Episode Transcript
Speaker 0 00:00:00 Welcome to the U S law essentials law and language podcast, the legal English podcast for non-native English speakers. That helps you improve your English, listening, improve your legal English vocabulary and build your knowledge of American before the honorable the Supreme court.
Speaker 1 00:00:27 Welcome to U S law essentials law in language podcast. I'm your host. Steven Horowitz today's episode is part of our series of interviews with multi-lingual lawyers. Today's guest is Scott. Alperin a trademark lawyer in Washington, DC. Uh, he's a graduate of Colby college, uh, go mules, which I believe is the mascot. Is that right? Scott
Speaker 2 00:00:52 That's right. And
Speaker 1 00:00:54 A graduate of Washington law school,
Speaker 2 00:00:59 Washington college of law at American university. Okay. Scott
Speaker 1 00:01:03 Is also a graduate of the Washington college of law at American university. Um, and so welcome Scott.
Speaker 2 00:01:12 Well, it's great to be here. It's an honor.
Speaker 1 00:01:18 I said that, uh, well actually, you know what, before we get to the interview, I always, I always start off, uh, each episode with a, with a dad joke. Are you, are you also a dad?
Speaker 2 00:01:28 I am also a dad of three kids.
Speaker 1 00:01:32 And do you ever tell dad jokes?
Speaker 2 00:01:35 I've been known to tell a few dad jokes? Yes.
Speaker 1 00:01:39 Okay. So let's see. Tell me if you know it don't tell me the answer cause we'll, we'll save that for the end, but if you know this joke, let me know. Okay. Here's the joke, which days of the week are the strongest days?
Speaker 2 00:01:53 No, I don't know it. Okay.
Speaker 1 00:01:56 Well, we'll come back to that at the end. Okay. And now onto the interview. So Scott, um, have you ever lived in another country?
Speaker 2 00:02:05 Yes, I have. Uh, I've, I've lived in Japan, I guess, for a total of four years in all.
Speaker 1 00:02:14 Um, when was your first time in Japan?
Speaker 2 00:02:18 Well, in 1990, uh, I was an exchange student at, um, a school called, uh, showing Joshi digoxin, uh, showing women's college.
Speaker 1 00:02:34 And yet you're not, you're not a woman yourself, right? No,
Speaker 2 00:02:37 No, I'm not. No, but, uh, their, uh, exchange program was a co-ed and, uh, so, um, students from my college and some other colleges, uh, were able to, uh, uh, go to school there for a semester and it was, it was really, yeah. What part of Japan was it? That was in Kobe, Japan. And that was you, you may know, there was a big earthquake in Kobe, um, in 1995, I think. But, uh, I was there before that in 1990.
Speaker 1 00:03:18 And then I know you lived in Japan for three years because you and I were in the same town together on the jet program, is that correct? Yeah.
Speaker 2 00:03:27 Yeah, that, that is totally correct. And, uh, uh, it was one of the best parts of being there was getting to know you. Yeah.
Speaker 1 00:03:35 And I guess I would have to say the same. You'd have to, so, so if I ask you the question, uh, do you speak any other languages?
Speaker 2 00:03:45 Yeah, then I would say I, I speak, uh, Japanese haltingly or I could say, uh, I speak broken Japanese. Uh,
Speaker 1 00:03:56 Do you speak any other languages in addition to Japanese?
Speaker 2 00:03:59 Well, I took, uh, three years of French in high school. Um, but I would not consider myself a French speaker that's for sure.
Speaker 1 00:04:09 And, um, do you, do you use your, your Japanese and your work at all?
Speaker 2 00:04:14 Yeah. Uh, many of our clients at my, uh, firm are, uh, from Japanese law firms, or I, I guess you could say the clients are the Japanese law firms and those law firms have clients themselves. And so I work on behalf of the Japanese law firms, clients, if that makes sense.
Speaker 1 00:04:40 Um, oh, you know what, I didn't say the name of your law firm what's is it that the Alperin law firm offices, Auburn law office. So in talking about your work, Scott, um, how, how do you explain what you do to say your parents or your children?
Speaker 2 00:04:58 Well, um, I guess you could say that I I'll point to a, uh, a Coke bottle or, uh, or, um, some product and I'll point at the R in the circle, which is, um, the federal trademark registration in the United States. And aren't in a circle and I'll say, that's what I do. I know a lot about that are in the circle and how companies can, uh, get the right to use that are in the circle next to their trademarks.
Speaker 1 00:05:36 And then what are your, what are your children say to that?
Speaker 2 00:05:39 They say, oh, well, um, what is the R in the circle stand for? And then I say, well, children, it stands for registered. And it means that the company has a registered trademark to obtain that a trademark registration, a company, or a person has to file a trademark application and, uh, foreign companies and foreign applicants need a U S attorney to represent them before the United States patent and trademark office, the U S PTO.
Speaker 1 00:06:19 And, um, I think if I remember correctly, your dad used to be a judge.
Speaker 2 00:06:25 That's right. He's retired now, but he used to be a judge.
Speaker 1 00:06:29 And so he, he's more familiar with the law. So how do you, how do you explain your work to your dad?
Speaker 2 00:06:35 Well, my dad, I'll say, dad, can you help me with this trademark case? And he'll say objection.
Speaker 1 00:06:47 Uh, but how would we describe, how do you describe your, how do you describe your, your law practice to your, to your dad or your mom when they ask?
Speaker 2 00:06:59 Well, I would say that, um, I help small companies or individuals to get the right to, um, to, to basically to feel confident that they have the right to use a trademark. And, um, a lot of smaller companies or individuals are concerned that if they invest a lot in a trademark, they will, a few years later they'll be contacted, uh, usually by, uh, uh, in a cease and desist letter by a bigger company that will this letter a cease and desist letter. Yeah. Which does what well, so the big company will often tell a smaller company or an individual to stop using their mark. In other words, to cease and desist to it's sort of a repetitive to say C cause to seize means to stop and to desist also means to stop, but it's
Speaker 1 00:08:04 Big. Yeah. In the law, there's a lot of, a lot of phrases like that, where there's the same word twice with two different meanings. And my, my understanding is that a lot of those come from using, uh, an English, an English based word and a Latin-based word. Did you know that?
Speaker 2 00:08:20 No, I didn't know that that's your answer. So yeah, go ahead. Is cease or desist? The Latin-based okay. I
Speaker 1 00:08:29 Would think desist is definitely Latin-based Cece, I think might not be, but it also sounds a little bit Latin-based so I'm not sure it might be one of those examples, but at night might not be, but, but in, in England they used to use French and English in the legal system. And so they would use one of each and that's why we have these apparently. That's why we have a lot of these redundant phrases, like cease and desist means stop, stop, and stop.
Speaker 2 00:08:57 Yeah. So, um, sometimes I send cease and desist letters, but mostly because my, uh, law firm is so small, mostly we receive cease and desist letters. Um, so for example, um, we received one from Nike. Um, not as you know, you may know that Nike has a, uh, famous slogan, just do it. Well, uh, my client, uh, used a trademark called, uh, just to say it
Speaker 1 00:09:35 Nike wasn't too happy about that. And what was the, can I ask what the, what the business area or the field of business was? Uh, it
Speaker 2 00:09:43 Was, uh, self-improvement and, you know, um, motivation services to help people improve their lives. Okay.
Speaker 1 00:09:54 Does it matter in trademark law, if you're in a completely different line of business,
Speaker 2 00:09:58 It does matter. But Nike said that their mark was so famous, that it didn't matter. Do you want to know who won the case? I do Nike. Yeah. Yeah.
Speaker 1 00:10:13 But what, what argument? So they made the argument that it, that their mark is so famous that nobody else is allowed to use anything.
Speaker 2 00:10:21 That's what they said and blank.
Speaker 1 00:10:25 It, nobody else can
Speaker 2 00:10:26 Use that. Yes. Be beware. If you use just blanket, it's likely you will get a blanket cease and desist letter. Got
Speaker 1 00:10:37 It. Excellent. Excellent word, play there. Sorry. You are good with the dad jokes then th that's, uh,
Speaker 2 00:10:46 It all comes down to of why I became a dad, just so I would have the right to use dad jokes.
Speaker 1 00:10:53 Let's see. What's a typical day of work like for
Speaker 2 00:10:57 You. Well, um, so Alperin law offices has, uh, three attorneys, including myself and, uh, uh, two to three staff members at a particular time. So I will wake up in the morning and, um, come to my computer and see what work has come in. And then I will distribute it to my attorneys or I'll take it myself or I'll, uh, ask one of the staff members to, um, to, uh, do one of their jobs and related to something that's come in to my inbox. So the, the, my work really focuses on my inbox and my computer. And, um, ever since the pandemic, we don't even have, uh, a brick and mortar office to go to.
Speaker 1 00:11:54 And when you say the work comes in overnight, is that because there's a lot of it come from, from, uh, clients in other countries? That's
Speaker 2 00:12:01 Right. Almost all of the, uh, the emails coming in and the work coming in are coming from Japan or from Europe. So both, uh, Japan and Europe are ahead of us. And so, uh, work, uh, you know, emails will come in and be waiting for me when I wake up in the morning. Uh huh.
Speaker 1 00:12:23 And what, uh, what are those emails? What's, what's the kind of thing that those emails are saying? Are they saying we have a problem or are they asking questions?
Speaker 2 00:12:30 Uh, often they are saying, uh, we filed a trademark application with the U S PTO, uh, directly through the international trademark filing system. And our, uh, our application was refused. So we need a us attorney to handle responding to the office action. I'm sorry, when I say office action, that's like a refusal letter. And so, uh, a lot of what I do is help, uh, Japanese law firms or European law firms respond to refusal letters, which are called office actions, or they might say we have a new trademark or our client has a new trademark and we would like you to help us file that trademark, uh, application with the U S PTO. Ah, okay.
Speaker 1 00:13:20 So there's a lot of companies or clients out there who, when they, when they want to, when they have a business or they want to create a new trademark, they, they might be fine in their own country, but they recognize as their business grows, that they need to also think about the U S market and trademark there, but they don't necessarily know anybody. Uh, they don't have a lawyer or resources in the U S and so that's when they find you,
Speaker 2 00:13:45 I guess that's right. And, um, a lot of my clients, because they're law firms, they have many cases, uh, that they're sending to the U S so often I have a history with them.
Speaker 1 00:13:58 Ah, okay. So these are it. They're not coming directly from the companies they're coming through the law firms and the law firms are familiar with you and
Speaker 2 00:14:07 Yeah. Okay. Yeah. And I just, uh, the other day I got a, um, an email from a Swedish law firm saying that their client, their accompany, a clothing company received a cease and desist letter and they wanted my advice on how to respond to it. Um,
Speaker 1 00:14:26 Okay. Scott, so, and what are some of the ways that you evaluate trademarks?
Speaker 2 00:14:30 Well, that is a very good question. Um, I, it trademarks, um, can be considered weak or strong, um, based on their relationship to the goods and services of the, uh, trademark owner. So for example, are you familiar with the trademark American airlines?
Speaker 1 00:14:56 The, the double a sort of overlap?
Speaker 2 00:14:58 No, I just, just the term, this, the word American airlines. Oh yeah, sure. Well, so w when, when that trademark was first created, it was a very weak trademark. And the reason why is because it just described what the services were, the, the services are the airline services of an American company, and the trademark was American airlines. So actually, if they filed a trademark application for American airlines, it would probably be refused as being too weak and descriptive. However, the, uh, over, over time a trademark can, um, we say acquire distinctiveness. So a trademark that is very distinctive is very strong, right from the beginning. So you've, have you heard of, uh, the, the trademark Kodak you've heard of Kodak? Yeah. Kodak doesn't mean anything. It's not related to the services or the goods. So that was a very, that was an inherently registrable, uh, trademark from the very beginning, but American airlines, they had to earn their, um, strong trademark rights. And, and the way they did that was they spent millions of dollars on advertising and they use their mark for a long time. And at some point their trademark became distinctive.
Speaker 2 00:16:34 The weakest trademarks are generic. The second week is started descriptive, the third weakest or getting into being stronger are suggestive marks. Like for example, you know, I feel familiar with Don, um, uh, Han, uh, dish dish. So Don, I was just thinking of this yesterday, Dawn, it gives you the sense that it's going to be, that your dishes are going to be bright and light. Right. Dawn Don is the early morning time. Don is the early morning time, but Don doesn't describe dishwashing. So, so it's suggestive, but it's not descriptive. So you could register that, uh, right away. And then the, the most, the strongest trademarks are, um, arbitrary. We say arbitrary and fanciful. So for example, Kodak and Google. Yeah. Google is, um, arbitrary because I think Google is a real word. It's one it's I think one by a hundred zeroes. Yeah. So, but, so it's a real word, but it's used arbitrarily to describe T two as a trademark for the company. So it's very strong. It would be great. Oh.
Speaker 1 00:18:04 Or, or names like, um, uh, when the, uh, Phillip Morris tobacco company decided to rebrand itself, it called itself
Speaker 2 00:18:13 Altria. Yes. Right. Or, um,
Speaker 1 00:18:18 Uh, a T and T or no bell, bell, New York, the phone company called now calls itself, Verizon, which is a made up word.
Speaker 2 00:18:26 Right. These are, and apparently SunTrust bank is, um, turning to truest.
Speaker 1 00:18:33 Oh, yes, yes. I've heard that one. Now what about a name like Toyota, which is, uh, has no meaning in America other than with the car, but in Japan, Toyota is a common, last name. And it literally means what bountiful field, if you translate the, the Chinese characters,
Speaker 2 00:18:52 If it does. Uh, yeah. In that case, the examiner at the U S PTO would invoke the, uh, doctrine of foreign equivalents.
Speaker 1 00:19:05 Uh, so if it has meaning in Japan, we're going to presume it has meaning we're going to, to, to imbue it with meaning in the us.
Speaker 2 00:19:15 That is exactly right. And I should mention that, uh, that surnames are, are, are considered descriptive for the first five years of use. So after, after five years, uh, you can register a surname. Um, but, and by surname, you mean a family name?
Speaker 1 00:19:43 We call it a last name, but, but a family name
Speaker 2 00:19:46 Printed up Horowitz. Okay. That's right. That's right. Uh, so, so the Alvin
Speaker 1 00:19:51 Law officers, can you trademark the Alperin law offices? Well,
Speaker 2 00:19:55 We, we could, because I've, uh, been in business for over five years. Yes.
Speaker 1 00:20:02 So how did you, how did you end up doing trademark law? Did you, I mean, I would think as a child, I mean, you probably didn't think I'm going to grow up and be a trademark lawyer, although maybe your children grow we'll grow up thinking they want to be trademark lawyers, but how did you end up working in trademark
Speaker 2 00:20:17 Law? Well, um, in my case, uh, I always was sort of thinking I would go into law in general because, um, my dad was a lawyer and then a judge. Um, however, I didn't know what kind of law I wanted to practice, but then I, uh, I went to Japan, um, in 1990, uh, on an exchange program. And then from 1992 to 1990, and it prefecture with you, Steve. And, uh, I really came to love Japanese culture and the Jew and learning the Japanese language. And so when, when I went back to America and started going to law school, um, I still, I didn't have my eye on trademark law at all. But then one day in the lounge at the law school, I saw a sign in Japanese, on a bulletin board that said, you know, CA uh, look, you know, basically help wanted looking for a paralegal, but it was in Japanese. And, uh, but I could read it. And so I called them up and I, I said, Hey, I'm available. And, um, I talked to the, uh, partner at the firm and he said, oh, I'm sorry. We don't really have a position for you right now. And I said, well, you know, I'll work for free. And he said, okay, why don't you come on down and we'll have an interview.
Speaker 1 00:21:47 Huh. So you made your own opportunities.
Speaker 2 00:21:51 Yeah. Yeah. I mean, sometimes I think you do have to be, uh, especially when you're a student to, to work, uh, for free just to get experience and the rest is history
Speaker 1 00:22:03 And you also, you didn't take no for an answer. It sounds like.
Speaker 2 00:22:06 No. And I remember, um, in the interview, when I went down to the law firm, they, uh, you know, we were talking about intellectual property and I said, I actually asked them. I said, so actually, so what is the difference between a patent and a trademark
Speaker 1 00:22:28 Now? I think, I know, hopefully you do do what, what would you do if one of your, if you were going to hire a lawyer and they asked you that question?
Speaker 2 00:22:39 Well, I would, uh, empathize with them and I, I think I would answer, but, you know, if I was hiring them, uh, for their experience in trademark law, then I would have to not hire them. But if I knew they were just starting out on a, at an entry level position, then yes, I would explain it and I would be glad that they asked. Okay.
Speaker 1 00:23:07 Um, and, um, sort of a final question. Um, do you have any advice that you like to give young lawyers or people in general perhaps, or anybody sort of starting their own law firm or their own business?
Speaker 2 00:23:23 Well, I just think that my advice is that, um, having a law license is a really great thing for your career. Um, in my situation, I was working at law firms for, uh, for about five before I started my own firm. But as, as can happen, um, in, in anyone's profession, you can get things don't always work out with the company that you're at, that you're working at. And I feel that a law license gave me the ability to, you know, after I had gotten a little experience working in, in law firms to start my own firm, if, if, uh, I needed to, and I did, I did need to in 2005, and I never expected to have, uh, a law firm that continued for 16 years where we are now, but, but, uh, somehow it's it's happened. So.
Speaker 1 00:24:31 Okay. Well, Scott, thank you so much for being here. It's been really wonderful to have you, uh, as a guest to did, to hear all of your experiences, um, before we go, let's go back to the dad joke of the episode, but do you remember the question?
Speaker 2 00:24:48 Uh, what days are the strongest days? Yeah. What days of
Speaker 1 00:24:54 The week are the strongest days, which is, which is interesting. Cause we were talking about strong and weak trademarks. So this was unplanned, but it just sort of worked out like this. So the answer is what's, which of the days of the week are the strongest days, Saturday and Sunday, because Monday through Friday are the week days, E a K rather than w E K. So just a simple play on words. That is
Speaker 2 00:25:20 A good one. Definitely share that with my family tonight at the dinner table.
Speaker 1 00:25:26 Okay. Okay. Well, you'll have to, you'll have to let me know how that goes over.
Speaker 2 00:25:30 Well, okay. Thanks a lot, Scott. Thank you.
