SIMILAR TRADEMARK FOR DIFFERENT GOODS/SERVICES – INFRINGEMENT?

Tags

QUESTION: Similar trademark with an S at the end. Can and Should i oppose?
I’ve got a recently registered trademark under IC 041. US 100 101 107 classifications that someone attempted to purchase from me. However after I flat out rejected their offer they went ahead 2 weeks later and registered the SAME trademark name but with an S at the end of it under a different classification of IC 036. US 100 101 102. For example is my trademark was: AVIOITO they then went and registered their under AVIOITOS with the S at the end and the classification being the only difference. My question is: 1. Will the trademark office allow this to go through? 2. Are they infringing upon my mark? 3. Should I look to file an position? 4. What’s the best approach to dealing with this?

ANSWER: Though not definitive, the substantially same trademark used in a different class of goods or services may be allowed by the trademark office. And since they are different goods/services, there is likely no consumer confusion that would equate to infringement.

 

Advertisements

Trademark Confusion/Protection in Different States

Tags

QUESTION: Can another business in another state use my trademarked business name?
I have a business in VA with a trademarked name. I just discovered another business in TX using the same name. My business started out doing what they???re currently doing, but has since evolved. Their business does what we started our doing. Because my business name is trademarked, are they allowed to use the name? I’m a dog trainer and behaviorist, but started out doing more canine-human fitness. I’m doing more training and behavior work, but have kept my company name. This other company does canine-human fitness. Is this infringement? I sent them a message, to which they responded by asking if someone was confusing their business with mine. But.. it’s the same exact name and I spent a lot of $$ trademarking this name when I started my business nearly 5 years ago.

ANSWER: If you have a federally registered trademark, you may have the right to stop an infringer in another state. If you only have a state registered trademark, you may still have the right to stop an infringer in another state if you are also doing business in the other state and first used the trademark in the other state before the infringer.

DISPOSAL OF GOODS AFTER CEASE & DESIST

Tags

QUESTION: Cease and desist letter, what can we do with the merchandise?
We create and sell card games. Recently we received a cease and desist letter for trademark infringement on one of the games. We did stop selling the item, but what can be done with the merchandise on hand. Can we donate them to Children’s hospitals, or after school programs without risking potential issues in the future? Or do they have to remain in storage?

ANSWER: Typically, part of the settlement agreement to stop selling infringing goods includes “what can the infringer do with the remaining goods”. Simply because you stopped selling the infringing goods does not mean you have the right to “dispose” of the remaining goods.

Infringing Products on Amazon

Tags

QUESTION: A dispute over patented product being sold on Amazon. I’m having a dispute over patented product being sold on the internet (Amazon. com) It’s a sports accessory. My competitor has a pending patent application and asked me to discontinue selling the product. I would like to sell out my inventory before moving on. I wonder if can keep selling until he get he’s patent confirmed ? Or he can still sue me after he gets the patent granted for back losses?

ANSWER: Generally, one can only collect damages after a patent has issued, not while the patent application is pending. Therefore, sales of an “infringing” product while the application is only pending does not provide a basis to collect damages or even be considered infringement.

How To Fix Abandoned Patent Application

Tags

,

QUESTION: What does it mean when a utility patent application is abandoned ?
I filed a utility patent application by a lawyer. he did the job and even he sent me the receipt ( USPTO OFFICE ) of filing the app. but after a while the law firm of my lawyer closed and then my lawyer told me that my application is abandoned in USPTO office and didn’t reach to the examiner. I didn’t understand why and what does it mean. so you tell me what shall I do ? is that mean my application is rejected or not ? please help me.

ANSWER: The patent office may have sent something that required a response. If no response was timely filed, your application will have been deemed abandoned by the patent office. You can try to file a petition to revive the application.

WHEN IS IT SAFE TO DISCLOSE INVENTION?

Tags

QUESTION: Can you tell the details about your product after you file for a provisional patent? At what point is it okay to tell the general public about your invention? Is it okay after the provisional patent?

ANSWER: Yes, you can disclose the details after you file your provisional. However, a provisional does not automatically stop someone from copying your invention. You have to take affirmative steps to stop the copying, such as a cease and desist letter.

What is Protected By a Trademark?

Tags

,

QUESTION: What is protected under a trademark? If I Trademark the name BajaCharms which is my Etsy shop – the name BajaCharms is protected, what about the shop itself and its contents? Are my designs protected under the Trademark?

ANSWER: A trademark can protect your name “BajaCharms”. But it will not protect your shop itself. Trade dress, however, may protect the way your shop looks. A trademark may also protect contents in your shop, but only to the extent that the contents have a trademark attached to them.

USING ANOTHER’S LOGO

Tags

,

QUESTION: Can I use customers logos in marketing? We have software that we sell to companies. A few of our larger customers are franchise holders for some large name brands. Can we use there logos in our marketing videos promoting that they are customers?

ANSWER: Yes, if you have permission from the franchisor. Your “customer” is actually the franchisee. The franchisee has rights from the franchisor to use the franchisor’s logo. The franchisee’s rights to use the logo is typically limited, and may not allow the franchisee to allow a third party to use the logo.

Register TM in US, Even if Registered Abroad

Tags

, ,

QUESTION: Do i have to re-register the logo,trademark, copyrights for buying USA rights from one Indian Company?

ANSWER: Yes, if you want to enforce your trademark rights in the US. Trademark rights in a foreign country, such as India, are only enforceable in the foreign country.