Hi, everybody thank you for joining us today. My name is David Mitnick. I’m the CEO of DomainSkate. We are a brand Security company located in New York City.

And we’re excited today to introduce our topic, which is elevating trademark practice, creating monthly recurring income and revenue with advanced protection services. And for this discussion we have

David Boag, of Boag Law. Joining us today. Thanks for joining us, David

and david and I have known each other for quite some time. We actually practice law for many years together here in New York City. So David has quite a bit of expertise in intellectual property trademark practice, which we’ll talk about a little bit and really, really glad to have him here today to talk with us about this topic. So as a quick note, we’re going to be

our agenda today, we’re going to do a quick overview of David’s practice. We’re going to talk a little bit about DomainSkate and some of the technology that we use for brand security and brand protection for our clients.

And then we’re going to jump into the changing landscape of legal work. Some of the things that are happening as far as the commoditization impact of

filing sites like rocket lawyer, legal zoom and also the impact of AI, and how that’s changing things as far as how attorneys work.

educating clients on brand and cybersecurity, and why this is important and how it can be a value added to your practice.

We’re going to talk about David’s approach to that some best practices case studies, and then we’ll jump into some questions and answers.

So first thing is first David. Why don’t you just tell us a little bit about your law practice and and what what you work on.

Sure.

So instead of diving into the traditional law firm, you know, chunk of text, I made a nice 5 easily digestible nuggets that tell you the whole story. So we started the firm, like David said, we’ve known each other by the way, for 23 years, by my account, and we started as first year associates together in our firm. We were there for quite a while. I started my practice on my own in 2013 in a WeWork space somewhat inspired by DomainSkate.

New digs, we handle pretty much everything related to patent and trademark law. We do applications, enforcements, a little bit of litigation, opinions, studies, kind of anything that touches IP is within our portfolio in terms of subject matter, experience.

Kind of all over the place as are lots of

IP firms. My personal background is in computer science. I was a programmer. I have a degree in that.

But we work with Crypto, SMS and Boulevard make lots of fashion. Comes up a lot with mochi ice cream social media. Trapeze school is one of my newest to have. We’re Nyc based. We’ve been here. We’ve got we’re a diverse kind of remote spread out team. The the home base is here. We work with clients everywhere. We don’t. We’re not bound by state to geography or anything like that. And we’re what we call a law firm. 3. Which is kind of streamlined, very systems based mostly flat fee.

Like, I said, distributed to really leverage

cost and and keep expenses down. If anyone’s ever read the book Traction, this is like bread and butter from from what they do.

alright, very cool, super interesting. And I. And I think that the the way you mentioned about systems is really, you know, kind of where we’re going to be focusing on today both the stuff that you use to make your firm more efficient and also stuff that you use to build your practice. So. I’m glad you noted that.

Quick overview DomainSkate.

we are a brand and security company. We have a huge database, hundreds of millions of domains that we watch for clients.

Our mission is to find the problems, put them into an easy

a place where clients can watch them and see if they are a problem and make an assessment. And then, if it is a problem, then shut them down.

And for this we work with a lot of brand security teams. We’ve worked with legal teams. And

you know, it’s it’s we’re we’re really focused on finding the problems and just making sure that they don’t harm good brands

The thing that’s inspired us is, is really just, you know, adding a new way to protecting companies and trademarks. And so you know, for our the way that we look at it is, you know, scammers are advancing. They’re growing very, very fast, and

technology is moving very quickly. So we are moving at pace to try and help companies and legal teams and brand teams to manage that risk and to help even the playing field.

So

jumping into that and

that commoditization piece in terms of the new landscape. This is a

this is a quote. There was an article in the New York Times, April tenth, 2023, about how AI is coming for lawyers again.

and so II wanted to ask you about this, David. I wanted to see first, sort of putting a side for a second. Have you seen this kind of commoditization and impact on a legal marketplace from filing companies legal Zoom’s rocket lawyers, etc.

Well, I mean, we’ve seen legal zoom and rocket lawyer and trademarkia for years. That’s not even AI based. II personally find that to be, you know, buyer, beware.

low quality. Kind of get what you pay for type of work, having picked up

where legal zoom left off a number of times for clients, but in terms of AI generally, what that means for us in the way that we do things. It’s certainly led to

a way of.

It’s enhanced our practice definitely like, I’m keenly aware that we need to leverage this in order to keep up because people will, other firms will definitely do that. We need to keep up with that. But I know that it’s also incredibly beneficial for us right now to use it, for trademark searches trademark, watches a little bit of patent claim, drafting even everything, overseeing ultimately by human attorneys, but it it helps us get things started left and right.

But you know, in terms of commoditization.

when you do transactional work, whether it’s estate planning or it’s a trademark application. It is a commodity, to a certain extent, you know, the final deliverable is, you know, it’s very clear what what’s been delivered where the outcome of a lawsuit might be a little murkier. This is. This is very clear. It doesn’t mean, though, that it’s fungible.

You know what one firm does, something might be better, different, worse than a different firm. So we don’t like to think of it as a commodity between. You know.

you could go here and get the same thing that you could get here. But we do internally. We think about it as a commodity to a certain extent. That’s what I said about systems is.

things are repeatable, steps are repeatable. You do the same thing. There’s the same 15 steps for a trademark application. When the client comes in the door. That’s generally the same. So internally, it’s a bit of a commodity at times, and it’s helpful, we think, to look at that way. And AI enhances that definitely.

You mentioned something earlier about taking over like applications or issues after clients have gone to some of these sites. Can you talk a little bit about that and some of the things that you’ve seen.

Yeah, I mean

legal zoom.

you know, it’s kind of like Fiverr or Angie’s list or something where they’ll put you in connection with someone, and there’s a certain deliverable, and there needs to be enough.

you know, enough margin for the house to make their cut, and what you tend to get oftentimes is

not particularly good work product, I think, for some very simple types of inventions. It can. It could work out well on the trademark side with, you know, kind of self. Serve trademark mills. I’ve seen clients make some some pretty good mistakes where you know

they file an application. The goods and services description is all wrong, and there’s really nothing that you can do about this other than file it, file it fresh.

and people that. But it’s not just. You know, us being protectionist. If legal zoom was a great resource, we would figure out a way to leverage it into our practice. But it it just doesn’t work

for for what we do. So we I’ve seen that

more than a handful of times where we’ve picked up an application after legal zoom did the initial work, and it just wasn’t.

It wasn’t where it needed to be for what? For what the client needed cause. It’s not always a one. Size fits all approach.

So it sounds like for your practice the the sort of the filing sites and things like that have not been a. you know, have not been something that is.

not that it’s not competition, but it’s not. It’s not replacing an attorney that is making judgment calls in the best way to position a trademark, let’s say, in this example, for success in the future. And similarly, it sounds like you’re leveraging AI and some of these new technologies in order to enhance your practice.

Yeah, I mean, I think that

there’s always going to be. And I say all this now, but there’s always going to be a human element is whatever the tools are behind the scenes like. I think we use a pretty cutting edge suite of tools to move things forward efficiently.

Probably lots of firms to, but there’s probably a lot to that kind of stuck in a in a different mindset. So we use them to make the whole process more efficient. But there is always there’s always attorney intervention, cause you, you’re dealing with humans on the other end. And we need to figure out, we talk to different clients differently. We explain things at a different level to different clients, because some are more experience and some have more interest.

So there’s definitely a component to this. And it’s all a loop like the quality of the work also depends on the relationship with the client and the discussions you’re having with them, and the information you’re getting from them, because you have to make sure that you’re asking all the right questions.

Yeah, yeah, really interesting. Alright, let’s

whoops

trying to get to the next. There we go.

Let’s make sure I’m there. Okay? Great So technology, not just a AI changing the landscape for client requirements and attorney role.

So what is the landscape like today for firms like like yours, you know, in terms of

you know it. Sounds like, you know. Is it a situation where.

because of the the time that we live in now with technology that I mean, you have sounds like you have clients all over the world doing lots of different things, leveraging all sorts of different kinds of a assets and resources.

Can you just talk about that landscape right now, and and what it does for your firm. Yeah, but I’ll give you some examples of of what we do that incorporates AI every day like right now we let’s take patent patent application drafting. As an example.

we, you know that that is a mix of

of technology and science and legal drafting. And a lot of times we have we do hire we have of counsel and contract attorneys that we use to complete some of the heavy lifting in there.

We’re still the point person on it. We’re directing the strategy. But sometimes you need someone to go and do that unit of work like, here’s what the clients needs are going right. This based on that. I don’t think we’re far off from having. I mean, there’s already tools out there. They tend to be very expensive right now, but we’re that far off from being able to seed

an AI system with, like the pieces of a patent application and getting a pretty good first draft on.

you know, it’s like a newspaper article. There’s the same stuff kind of repeats. There’s the same structure and format, and that’s what AI is really good at picking up on it like patterns like that. So that’s that’s one example. It’s not quite there yet. But

yeah, it’s close

on the trademark side, you know. Trademark watches and trademark searches are orders of magnitude better than they were 10 years ago, and a fraction of the cost. So, instead of spending 800 or a thousand dollars on every trademark search, and actually like when I started, which wasn’t that long ago.

you know, have people do hand searches, and you get like this piece of paper back. You know we’ve got. My. My inbox is full every morning all these different watches for different clients and searches coming back because we’re constantly keeping an eye on

what AI is really good, at which is brands, domains, images, things like that. So we’re keeping an eye out for clients and and getting ahead of it. So those are 2. And then, of course, drafting. And like, you know, we use Chat Gbt like everybody else. I don’t send it out without checking it, and I don’t

send the help and help

modifying it quite a bit. But a lot of articles that I write, and longer client emails. I’ll see that with some, you know, some points and let it kind of

flesh it out a bit, so that saves us a bunch of time too.

When I left when I left our old firm.

you know a lot of

the partners that have been there since the seventies, you know, we’re like, well, how are you going to do this? How are you going to do that? And how are you going to do that?

It wasn’t that hard like, even out of the gate 10 years ago.

you know, systems for keeping track while you’re patent a trademark applications. We had a whole department with people, and and you still need people to like mind mind the systems. But

you don’t need nearly as many people as as some law practices where and we’re not cutting corners. We’re just using, you know, tools that are available.

Cloud based storage. That’s that’s an easy one. The docketing system that I mentioned tools like that, you know, leveraging technology before AI was a household term. You know, we’ve been doing this for 10 years trying to use technology as best as we can

to really deliver a level service that’s comparable to big firms with really just not nearly the investment in infrastructure and

real estate and things like that. And we think we’ve done a really good job, though.

Okay? Great, yeah, that that that is. that’s super interesting. I do remember the days when it was hard to do some of those things, or or thinking about it was hard. But

let’s let’s jump into talking about. I know one of the things that you’re very much focused on have been for a while is recurring revenue with whoops, with technology.

the the illustration here is about showing

I know you work with a lot of you work with a lot of companies on their trademarks. Trademarks. Obviously, commercial sources of origin.

The value is in the recognition. The value is, and what the public associates with that name and mark. And even when there’s, let’s say, transaction, you know, M. And a purchase of assets, a company, whatever it might be. You have one of the key assets is the names.

And so you know here what one of the things that you know that we’re illustrating here is that there’s this tie between brand investment and trademarks. Domain names the things that you own, the way that you’re seeing

and then also the scams. And then there’s the lawyer, you know, depicted by this you know, by the scale.

And so I was wondering if you could just kind of talk about your. You know the way that you think about

you know, protecting your clients, brands and names, and how that works.

I mean, when you bring up scams the first thing that comes to mind, or I mean, there’s

trademark. Scams are so common that

the Uspto has a whole website landing page devoted to scams. They have webinars on scams. We just did an article on our website about some of the new scams where people used to be. Get a piece of paper in the mail and file an application, and then you get this fake looking thing for the Czech Republic to tell you about $1,900

and pay this money to keep for a publication fee for your trademark. Most of the time people are smart enough to get in touch with us and not pay that we put warnings in.

and all our correspondence to let them know that those are going to be coming.

But you know, if you get a point 0 0 one return on that for the Scammer, that’s pretty good. It’s you know. It’s easy stuff. Now, people are calling like people are calling trademark applicants with a 5 7, one phone number, which is patent trademark office area code with information about the application in front of them and asking them for money over the phone like, it’s gotten more sophisticated. For whatever reason, maybe the the return on. That is better.

It’s a lot of labor, but it shows there are people out there coming up with creative new ways to extract money from

people that you know isn’t deserved, and it comes up with

domains all the time. It comes up with people trading on your brand, because now we don’t just have a store. You don’t go into Macy’s and see a knock off

what you have. Are all these different online marketplaces where

the name could be slightly different, or it could be the same name, but not a completely different seller. So you’ve got all these different areas where

policing the brand, you still have to do it, and that’s one of the ways that we can help is like

running these searches. Having, you know, watches put out. Keep an eye out for new things that are popping up level. That’s one of the ways that we’ve used. The main scale in the past is keep an eye out, for you know, new domains that are popping up. If that is starting to become a problem, we keep an eye out for images of products online occasionally. That’s something we’ve been able to do recently. And then, of course, you know, the more traditional, just kind of text searching and keeping an eye out for things.

But you can really do a good job policing things for clients, and when you do that and get in front of it, you know, you can

like the client can give you direction to go run. I need you to do this enforcement program. This is the problem we’re having up to shut it down.

But if you come to the client and say, by the way.

we just happen to be running our normal, you know, monitoring as part of what we do for you at no real charge or small charge, or whatever it is. And we thought, XY. And Z. You’ve created work for yourself here, firm, which is great. You’ve also made the client like. Really, you’ve really developed a loyal client cause they know that you’re looking out for them. It didn’t do cost you a whole lot. But to them that that’s meaningful, you know, you’re keeping an eye out for them. And that’s that’s I think it’s a great way to build client loyalty

that’s super interesting. So do you find that that, like, you know, when you think about it, you know, obviously, like you’re doing. You’re doing the trademark filings you’re doing.

you possibly litigation. You’re helping out when there are problems. But it sounds like you’re also kind of.

you know.

putting yourself in a role where you’re kind of protecting the brand value for these clients. And I’m wondering, you know II are. They responsive? Is that I mean. I guess you said it already that they’re that they’re loyal. But I’m wondering in terms of like, how you do things. Is it new for them. Is it something that they readily accept? Or is it? Is it? Do you have to kind of sell them on a little bit?

No, I think I mean, II think you can sell them on it, you know, if you’re going to incorporate a cost

to do it. And that’s something we’ve been playing with like we have, you know, like a trademark watch service, your your trademark. We get, we see your application through. It’s registered. We give you the schedule for renewals

oftentimes. It’s, you know. Okay, we’ll we’ll see for the next trademark, or if there’s an Enforcement issue kind of let us know. Now we’ve been starting to do. We’ll just dump that into our normal watch and see what comes up. And I think that there’s a way to build a cost into that. But you know

for us it’s kind of a balance like it’d be really great to get some some hits on that. Have clients be. Oh, wow! You’re looking out for us. That’s also good, as the you know, 500 bucks a year, or whatever we could charge for.

So I think clients clients are receptive to it, and they’re aware that there’s

a lot of different ways to to police the world. And I think they’re grateful

is the bottom line.

Gotcha gotcha interesting.

We’ll jump to the next.

Okay? So you mentioned a couple of things. I know that. You know. We’ve we’ve worked together domains. Scheme to mention some

some of the watch services you use can talk a little bit about your approach in terms of particularly in terms of like brand and cyber security cause you get. I know you get face. A lot of different finds come with a lot of different issues. But I’m wondering what your you know what your approach is.

Well. I mean with certain

certain workflows lend themselves to like, I said. There’s a lot of things that are repeatable. So when you see the trademark application through, you, keep an eye out, for when you see the patent application go through, there’s some things you can do

on that.

Then there’s other things where clients have it, like much more aggressive problem. And I mean, we saw that recently, we had a client recently who basically lost their domain, not so much to a Scammer, but to a disgruntled web developer. And you and I talked about this quite a bit about what their options to get it back. And it kind of led into this whole

discussion about like, well.

this is just this little problem. If this gets bigger, you know it is. It becomes like whack-a-mole, and it’s very, very difficult

to manage

with the human brain, I think, especially can really spiral out of control trademark infringement can spiral out of control. And

you know the I keep going back to this couple of tools to manscape and our trademark Watch

Clearance company. Those are things that we rely on a lot to kind of keep that all, to keep our head around everything and know something’s good. If there’s a hit we’ll we’ll know about it at least. So that’s you know, that’s really how we do it. We build it in where there’s

a workflow where we can build that in we. We try to build that in wherever possible.

Very cool, interesting. And you know the

I think you’ve kinda touched on this a little bit, but I think it’s worth. I think it’s worth noting this kind of reactive for proactive. I mean, you know, the the very traditional model. And the model that’s not going anywhere is client as a problem they call their lawyer, I mean, that’s that’s not, you know, age, old. And you know that that will not change. But there is, you know, you mentioned a couple of times this idea of being, you know, getting in front of things particularly with, you know, utilizing technology.

you know. Are you making kind of within your practice? A concerted effort to try to be proactive? Is that something that you think about in terms of your client interactions?

We’re trying. We, we make a concerted effort. And this will sound like it’s from from a marketing brochure. But we really want to create raven fans of our of our firm.

one that makes us feel good, that we’re doing something useful and making people happy like that’s really like what it comes down to. And it’s good for business. Referrals are a huge part of our business of what we do.

And if someone has positive experience, they go online. They post Google Review. They tell somebody you know, things come back that way. So this is one of the ways that we do that is, making clients feel

like we’ve taken an extra step, and that that comes from, you know our communications the way. We’re open with communication people up to date with things. But that’s only one, you know one piece of the one piece of the puzzle. It’s also, you know, we’re doing things for this. The watches, the trying to get the fun of things before they really happen, whatever possible, you know, doing clearance searches before we file an application doesn’t matter of course. Like, identify obvious problems

early on those things. It all, it all adds up to people saying, Okay, this is a. This is a really positive experience. I got great value out of this. So part of a bigger picture. But yeah, we we definitely try to.

I don’t know the word. The word proactive is gotten a little bit a little bit cute up, but that’s we do like being proactive in our approach. But that’s part of the overall mission.

Yeah, and that and that that makes sense, you know. I remember when way back, when when we were practicing together

when there was. You know, there were the the docket watching services, so that if a client got you know, if if a if a complaint was filed against the client in any jurisdiction in the United States, then, you know, the firm would get notification. The idea was that you wanted to be the first one to be able to call the client in order to deal with the issue and help them deal with the issue because you’re competing with a whole bunch of other firms. And then all of a sudden, that evolved into having to do like

writing articles, and then blogging and all sorts of other things. Now it’s just kind of ratcheted it up to even just like a a different level. But it’s all about, you know, making sure that you’re kind of keeping up with what’s going on in the marketplace. So it’s super interesting to hear you say that. No, and those those you know, the way we used to watch we were talking about with the docket. Monitoring is the way we used to watch

the progress of a court case, a litigation in Federal court, or new cases that were filed. We used to use something, I think it was

but cordless and or something like that. Yeah, expensive. You know, it was a couple $100 a search, a couple $100. Yeah per watch.

Now, there’s there’s tons of tools out there. Some of them are, you know, open source and really easy stuff, you know, to leverage. I put watches on on certain litigants, and you know it pops up. It doesn’t cost me anything.

Yeah.

that’s interesting. But even you know, the cost would be negligible compared to what it used to be, because it’s so much easier to do these searches. Now.

there? So, in terms of awareness. There’s no way. I mean, there’s a lot of stuff I have top of mind, and a lot of if I see something else. Oh, yeah, they’re client. I know that, Mark.

I don’t know how many 1,000 applications we have in our docken database, but you know it’s a lot we

would love to keep track of all that stuff in a very active way. Well, luckily enough, there’s a tool that we use recently that takes our whole docket, and basically does a search for it keeps an eye on trademark office. It gives us if one of our clients.

Mark is is cited in a rejection for someone else’s application. For example. Well, that tells us that someone’s filing something close or getting started with something close that’s worth keeping an eye on. That’s an easy thing to do. From our perspective. Clients love it when you pick stuff like that. So we have to use tools to keep, you know awareness of what the clients

own monitoring same type of thing.

We do it. We do it as a matter of course. It’s the landscape for that it’s changed. There’s different ways to monitor your clients, trademark portfolio. But again, it’s another one that people people love.

You want to talk about the debate monitoring. Well, I think it’s more interesting coming from from your perspective. But I’m I’m curious, and you deal with a lot of like, you know, companies where I mean.

I guess the one thing that I will say is that you know, for

you know the

domain names are kind of the modern storefront. You know it. It. It’s not. It’s not just about like the website and a URL. And you know, if there’s a problem, well, you know no big deal it. It’s you know, it’s huge, huge money for a lot of our clients. If there’s an issue with either a fake domain or the domains that they own.

So so yeah, I guess I can speak to that. I can speak to that one. there’s a lot at stake, you know, with with domain names. And honestly, you know, I think one of the things that we wrestle with a lot of the time. And we work with a lot of legal teams is trying to emphasize the fact that domains are assets.

They are valuable, valuable assets. They are part of your intellectual property portfolio. If someone’s going to buy your company, or if you’re going to do anything like

what you own is very, very important, and there’s a tremendous amount of value there. And oftentimes, I mean, we’ve had clients that have had

interns on their

domains, because, you know, that was who was listed as the registrant. And so I mean, it seems crazy. But these are like multinational companies.

So, so, yeah, yeah, that that was so you know, obviously, domain monitoring is something that that we look at, and I know that’s something that’s been part of your practice.

And I think you kind of address this last point, you know, earlier, but you know, in terms of not being able to put the gene back in the bottle, you know, dealing with

smaller problems easier to deal with than viral problems. I don’t know if you have any examples or thoughts about that.

I’m dealing with an example right now, and you know it’s not something I can speak about in detail, but it’s exactly what you said, like once it gets out a little bit it’s hard to put it back in

as much as you try, and as much awareness as you have of. Okay, there’s one. There’s what there’s what there’s one.

It’s a lot, and it it they just keep coming sometime. And people don’t always know that. Oh, this is a knock off because cool they were. I saw this somewhere. I’m going to build on that.

yeah. Those types of trademark issues are very challenging. It’s good to like, get an idea early and and deal with it

at the outset, wherever

So we are at the end, I think. we’re going to take some. There’s there’s a couple of questions from some of our

for for some of our participants. in webinar. And so let me just jump to the first. Well, this is kind of a a generic one. But who is

what kind of company was your first client?

I don’t want you to. Yeah, I know you might have to.

But those clients have relationships with a firm going back years before I was there. So not a lot with me.

The first real client on my own was a nonprofit that did.

They were also within the We work community. They’ve since

blown up. They’re they’re really quite big now, but they’re really they’re involved in kind of like the healthy building healthy office movement.

So

you know, encouraging people to take the stairs bike to work, have certain types of lighting in the office all those types of things that make a more positive built community. So they were one of the first ones they were. They were a lot of fun to work with.

That’s cool. That’s really cool. And you’re still working with them.

Yeah. And it’s interesting. And I think, you know, on on the more extreme levels. You would obviously have, you know, issues with.

you know, trademark owners have a responsibility to monitor and the quality use of their names, you know, if particularly if they’re licensing it, or even how they’re doing it themselves. Otherwise there can be, you know, some some really serious repercussions. So

so that that’s super interesting. the

last question that we have here is, what area would you consider your sort of industry expertise.

So that’s a good question.

Patent attorneys are

chameleons in in many respects, you know. A lot of what

we have to do is have the aptitude to pick up different

different technologies. So right now, I’m working on. You know, I’ve got a client who’s got ceramic gas igniters for stoves and grills and pyrotechnic displays.

I took enough physics. I took up material science and things like that that I could help them and read the patents and everything like that. I’m by no means an expert. But I can help them with

stuff that we’re working on. My background’s in computer science. I was, you know, I picked up

programming. When I was about 11 I got a commodore 64. I started banging away at that and playing with that and that kind of led me to high school program in computer science and then college and then programming. And then I was like, Wait, I really want to do this for a living. It was fun. Do this all the time.

so

it it hit a wall. But that’s that’s really my bread and butter. Anything in that in that world. I’ve also done a lot with nfts and crypto, of course, lately.

that comes up quite a bit. But I would also say, we do. You know, we’ve got a handful of fashion clients that we help out a lot, handbags and things like that, where an area of expertise that I never expected that I would have so kind of, you know, a little all over the place. But the bread and butter is computer science, and and that that stuff

So I think that is the last of our questions. David, thank you for your time today. This was super interesting. I’d also like to thank everybody that

joined us today. And if you didn’t get a chance to join us, maybe you’re watching the recording in which case. Thanks for watching and we’ll talk soon, David. Thanks for your time.