing with us clients going into Mexico. W. What kinds of what? What are your experiences in working with the different entrepreneurs
00:11:33.450 --> 00:11:35.250 Matthew D. Asbell, Esq: from that perspective.
00:11:36.480 --> 00:11:52.870 gniembro: One of the aspects to consider is really it's related to what you just mentioned, Selena. We have to be aware that the trademark rights are territorial. So if you have a trademark registration in Canada or in the Us.
00:11:52.870 --> 00:12:12.120 gniembro: you want to have necessarily a protection in Mexico, so you have to seek expertise advice in in in those countries to to the coming to the market clean and and with exclusive use rights. So one of the main aspects to consider is the difference between the use and the registration
00:12:12.120 --> 00:12:17.630 gniembro: in in Mexico. You have to file a registration to have you to have rights
00:12:17.640 --> 00:12:35.040 gniembro: as opposed to the Us. Where you have a common law system where the use can be important, and it can even drop the registration if you have by your rights. So that's one of the the differences, the first to file system that we have in Mexico.
00:12:35.670 --> 00:12:47.240 gniembro: Also, we have to follow Declaration of using Mexico after the third anniversary of the granting of our registration of of a trademark. I think that's different
00:12:47.240 --> 00:12:58.890 gniembro: in the Us. And and I think in the in Canada as Well, I know that if you file, for instance, a 3 part application in in the Us. You have to wait until you can prove use
00:12:58.970 --> 00:13:16.760 gniembro: in order to obtain a registration, and you can file for their extensions for that declaration or use to to be in place in Mexico. You don't have to to prove you. You can have a a registration right away, I mean, if there are no other identity or confusingly similar marks.
00:13:16.760 --> 00:13:21.980 But you do have to produce after 3 years of the of the Granted registration.
00:13:23.130 --> 00:13:24.820 gniembro: So I
00:13:25.890 --> 00:13:34.210 Matthew D. Asbell, Esq: yeah, I think you know that's a little bit more into the weeds of the specifics of trademarks, but we'll, we'll come back a little bit more on on those topics.
00:13:34.240 --> 00:13:48.130 Matthew D. Asbell, Esq: We're gonna take a break now, when we come back. What I'd like to talk about with you is a little bit of You know what what you do and what you have done in your in your firms, you know, in your practices, and then we can talk a little bit more about the other aspects.
00:13:48.280 --> 00:13:49.680 Matthew D. Asbell, Esq: So
00:13:49.730 --> 00:13:57.160 Matthew D. Asbell, Esq: we we we'll go to break You've been listening to in tangify on talk radio, Dot Nyc. And we'll be back in a few minutes.
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00:15:35.560 --> 00:15:41.040 you're listening to talk radio, Nyc: uplift, educate in power
00:15:51.690 --> 00:15:52.620 the
00:16:00.590 --> 00:16:01.220 you
00:16:03.650 --> 00:16:04.250 to
00:16:07.810 --> 00:16:19.880 www.TalkRadio.nyc: welcome back to in tang. If I talk radio, dot Nyc: i'm your host, Matthew as well. My guests are Gloria and the embro from Mexico and Salina Altro from Canada.
00:16:20.250 --> 00:16:28.520 Matthew D. Asbell, Esq: Before the break. We were talking about a little bit of the differences in some of the trademark laws. But, as I said, we're getting it a little bit into the weeds, and I would revisit.
00:16:28.620 --> 00:16:45.680 Matthew D. Asbell, Esq: You know my my guests, and and who they are, and you know, and their experiences. So you know, I I think, Gloria, i'm gonna start with you because you talked a little bit about your experience getting educated in the United States and taking the the bar here.
00:16:45.770 --> 00:16:47.010 Matthew D. Asbell, Esq: But
00:16:47.140 --> 00:16:49.670 but what happened after that in your career?
00:16:53.380 --> 00:17:03.660 gniembro: Thank you. So I When I go back to Mexico I I was hired. Well, I I got back to to my
00:17:03.860 --> 00:17:13.140 gniembro: for the law firm, which is a full service, full service law firm in in Mexico City, and with a robust type of practice.
00:17:13.589 --> 00:17:20.560 gniembro: and I think, almost 4 years after I got back I was offered this
00:17:20.650 --> 00:17:27.380 gniembro: amazing and an interesting project to set up the IP practice
00:17:27.440 --> 00:17:30.590 gniembro: in a different law from Mexico.
00:17:30.700 --> 00:17:33.150 gniembro: So I I was.
00:17:33.580 --> 00:17:47.570 gniembro: I was tempted with this offer, and I I join these la from at the end, which is my my main law firm, and I would say that it was
00:17:47.810 --> 00:18:04.690 gniembro: definitely interesting, but very challenging as well, because when I came to Ches I was almost pregnant. I got pregnant. A few months after that I was promoted partner recently, while I was.
00:18:04.830 --> 00:18:09.810 gniembro: you know, opening and and consolidating, establishing my I to practice
00:18:11.090 --> 00:18:18.990 gniembro: growing my team training my team as well as promoting the the IP services with the clients of of
00:18:19.020 --> 00:18:27.630 gniembro: the the firm as well as my own clients. So it was very, I would say, entertaining.
00:18:27.640 --> 00:18:33.630 gniembro: and my role as a leader in in in this was also important.
00:18:33.730 --> 00:18:40.140 gniembro: I had the chance to join the Diversity and Inclusion Committee of of the
00:18:40.610 --> 00:18:55.990 gniembro: of the law of the law, firm as well as the one in the Mexican IP Association. Currently I am one of the Board members of the Mexican Association for the protection of Intellectual property. So I
00:18:56.090 --> 00:18:59.300 gniembro: I think I I have been blessed with hard work.
00:18:59.470 --> 00:19:10.750 gniembro: and it's it's a privilege to be an ex to to have the the the chance to be an example for those who are in the past of Row and within their careers.
00:19:11.810 --> 00:19:31.170 Matthew D. Asbell, Esq: So it's. It's really interesting that you know you joined your firm, you know, when you were pregnant and and and basically you had 2 babies at the same time, right? You had. You had. You know your your your real baby, of the physical, actual child.
00:19:31.170 --> 00:19:41.770 Matthew D. Asbell, Esq: But you had your your new role in a firm where you were establishing intellectual property practice, and you had to nurture and grow that practice and still have to.
00:19:41.830 --> 00:19:50.850 Matthew D. Asbell, Esq: You know those are, you know. I mean they're different. You Aren't, you know, you know, giving milk or anything to to that. But you're still You're You're still.
00:19:50.880 --> 00:19:55.770 Matthew D. Asbell, Esq: you know, putting a lot of energy into into that that growth.
00:19:55.880 --> 00:19:58.050 Matthew D. Asbell, Esq: And then, similarly to
00:19:58.170 --> 00:20:11.000 Matthew D. Asbell, Esq: to be part of the Di, that the diversity, equity, Inclusion Committee, and your firm, and in the Mexican IP Association. You know it's it's like yet another endeavor. It's a it's a lot of a lot of hats to wear.
00:20:11.310 --> 00:20:14.030 Matthew D. Asbell, Esq: Would love to know.
00:20:14.140 --> 00:20:24.380 Matthew D. Asbell, Esq: Do you have any type of focus or efforts on a clientele that that fall within diversity, equity, inclusion.
00:20:24.460 --> 00:20:35.210 Matthew D. Asbell, Esq: categories, women, you know, people, particular races. Are you serving clientele like that, or it trying to aid them and understanding IP better.
00:20:36.750 --> 00:20:49.020 gniembro: I actually yes, I do advice it's that the name of of this association is called Mana. 41 we actually secured registration for the run in Mexico.
00:20:49.130 --> 00:20:54.520 gniembro: They advocate for the LGBT community rights
00:20:54.580 --> 00:21:04.500 gniembro: here in Mexico. and one of the co-founders. Is is a close friend of mine, and and he's a good client also for their side businesses.
00:21:04.570 --> 00:21:08.720 gniembro: and this particular association they
00:21:08.870 --> 00:21:19.660 gniembro: they understood the importance of protecting their mark, this title being an association and a pro Bono. No. The Credit Association organization.
00:21:19.680 --> 00:21:25.380 gniembro: It's a very colorful design with the colors of the
00:21:25.470 --> 00:21:29.070 gniembro: called the Price flag, but also with a combination of
00:21:29.140 --> 00:21:46.620 gniembro: of of a little design with a an animal I mean, it's a very distinctive design, and actually they have some issues with a third party. They were trying to use it. So that's why secure. And a 3 man registration for them was very important.
00:21:46.620 --> 00:22:04.020 gniembro: and also the the diversity of inclusion work that we do within the law firm is important for the inside and for the outside. It's important for our clients to understand that there are a career plans for for the woman for the LGBT community.
00:22:04.020 --> 00:22:06.860 gniembro: and it's also important for the
00:22:06.880 --> 00:22:25.310 gniembro: for from an ethical perspective and for from a business perspective, I think. And but yes, it is, it's? I think it's very interesting, as you were mentioned, Matthew, that I have 2 babies. I just remember that when I was in maternity leave, I was supposed to take 6 months off.
00:22:25.520 --> 00:22:26.720 gniembro: I just couldn't.
00:22:26.970 --> 00:22:38.120 gniembro: It was so difficult to wear so many hats, and not not being there for for my other baby, so I had to juggle with both projects, and at the end I think it did work out.
00:22:40.640 --> 00:22:43.520 Matthew D. Asbell, Esq: I'm really glad to hear that, and not surprised
00:22:44.790 --> 00:22:56.800 Matthew D. Asbell, Esq: shifting over Selena. You know, Selena, you you know your your babies are all grown up in a sense, and and I don't mean just the physical babies, although now you have the grand babies
00:22:56.800 --> 00:23:04.800 Matthew D. Asbell, Esq: who are not all grown up. But but you also have your your own practice, and you've had it for quite some time. Tell us a little bit about.
00:23:04.820 --> 00:23:11.770 Matthew D. Asbell, Esq: You know that experience of nurturing the practice and growing it up at a, and and being a working mother at the time.
00:23:12.870 --> 00:23:32.800 selenaaltropaperman: Well, I also, when I started to work in the law, the General practice law firm. I also had basically within the second year. I also had a baby, my my first, and then I had, a couple of years later, my second and I was.
00:23:32.800 --> 00:23:38.700 selenaaltropaperman: It was a very family friendly firm, so it was good like that, and but I
00:23:38.900 --> 00:23:42.520 selenaaltropaperman: persisted in keeping my working
00:23:42.590 --> 00:23:47.420 selenaaltropaperman: and and nurturing my children. So it it worked out, and then
00:23:47.940 --> 00:24:07.500 selenaaltropaperman: I I was very fortunate in that. I started my law practice, my my boutique firm actually, when my children were a little older, so it it helped me. They were in school already all day, so I was able to focus more on building my boutique firm.
00:24:07.590 --> 00:24:08.930 selenaaltropaperman: It was
00:24:08.990 --> 00:24:25.780 selenaaltropaperman: the first year, probably the most challenging here in my life learning all the aspects, you know, because it wasn't. Only I knew the law. It was more than that. It was the business aspect of it and running a law firm. Basically but it was.
00:24:25.790 --> 00:24:43.710 selenaaltropaperman: It was the most rewarding experience. Having my own firm and being able to channel my work where I feel most productive where and I can be involved in all aspects, you know. So i'm there
00:24:43.710 --> 00:24:58.990 selenaaltropaperman: from day one with the client, and they know they can reach out to me, and we have very, really close relationships. My My clients feel very comfortable. They know i'm watching out for them in every aspect.
00:24:59.250 --> 00:25:02.890 selenaaltropaperman: So I really
00:25:03.060 --> 00:25:19.640 selenaaltropaperman: I I I I was. I was fortunate to juggle both of the the home life. I have very supportive husband, and you know he didn't need those home cooked meal, so I was able to really
00:25:20.510 --> 00:25:30.450 selenaaltropaperman: let me just say home cooked meals all the time, so but I I was able to to do to do it all.
00:25:30.450 --> 00:25:46.260 selenaaltropaperman: and I I feel that I I mean now I'm established all we it's, you know, every every day I still feel like I have new challenges every day. It's. The the work is is so interesting. The clients are all different.
00:25:46.260 --> 00:25:57.020 selenaaltropaperman: and and you are. I think, that with I key in what i'm doing, because i'm there every step with the client. It it it is
00:25:57.510 --> 00:26:12.910 selenaaltropaperman: like, you know, a baby, and watching them grow watching your clients grow from the the the beginning stages to when they're out there selling and or or servicing worldwide. So it's really
00:26:12.910 --> 00:26:33.030 selenaaltropaperman: a similar type of process. But I've been very fortunate, and I've and and I even had time to do, you know, was very involved in a federation in a charity for the under privilege, and I I shared the women's, the women's division for a year, and that was
00:26:33.030 --> 00:26:47.170 selenaaltropaperman: extremely interesting and very rewarding, and I do some work for the the Federation with respect to trademark work. And so that's it's been an interesting career, and I'm. I'm. Looking for
00:26:47.180 --> 00:26:51.070 selenaaltropaperman: forward to the future years in in this industry.
00:26:51.930 --> 00:26:55.470 Matthew D. Asbell, Esq: So something you both alluded to
00:26:55.600 --> 00:26:56.710 Matthew D. Asbell, Esq: is
00:26:56.940 --> 00:27:11.150 Matthew D. Asbell, Esq: essentially accessibility. At least that's how I would characterize it, like, you know, being accessible to people who might not know they can reach out to you, or or how to reach out to you, and
00:27:11.150 --> 00:27:17.880 Matthew D. Asbell, Esq: and and and really being able to help them and nurture them right through whatever their their issues are.
00:27:18.950 --> 00:27:25.750 Matthew D. Asbell, Esq: And you know, and I I think that's very important, and in particular, as I think about the relationship
00:27:25.950 --> 00:27:41.780 Matthew D. Asbell, Esq: that I have with each of you. That's similarly one of accessibility. So I wanted you actually to talk a little bit about it. Maybe start with Selena a little bit about the nature of that relationship. When when there's a Us client, you know.
00:27:42.290 --> 00:27:46.570 Matthew D. Asbell, Esq: How how do you? How do you work with me or with the client.
00:27:46.980 --> 00:27:47.850 Matthew D. Asbell, Esq: Typically
00:27:48.370 --> 00:28:02.130 selenaaltropaperman: well, I mean, typically we have it. First of all, we have a great relationship where I can actually just either pick up the phone message you whatever I need to discuss if we want to work. You know how best to approach this with the client.
00:28:02.190 --> 00:28:05.340 selenaaltropaperman: I
00:28:05.350 --> 00:28:24.270 selenaaltropaperman: We have many files that we're. We're working on one right now, in fact, that we're we're developing sort of a global IP strategy. So you know generally it it. It it could be. Some clients just want to speak with me alone, and they want me to handle.
00:28:24.270 --> 00:28:45.420 selenaaltropaperman: You know the the foreign associate, so I will speak to you. Let's say, Matthew, we'll come up with a plan. I'll go back to the client sometimes. It's we want you in, and and and we want you there. So we're. We're conferencing. We're we're we're working together. But we're always it's it's it's not just an anonymous like email to somebody hey, you know I I need to file this, and you know
00:28:45.420 --> 00:28:49.610 selenaaltropaperman: it. It's a lot of back and forth, and you'll You'll give me
00:28:49.670 --> 00:28:56.670 selenaaltropaperman: sort of inside advice and and vice versa. You know something that any it You know that
00:28:56.720 --> 00:29:08.580 selenaaltropaperman: I I we're comfortable with each other that we're it's not the typical lawyer Billing. Every second we speak. It's just, you know, trying to get the best for our clients
00:29:08.970 --> 00:29:12.450 selenaaltropaperman: in the most efficient and cost efficient way.
00:29:13.370 --> 00:29:32.590 Matthew D. Asbell, Esq: Thanks, Selena. We've got to go to break. So when we come back, Gloria, I'm gonna ask you to talk a little bit about the nature of of the way in which you work with us clients and us law firms like me. But let's go to a break. You've been listening to in tangify on talk radio, dot Nyc. And we will be right back.
00:29:34.310 --> 00:29:48.660 Are you passionate about the conversation around racism? Hi! I'm, Reverend Dr. Tlc. Host of the Dismantle Racism show which airs every Thursday at 11 a. M. Eastern on talk, Radio and Nyc
00:29:48.660 --> 00:30:01.210 join me and my amazing guest. As we discussed ways to uncover dismantle and eradicate racism. That's Thursdays at 110'clock a. M. On talk, radio and Nyc.
00:30:03.670 --> 00:30:31.610 www.TalkRadio.nyc: You know. Once the movement world, you may have many unanswered questions regarding your health. Are you looking to live a healthier lifestyle. Do you have a desire to learn more about mental health, and enhance your quality of life? Or do you just want to participate in self-understanding and awareness. I'm Frank R. Harrison, host of Frank about health, and each Thursday I will tackle these questions and work to enlighten you tune in every Thursday, 5 P. M. On talk radio and Nyc. And I will be frank about how to advocate for all of us.
00:30:36.910 --> 00:31:01.050 Hey, everybody! It's Tommy D, the nonprofit sector connector coming at you from my attic each week here on top radio and Ny z I hosted program for the lamb of kin focused non-profits in cocktails each and every day, and it's my focus to help them amplify their message and tell their story. Listen: each week at 10 a. M. Eastern standard time until 11. A. M. Is from standing time right here on talk radio and Myc.
00:31:02.020 --> 00:31:12.420 You're listening to talk radio and Yc. At Ww: talk radio and livec, now broadcasting for 24 h a day.
00:31:12.990 --> 00:31:13.980 you
00:31:26.770 --> 00:31:27.390 to me
00:31:30.760 --> 00:31:40.530 Matthew D. Asbell, Esq: back to you in Tang. If I i'm your host, Matthew Aspel, and my guests are Gloria, Me. Embro and Selena Altro from Mexico and Canada resp.,
00:31:40.710 --> 00:31:48.430 Matthew D. Asbell, Esq: before the break. We were talking a little bit about the nature of our relationship with our clients, and how
00:31:48.550 --> 00:31:57.820 Matthew D. Asbell, Esq: we work with each other, and how we work with each other on behalf of clients that are, you know, domestic here in us, or domestic, and Canada.
00:31:57.910 --> 00:32:10.790 Matthew D. Asbell, Esq: and I wanted to to swing that over to glory and ask you about about that in terms of how you work with with me and with others in the Us. In relation to their clients
00:32:13.390 --> 00:32:21.060 gniembro: great. So now that we have already talked about the importance of having a registration
00:32:21.110 --> 00:32:37.060 gniembro: overseas, and and how also, I think Selena mentioned that quickly, that if you have a corporate or business name in one country, it doesn't mean that you will have automatically without rights. It's important to really
00:32:37.060 --> 00:32:43.080 gniembro: take that in that the commercial practice requires protection beyond one country in in the IP field.
00:32:43.090 --> 00:32:53.230 gniembro: So when it comes to selecting the the correct and accurate persons overseas.
00:32:53.230 --> 00:33:07.960 gniembro: I would say that trust is one trust, and and accessibility are 2 important aspects to consider. So that's one of the reasons, Matthew, that I love working with you, that we don't have only these
00:33:08.210 --> 00:33:16.780 gniembro: email communications where we can be as complex as the situation needs to be, but in reality we can also text
00:33:16.910 --> 00:33:23.740 gniembro: messages. We we have these good communication and very friendly one in in Via Whatsapp.
00:33:23.760 --> 00:33:40.930 gniembro: and I think that's that's something that I appreciate, and that our clients, both in the Us. And New Mexico also appreciate the responsiveness that we can have the practicality and and and the the turnaround response. So
00:33:40.930 --> 00:33:54.230 gniembro: that's one of the the reasons why, and trusting a work to a specific law firm in the Us. Or in Mexico, where in Canada it also means that they will have good
00:33:54.570 --> 00:33:59.180 gniembro: friend relationships with other attorneys around the world.
00:34:00.530 --> 00:34:18.639 Matthew D. Asbell, Esq: Thanks. That's great, Gloria. You know what occurs to me is, you know I have a you know, a client. They they're you know. I'm helping them in the United States, and and you know I tell them, because usually they they don't even realize that they should
00:34:18.639 --> 00:34:30.070 Matthew D. Asbell, Esq: seek registration in Mexico, Canada, or elsewhere in the world. So I tell them, you know. I think you you want to consider filing an application and getting it, getting your trademark registered and in in Mexico.
00:34:31.250 --> 00:34:42.050 Matthew D. Asbell, Esq: and and the typical question, and you know what I think many of the listeners might have as well. Well, why do I need to do that? Why do I need to do that now i'm not selling into Mexico yet.
00:34:42.179 --> 00:34:47.360 Matthew D. Asbell, Esq: You mentioned some things earlier, but I think it's probably worth revisiting them a little bit.
00:34:47.520 --> 00:35:01.370 Matthew D. Asbell, Esq: and in the context of what are the risks to a Us. Entity? A Us. Business that doesn't seek protections in Mexico or Canada, but
00:35:01.520 --> 00:35:06.590 Matthew D. Asbell, Esq: is planning to. or already is selling into your country.
00:35:07.620 --> 00:35:10.940 Matthew D. Asbell, Esq: Are you comfortable jumping, jumping in on that one first?
00:35:11.760 --> 00:35:18.480 gniembro: Sure. Thank you. It's a good question. And actually it's the most important question
00:35:18.530 --> 00:35:28.450 gniembro: to to make our clients aware of the relevancy of of having restrictions over our own country.
00:35:28.460 --> 00:35:34.320 gniembro: So the risks of using a trademark in Mexico, or let's say that You're not
00:35:34.350 --> 00:35:39.330 gniembro: still in the market in Mexico, but you are planning on doing that soon.
00:35:39.660 --> 00:35:47.830 gniembro: If you don't secure registration earlier, you can have a third party in the queue
00:35:47.840 --> 00:35:54.310 gniembro: filing for for an application for a similar or or an identical mark which can
00:35:54.390 --> 00:36:09.550 gniembro: actually bar your own trademark to match you into our registration. So that would be an obstacle that we could prevent if we, if we have a global filing program as Selen and and you and you were mentioning before. And
00:36:09.650 --> 00:36:19.310 gniembro: if you are actually using the mark in Mexico, and and they should be very similar in Canada, and you, Don't, have a Canadian or a Mexican registration.
00:36:19.380 --> 00:36:32.660 gniembro: you will be subject to to infringement risks. If a third party has a registration for that particular mark, or for a very closely related or a similar one.
00:36:32.860 --> 00:36:34.820 gniembro: You can be.
00:36:35.320 --> 00:36:52.830 gniembro: you know, someone can file a a lawsuit against you because there could be trademark infringement. So if you actually do not rebel, I mean. And this is very legally you can actually being imposed fines and and and damages. So
00:36:52.830 --> 00:37:08.530 gniembro: this can really escalate very quickly. So the suggestion is to go ahead, and and once that you are planning on going to the market in Mexico, for instance, to make some clearance searches before actually using it in the country.
00:37:10.000 --> 00:37:20.020 Matthew D. Asbell, Esq: so is it. Is it the same in Canada, Selena, and and and what are the risks to the brand owner who doesn't have their registration, but is
00:37:20.430 --> 00:37:24.680 Matthew D. Asbell, Esq: that are that they are using the mark there, and maybe someone else has the rights.
00:37:26.390 --> 00:37:36.770 selenaaltropaperman: Yeah. In in Canada we just changed the laws just in 2,019, where you can actually obtain a registration without use.
00:37:37.540 --> 00:37:41.280 selenaaltropaperman: So you know, I,
00:37:41.570 --> 00:37:59.160 selenaaltropaperman: technically a person can file a trademark application. They see some. They have, see something in another country, file it here, and actually get it registered without even using it. So when the brand owner now originating, let's say, in another country, perhaps the Us. Comes in.
00:37:59.430 --> 00:38:07.950 selenaaltropaperman: They see that their mark has already been taken so that can become. They can challenge the the
00:38:07.950 --> 00:38:26.720 selenaaltropaperman: the owner of the rights, but it becomes a very costly, lengthy process. So, because of the the change in the laws where you don't need use. It's really important that if you're considering selling into Canada that the brand owner does file an application
00:38:26.720 --> 00:38:32.730 selenaaltropaperman: A. And you know, even if they see that later on they're only going to be using their mark. And
00:38:32.770 --> 00:38:39.870 selenaaltropaperman: 2 years, 3 years, 4 years. It's important to have that first to file in Canada.
00:38:40.190 --> 00:38:46.800 selenaaltropaperman: because otherwise there's ways around it, but it's just a very costly process to start to challenge them.
00:38:47.080 --> 00:39:05.680 selenaaltropaperman: You know it's as as Gloria said. Also, it's important to have a search done, at least at the beginning to make sure, because if you know someone has, it's a Us. Based company, and they they go for now we're gonna, and we'll have the same in Canada where I have a client that
00:39:05.680 --> 00:39:25.650 selenaaltropaperman: it's just starting in Canada, and we're not. We're not going to be selling to the Us for 2 years or Mexico for 2. It's important to look at it now that you don't encounter a huge problem there, because to start to rebrand after using your mark, putting in all that good will and advertisement into that mark.
00:39:25.650 --> 00:39:31.730 selenaaltropaperman: it could be extremely difficult, and something that's a brand owner would not like to have
00:39:32.040 --> 00:39:39.930 selenaaltropaperman: so. And the in Canada we have an additional problem where there's language laws in in the Province of Quebec.
00:39:40.070 --> 00:39:46.150 selenaaltropaperman: Sorry it always comes up. But
00:39:46.450 --> 00:40:02.330 selenaaltropaperman: so in we have a new bill. 96. That's in force. Where in 2,025 If a trademark is not registered, then you have to have a French equivalent to it, so that
00:40:02.330 --> 00:40:21.540 selenaaltropaperman: it's it's even more of a reason. If you're gonna be selling into Canada, including the Province of Quebec, which is, has a large pop population, that you really start the process for registration to to protect your mark and be able to use
00:40:21.540 --> 00:40:23.020 selenaaltropaperman: a
00:40:23.110 --> 00:40:25.790 selenaaltropaperman: the version that you want in English.
00:40:26.460 --> 00:40:42.530 Matthew D. Asbell, Esq: So let me ask a little bit more about that, and then and then take it back to Gloria. But but you know, I think you're referring to where the name that somebody wants to use for their product is something that can be translated so like they let's talk about where the rubber meets the road, and
00:40:42.560 --> 00:40:55.680 Matthew D. Asbell, Esq: that's going to be our trademark. The the rubber meets the road, because I just pick something off the you know, out of the blue. That's what occurred to me. But you know where the rubber meets road right. Those are English words that have that have particular meaning.
00:40:55.880 --> 00:41:04.220 Matthew D. Asbell, Esq: So did I understand you correctly that if I have a trademark registration for where the rubber meets the road, and that's my slogan Mark, or
00:41:04.250 --> 00:41:06.330 Matthew D. Asbell, Esq: let's say i'm rubber and road.
00:41:06.480 --> 00:41:14.090 Matthew D. Asbell, Esq: If I have that trademark registration, I don't need to have a I won't need to have a French translation of that
00:41:14.160 --> 00:41:26.120 selenaaltropaperman: if it, if it's registered already, but it has to be registered. It cannot be pending application, and then everything underneath it. Let's say you want to say it's a
00:41:26.180 --> 00:41:41.310 selenaaltropaperman: I don't know a tire repair shop. You're gonna have to. All those words on your signage will have to be in French so, but at least it's a it's avoiding a one of the elements that.
00:41:42.420 --> 00:41:45.940 selenaaltropaperman: as far as the trademark goes.
00:41:45.960 --> 00:41:58.960 selenaaltropaperman: so it is important. Yes, to register the trademark. However, in Canada. The pro the process for registration takes a long time now. There the Canadian sexual property office is very backed up
00:41:59.000 --> 00:42:03.450 selenaaltropaperman: so that we're gonna basically
00:42:03.640 --> 00:42:17.510 selenaaltropaperman: you should be filing as soon as possible. What's going to end up happening, though? All these trademarks are going to end up having to be translated at the end. If they're not by, you know. If they're not registered marks.
00:42:18.610 --> 00:42:23.340 Matthew D. Asbell, Esq: so should people be registering their marks in French. Also.
00:42:23.700 --> 00:42:31.400 selenaaltropaperman: if it okay, if very good point, Matthew. If a trademark is registered in French.
00:42:31.420 --> 00:42:37.160 selenaaltropaperman: let's say it's registered in French and or English, they will have to use the French version.
00:42:37.980 --> 00:42:44.400 Matthew D. Asbell, Esq: Oh. Okay. how does it work? The same? It at all in Mexico with with Spanish.
00:42:50.160 --> 00:42:59.760 gniembro: So when you file for for a 3 park in in Mexico, you need to state the transl iteration or the translation
00:42:59.870 --> 00:43:01.260 gniembro: of the
00:43:01.870 --> 00:43:05.230 gniembro: of the trademark to be applied for.
00:43:06.820 --> 00:43:20.150 gniembro: And actually you can encounter objections from the thread Mark office in Mexico. If there is an English translation for the same exact worth in in in connection with similar goods for services.
00:43:20.170 --> 00:43:27.930 gniembro: So, before obtaining a registration, there's a comparison between the Spanish word and the English words.
00:43:28.130 --> 00:43:39.960 gniembro: and and vice versa. So, yes, you could be actually at risk of not to thing, registration, or or of of infringing someone else's rights.
00:43:40.020 --> 00:43:42.640 gniembro: If you don't have.
00:43:43.020 --> 00:43:48.140 gniembro: if you don't have the the the other side of of the translation already protected.
00:43:48.630 --> 00:43:54.640 Matthew D. Asbell, Esq: So it sounds like you're not gonna make me translate my mark and use it in Spanish.
00:43:54.700 --> 00:44:01.980 Matthew D. Asbell, Esq: Which which sounds like what Selena said is going to be required in in in Quebec. So you got something to say, God.
00:44:02.110 --> 00:44:20.560 selenaaltropaperman: Yeah, no. I just was gonna say it's a little as far as i'm talking about more the usage of the mark; whereas if you file a trademark in Canada, that is, in another language other than French and English, the government will ask for the tre, the same as in Mexico, the the the
00:44:20.560 --> 00:44:33.480 selenaaltropaperman: you know, the translation or transl iteration of it; so that to in to ensure that it is not a you know, a descriptive mark, or infringing on other similar marks, because you can't.
00:44:33.580 --> 00:44:46.110 selenaaltropaperman: Well, you can't file a trademark. That is it translation of a of another mark that in order to get over some type of ejection, you know.
00:44:46.170 --> 00:44:50.260 selenaaltropaperman: For instance, if you wanted to say is squee for cookie as well.
00:44:50.370 --> 00:44:53.560 selenaaltropaperman: it's it means cookies, so you can't
00:44:53.890 --> 00:45:08.030 Matthew D. Asbell, Esq: for cookies you could for shoes, but not for cooking.
00:45:11.340 --> 00:45:35.430 Hey, Everybody it's Tommy Dean and non-profit sector connector coming at you from my attic each week here on top radio and Nyc, I hosted program for Lambda kin focus. Nonprofits impact us each and every day, and it's my focus to help them amplify their message and tell their story. Listen: Each week at 10 a. M. Eastern standing time right here on talk radio, dot Nyc.
00:45:36.280 --> 00:46:04.070 In that most of the world. You may have many unanswered questions regarding your health. Are you looking to live a healthier lifestyle? Do you have a desire to learn more about mental health, and enhance your quality of life? Or do you just want to participate in self-understanding and awareness? I'm. Frank R. Harrison host of Frank about health, and each Thursday I will tackle these questions and work to enlighten you. Tune in every 3 day 5 P. M. On talk radio. And Nyc and I will be frank about help to advocate for all of us.
00:46:07.590 --> 00:46:37.870 Are you a conscious co-creator Are you on a quest to raise your vibration and your consciousness. I'm. Sam Leibowitz, your conscious consultant. and on my show the conscious consultant hour awakening humanity. We will touch upon all these topics and more. Listen. Live at our new time on Thursdays at 12 noon, Eastern time. That's the conscious consultant hour awakening humanity. Thursday's 12 noon on Talk radio Nyc.
00:46:42.260 --> 00:46:52.190 You're listening to talk radio. firstname.lastname@example.org: now broadcasting 24 h a day
00:47:01.190 --> 00:47:02.020 the
00:47:05.640 --> 00:47:06.260 to
00:47:06.870 --> 00:47:08.020 www.TalkRadio.nyc: thank you.
00:47:08.210 --> 00:47:09.540 The
00:47:09.630 --> 00:47:17.430 Matthew D. Asbell, Esq: on the radio by Nyc. I'm. Your host, Matthew as well. My guests are Gloria and the embro
00:47:17.600 --> 00:47:20.370 Matthew D. Asbell, Esq: from Mexico and Canada resp.
00:47:21.010 --> 00:47:26.950 Matthew D. Asbell, Esq: So some of the things we were talking about earlier on in the podcasts were
00:47:26.960 --> 00:47:33.840 Matthew D. Asbell, Esq: about differences in our respective laws, and we talked a little bit about some language aspects few minutes ago.
00:47:34.400 --> 00:47:38.590 Matthew D. Asbell, Esq: But there's also differences in in, in how
00:47:38.670 --> 00:47:44.010 Matthew D. Asbell, Esq: it's practice, and how that impacts businesses. you know. That is.
00:47:44.290 --> 00:48:01.490 Matthew D. Asbell, Esq: for example, i'm a New York based business, you know, maybe not yet selling into Canada or Mexico. Maybe I'm selling on Amazon in the Us. I could just check that box and start selling into Canada. Start selling in the Mexico pretty easily.
00:48:01.530 --> 00:48:06.860 Matthew D. Asbell, Esq: But my rights, as you said, glory are territorial. I don't have
00:48:06.960 --> 00:48:11.320 Matthew D. Asbell, Esq: rights in Canada and Mexico, and I run some risks
00:48:11.380 --> 00:48:23.200 Matthew D. Asbell, Esq: that if I start selling in there there might be someone who could stop me, and I might be fined, or or something grab or be in a litigation where I have to pay
00:48:23.490 --> 00:48:26.000 Matthew D. Asbell, Esq: pay some damages over otherwise
00:48:26.240 --> 00:48:32.900 Matthew D. Asbell, Esq: that that's what I understood from from from from meet you in terms of some key differences
00:48:34.100 --> 00:48:38.380 Matthew D. Asbell, Esq: in our country. In the Us. People seek those rights
00:48:38.450 --> 00:48:46.020 Matthew D. Asbell, Esq: when they plan to use a trademark, or when they already have the trademark in use. and, as I understand. In your countries.
00:48:46.640 --> 00:48:58.060 Matthew D. Asbell, Esq: They don't need to have use to get that registration. They just apply, and so they want to run to the register, run to the trademark office, get it on file, get it reserved.
00:48:58.210 --> 00:49:07.010 Matthew D. Asbell, Esq: and then it's on the back end that they have to worry about making sure they ultimately use it is that is that a fair character characterization for Canada?
00:49:07.270 --> 00:49:14.980 selenaaltropaperman: Yes, that is the way it is. You don't have to have use in the past. You did you had to say when you started to use it?
00:49:15.020 --> 00:49:21.670 selenaaltropaperman: Like I said, since 2 2,019 they've changed the law, and they're
00:49:21.710 --> 00:49:35.690 selenaaltropaperman: is no requirement for use. However, there's that saying, Use it or lose it, because eventually, if you don't use your trademark, someone could challenge it.
00:49:35.730 --> 00:49:55.380 selenaaltropaperman: Basically 3 years after the registration of the trademark. Any any third party, anyone who wants to challenge your trad trademark registration can, and you would have to prove that you've been using your trademark for the past 3 years.
00:49:56.090 --> 00:50:08.920 selenaaltropaperman: So basically, you know, that's why, as soon as you can, we recommend obviously to to use your trademark in in in Canada. If it is registered.
00:50:10.640 --> 00:50:23.830 selenaaltropaperman: you know it's it. That process is very good for what? Getting rid of what they call dead wood, so that you have these registrations that were, you know, done like 10 years ago, and the the
00:50:24.280 --> 00:50:44.210 selenaaltropaperman: the owner is not using the trademark anymore, so that you could always institute these type of cancellation proceedings and and challenge the owner to show that they've been using the mark, and if they Haven't been using the mark that trademark will be taken off the register, and then it's free for you to use. So that's why it's really important
00:50:44.210 --> 00:51:01.200 selenaaltropaperman: for the brand owner to continue to use it, and also to ensure that if they've licensed it out that they're they have proper like that they're following up on their license. See that they have certain
00:51:01.200 --> 00:51:12.710 selenaaltropaperman: checks and balances, so that they could, if their the use is ever challenged. They could say no. We've been, you know, watching over our license. See, we have some control over it.
00:51:12.720 --> 00:51:19.630 selenaaltropaperman: and then it would be considered valid you. So there's a lot of aspects that are very important with respect to use.
00:51:20.540 --> 00:51:34.080 Matthew D. Asbell, Esq: So the license licensing aspect may be a little bit complicated to cover, and in a few minutes that we have yeah, well where you're allowing someone else to you to use your mark, and and that is to your benefit.
00:51:46.720 --> 00:52:00.630 gniembro: So we, if you have registration, and you don't, you don't use it yet, because you still have 3 years to begin. Use and file a declaration of use with the trademark office, you can actually file an enrichment action
00:52:00.940 --> 00:52:11.470 gniembro: against a third party using a similar or or the same mark. and funny though they cannot, that third party, being a defendant.
00:52:12.140 --> 00:52:28.670 gniembro: cannot counter to you for no use, because you are still in that frame time. You still have 3 years to to think about to use it. So probably the the registrant that is not a user will prevail.
00:52:29.060 --> 00:52:42.140 gniembro: Of course you have it's similar in Canada, and this is that after those 3 years you are subject to non-use cancellation actions by through parties, and and and that's a risk that you
00:52:42.270 --> 00:52:47.280 gniembro: you don't need to take you. You should. We can use beforehand.
00:52:47.460 --> 00:52:58.950 gniembro: and there is actually something in Mexico that I don't what I I know that in in the Us. Doesn't work that way. I don't know in Canada if you have no registration in Mexico.
00:52:59.010 --> 00:53:02.770 gniembro: but you have prior use in the Us. Or in Canada.
00:53:02.990 --> 00:53:11.090 gniembro: You can file a cancellation action against the Freeman registration in Mexico, and you have 5 years to do that
00:53:11.310 --> 00:53:14.860 gniembro: after that, through party registration was fronted.
00:53:15.170 --> 00:53:30.610 gniembro: This is a very particular cancellation action that is allowed in Mexico. It was very discussed. When the the last amendments came in, it was discuss whether to to remove it or keep it, and at the end it was.
00:53:30.650 --> 00:53:43.070 gniembro: Get so. That's an interesting, a legal action that the the small, the medium companies have in Mexico. They they have used overseas, they can a a challenge registration in Mexico.
00:53:46.740 --> 00:53:58.700 selenaaltropaperman: It is something something similar in Canada you could show if someone else registered.
00:53:58.890 --> 00:54:08.760 selenaaltropaperman: you know trademark, and you could show. Let's say you're a Us. A company or a Mexican company, and show that through perhaps
00:54:08.760 --> 00:54:24.070 selenaaltropaperman: advertisements or some type of other us, it's become known. It was known in Canada at that time. Prior to them, file the third party filing the the application. Then you could fight them on on that basis.
00:54:25.890 --> 00:54:35.710 Matthew D. Asbell, Esq: So shifting gears for the last few minutes. We have. You know there's a lot of fear in the United States because there's a lot of litigation, right? We have
00:54:35.800 --> 00:54:50.190 Matthew D. Asbell, Esq: a lot of litigation and litigation in the United States tends to be extremely costly lawyers charging hourly for their time, lots of back and forth with the courts and the judges, and the and the part between the parties with discovery.
00:54:50.420 --> 00:55:09.000 Matthew D. Asbell, Esq: you know, and nobody really wants to think about litigation. So it's probably not the best thing to end on. But at the same time, I, wanna you know, help people understand. What are they getting into? If they want to try to enforce their rights against somebody in Canada, or if they want to enforce their rights, it's somebody in Mexico.
00:55:09.450 --> 00:55:12.700 Matthew D. Asbell, Esq: Selena. Can you share a little bit about what that experience is like?
00:55:13.000 --> 00:55:19.860 selenaaltropaperman: Sure, First of all, it's definitely less costly in Canada than the Us.
00:55:19.930 --> 00:55:26.560 selenaaltropaperman: You know the whole process is is less cost less costly, and
00:55:26.690 --> 00:55:45.060 selenaaltropaperman: you know we try and look at different methods. Perhaps you know we start off with a you know season Desist letter, and from there we can tend to try, and we can try and negotiate with the other side, because, you know, basically
00:55:45.360 --> 00:55:51.480 selenaaltropaperman: neither party wants to go through the through the full route of litigation because it does end up
00:55:51.700 --> 00:56:07.420 selenaaltropaperman: could end up being costly with examinations and things like that. So in Canada we definitely have less litigation than you, you see in the Us. And I would say. Probably the majority of cases are settled
00:56:07.760 --> 00:56:26.050 selenaaltropaperman: free litigation. We do have various routes in the trademark process where you can oppose someone's application, and it's it's not as a costly process. It's not like a full blown litigation, and you can
00:56:26.260 --> 00:56:44.930 selenaaltropaperman: actually be able to obtain the rights that you want to. You won't be awarded damages, but you'll be at least have it. The infringing trademark taken canceled. Basically so those are. There's there's a lot of options before you have to go through the route of of a full blown litigation.
00:56:45.000 --> 00:56:51.000 selenaaltropaperman: and you know we try and look at the those different methods.
00:56:52.830 --> 00:56:55.490 selenaaltropaperman: you know. So I, I would say that
00:56:56.100 --> 00:57:01.710 selenaaltropaperman: before you want to go we we would look at all the various options from.
00:57:01.830 --> 00:57:07.160 selenaaltropaperman: you know discussions to a full blown litigation.
00:57:07.970 --> 00:57:20.550 Matthew D. Asbell, Esq: Thanks, Lena. We we've got a minute or 2 more, Gloria. Can you briefly share with us your view of how litigation works in Mexico for the Us. Clients
00:57:22.220 --> 00:57:29.540 gniembro: sure. So one of the pathways that we always recommend when we see it's gonna.
00:57:29.620 --> 00:57:47.520 gniembro: and the E in anonymical in an amicable settlement is to send the system to this letter, similar to what's Lena just presented when we are talking about infringers like professionally printers or bad faith of
00:57:47.740 --> 00:57:49.410 gniembro: filing applicants.
00:57:49.650 --> 00:58:02.260 gniembro: We would not suggest that so so just that approach we will definitely what we would do is to as an auto-public in Mexico to
00:58:02.500 --> 00:58:13.570 gniembro: to authentic, or to make a certification about the infringing content on the website, for instance, or or go to the premises that are infringing. So we have that
00:58:13.780 --> 00:58:16.320 gniembro: evidence in a hand for the litigation.
00:58:16.430 --> 00:58:32.270 gniembro: So we have in fragment action. It's actually a very used in Mexico, also the trademark office who deals with these actions in the first stage. They have a good and and very high workload.
00:58:32.270 --> 00:58:43.730 gniembro: So it's gonna take a lot of time if we are. If we bear in mind that after the office issues that decision. Then we have the judiciary, and then we have the
00:58:43.730 --> 00:59:01.270 gniembro: the Court of Appeals also starting the the matter. So it's gonna take at least 4 or 5 years, even more, to to have a final inconclusive decision. So I think that something very important, and with this I close, is to 5 injunctions
00:59:01.270 --> 00:59:07.780 gniembro: at the same time that we are filing fridge connections, so we can cease the infringing merchandise.
00:59:08.760 --> 00:59:23.850 Matthew D. Asbell, Esq: Thanks very much. My guests have been Selena Altro and Gloria and the embro. We, If you have a 5 s message each of you'd like to share, and then we'll we'll say goodbye, Selena. Any any, any any final message.
00:59:24.190 --> 00:59:26.580 selenaaltropaperman: Yeah, I'd like to just say that
00:59:26.940 --> 00:59:43.860 selenaaltropaperman: to advice clients to be proactive, to think a little bit long term and to consider that it's not just their country that they're going to be eventually selling into into other countries, and to to inquire
00:59:43.860 --> 00:59:53.890 selenaaltropaperman: and to work with attorneys like us, who have great relationships with one another and and work well, and can give them a global
00:59:54.030 --> 00:59:54.820 selenaaltropaperman: production.
00:59:55.100 --> 00:59:56.500 Matthew D. Asbell, Esq: Thanks so much, Gloria.
00:59:56.930 --> 01:00:03.950 gniembro: I would say. Seek out for advice. Think of your advisors as allies, rather than
01:00:03.960 --> 01:00:16.330 gniembro: enemies, and very complex attorneys. We we should be understanding the the business that we are in it. So I think that we are in the same in the same way. In this impact.
01:00:16.940 --> 01:00:27.620 Matthew D. Asbell, Esq: Thanks so much to both of my guests. You've been listening to in tang if I on talk radio dot nyc tune in next week at 12 Pm. On Friday for our next episode.
01:00:27.650 --> 01:00:28.750 Matthew D. Asbell, Esq: Thanks so much.