DOES LLC NAME PROTECT AGAINST INFRINGEMENT?

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QUESTION: Does my LLC protect me from someone with a federally registered trademark? Just got a cease and desist letter from a company saying our LLC name is a direct violation of their client’s federally registered trademark. Our LLC (KBX PHX) was formed in May of 2019 in Arizona. They are in California, and their trademark (KBX Fitness) was “published for opposition” August 20, 2019

ANSWER: No, the mere fact of have an LLC name registered with your state’s Secretary of State does not protect you against infringement. Among other things, whether infringement exists depends on who was the first user, not who first filed a trademark application or who first registered an LLC/corporation. The first user has “prior” rights over the subsequent user.

PARTNERSHIP SPLIT – WHO OWNS THE PATENT

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QUESTION: My cofounder and I split. Can I patent our idea by myself?
My cofounder and I were working on an idea, prior to incorporating. We decided not to work together for personal reasons. He came up with parts of the idea. No patent has yet been filed. Is it ok for me to start a separate company and file for patent on the idea?

ANSWER: In the absence of a contrary agreement with your partner, you can apply for a patent, but your partner probably needs to be named as an inventor

WHAT ADDITIONAL WORDS DOES TRADEMARK COVER

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QUESTION: Does a trademark only cover the specific words and not additional words?
The trademark “Play To Win” is a registered trademark. Would that trademark apply if an additional word was added, such as “Play To Win Now?”

ANSWER: A trademark protects against confusingly similar marks. In general, however, for the same type of goods or services, if someone adds a word or two to your trademark, that can likely constitute trademark infringement.

DOES PROVISIONAL PATENT PROTECT MY PRODUCT?

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QUESTION: Does a provisional patent protect my product from being stolen?
I have an idea for a very basic product. I’ve done a thorough search myself, and have not found any other patents. I don’t have the money to spend thousands for the real full patent. Will a provisional patent (I saw this costs under $200) protect my product idea? I need a company to do a rendering of my product as I have no artistic abilities, but will a provisional patent protect my product idea? I don’t want to have some company draw up my product for me and then steal the idea. I’m confused as to what protection really comes from a provisional patent. Is a PP the first step for any product invention ?

ANSWER: A provisional patent application provides limited “protection”. If someone steals your product idea, you cannot use a provisional application to sue for patent infringement. It does give you patent pending status which you can advertise as an indication of value of your product.

HOW TO REGISTER TRADEMARK

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QUESTION: How do I go about trademarking my logo on a federal level?
I am looking to trademark my husband and I’s our logo for our start up company. I don’t want to promote our work with out doing that first. I’m just not to sure how I should start this process.

ANSWER: A starting point may be to search whether your logo might infringe another’s logo. If it does not infringe, and you want to register your logo without the help of an attorney, go the the US trademark office to complete a trademark application – https://www.uspto.gov/trademarks-application-process/filing-online

 

DOES NARROW PATENT BLOCK BROAD PATENT?

QUESTION: Does a patented limited invention prevent a broader invention from being patented?
If I have an IP that is much broader than an IP already patented by someone else, can I patent mine? I’ll give you a rough, but clear example. If Newton patented his energy formula E=mv^2 /2, and Einstein came up with his own broader formula E=mc^2 from which the Newton’s formula can be derived as a special and limited case, can Einstein patent his formula? Does Newton’s patent prevent Einstein from patenting his formula?

ANSWER: Not necessarily, but probably yes. Patentability depends on whether the invention to be patented is obvious over prior patents. Therefore, it is not always true that a narrow patent makes a broad patent obvious. However, it is likely that a narrow patent will make a broad patent obvious.

FILE PATENT APPLICATION AFTER PUBLIC MARKETING

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QUESTION: Can I file for the patent after I made the product/invention public on the market? I have a patentable invention but I would like to test/validate it on the market first if there is any demand for my product. It’s a physical product for men who shave and have sensitive skin. Can I file for the patent after I made the product/invention public on the market?

ANSWER: Yes, if you file your patent application within one year after putting your invention in the public market.

WHAT IS TRADEMARK “USE IN COMMERCE”

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QUESTION: Does use in commerce mean that I actually have to have sales?
I have a trademark registration that is nearly 5 years old. My product has been available for sale online the entire time. Unfortunately the product is expensive and I have not made any actual sales. Does this mean that my mark is not actually used in commerce? Are sales required or does use in commerce just mean that the product must be legitimately available for purchase online. Customers do have the ability to purchase my products directly from the website by clicking on a credit card/PayPal payment button.

ANSWER: One does not necessarily have to have sales of product to establish “use in commerce” to obtain federal trademark registration. But it certainly helps to have sales in order to establish such use. In the online context, it would generally be helpful, in establishing use”, to display your products with your trademark on the product.

TRADEMARK INFRINGEMENT IN DIFFERENT CLASS OF GOODS

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QUESTION: Can I file trademark infringement for a competitor in a different class?
My trademark attorney messed up, and filed our trademark as ‘Business services featuring ethical clothing’ instead of simply ‘ethical clothing’ (trademark class 35 instead of 25). A new brand just formed with the exact same name, creating the same products, with the same mission. Would I be able to complete a cease and desist on this case, even though my trademark only covers the ‘business services’ portion instead of simply the products?

ANSWER: Yes, if you were using your trademark on your clothing before the new brand started using the same name on their clothing. You can have trademark rights separate from registration.

REFILE PATENT APPLICATION

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QUESTION: Is it possible to tweak utility patent and refile a new patent around the concept after the original patent expires?
My patent is expiring in two years. I’m still trying to build a business and/or license it. Is it possible to tweak utility patent and refile a new patent around the concept after the original patent expires?

ANSWER: You can refile your patent application with a “tweak” now or after your patent expires. However, your prior patent will be considered prior art to your refiled application. In other words, your refiled application must be not be obvious in view of your prior patent.