Protection of a Slogan

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QUESTION: If I have a tagline that I want no one else to be able to use, is that considered copyrighting or trademarking. It’s a memorable tagline that has my last name in it. For example let’s say my last name was Gold. My tagline might say Have faith in Heather Gold, she outshines the rest.

ANSWER: A slogan may be protected by trademark, if it being used as a trademark. Slogans that are merely descriptive of the services or goods may not qualify as a trademark. Your slogan may have difficulty in getting trademark protection.

 

How to Oppose the Registration of a Conflicting Trademark

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QUESTION: We have been using a trademark since January 2015. We are selling products with the trademark displayed on packaging and product labels. We also own the trademark domain name. However, we never filed with the USPTO since we were told that it is unnecessary and we would still be protected if we actively using it in commerce. Now, someone filed it and their mark is published for opposition in September. I am planning to have a Notice of Opposition filed as soon as they are published. Any suggestions?

ANSWER: If you have been using your trademark in other states and there is a likelihood of confusion between your trademark and the later used trademark, you can file an opposition. After filing the notice of opposition, the process is similar to a lawsuit.

Conflict Between Three-Word and Two-Word Trademarks

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QUESTION: I have a question on compound word trademark registrations. Without disclosing the actual name, we have a trademark application that has passed through opposition. we have submitted the specimen and are awaiting a registration. Two months ago a new application (has not been issued an examiner) was submitted with a similar name, in the same category, 03. our name is: GoodSkinActives competitor application is: Good Actives. What are the chances that the examiner will see a conflict with our mark which hopefully will be registered by the time an examiner is issued to our competitor?

ANSWER: Typically, when the latecomer to the same market removes one word of a multi-word trademark by an earlier user, the earlier user of the multi-word trademark has prior rights. Therefore, if the earlier user has  filed a trademark application, and the examiner finds it, the latecomer’s application will likely be rejected.

Can You Patent Chemical Formulation

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QUESTION: Can I patent a formula of essential oils and carrier oil? I want to produce a cleansing product and I would like to know if I can patent the formula which involves several essential oils and a carrier oil.

ANSWER: Yes, if your formula has not been formulated by another before your invention, and your formula is not obvious in view of what has been formulated before your invention.

Patent Rights After Leaving a Company

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QUESTION: I am working in a company which filed a patent application for me (I am the only inventor and the assignee is the company). Currently I have the application number but the patent is still under review. Now I am thinking of switching job to another company in the future but wondering if I will need to wait till the final publication of the patent.

ANSWER: Even if you leave your employer, you will still be an inventor of the patent. However, whether you leave now or after the patent issues, you will not be an owner of the patent. Your employer will be the owner.

Inventor of Improvement to Patent Pending Idea

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QUESTION: If a manufacturer makes improvement to the patent pending idea, is the company considered a co-inventor to the invention moving forward to update the patent application? If so would the manufacture now be more likely to have an invested interest to help fund the development?

ANSWER: An improvement to an existing idea can be patentable. The inventors of the improvement are not necessarily the inventors of the existing idea. If the manufacturer was not the inventor of the original patent pending idea, an improvement does not make them an inventor of the original idea.

Cease & Desist Over Provisional Patent Application

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QUESTION: Can someone stop me from doing business just because she has filed a provisional patent application with the USPTO? FACT OR EXTORTION? I received a Cease & Desist Order via email directing me to stop manufacturing my metal greeting cards because this party has filed a provisional patent application for “metal greeting cards.” Subsequently, this party contacted Kickstarter and personally suspended my $285,000. fundraising campaign charging that I have infringed on her patent. She has refused to give me product details supporting her application, so, I have no idea if my product and hers are the same. Then, she had her attorney prepare a formal licensing agreement that would require that I pay her $3000. monthly to make my metal cards. Her application does not go before the USPTO examiners until Sept. 17, 2017, at which time, she may, or may not, receive an “issued patent.”

ANSWER: Generally, one does not have patent rights from a pending provisional patent application to sue for infringement. Only issued patents can be used to sue for infringement.

And, the USPTO does not examine provisional patent applications in a substantive fashion that allows the application to issue as a patent. In your case, if the application is in fact to be examined, the application must be a non-provisional application.

License a Provisional Patent Application

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QUESTION: Can I get a licensing deal with a provisional patent. I have a product with a provisional that has great potential and I want to try and get a deal so I can receive royalties with my provisional.

ANSWER: Yes, but you may increase your chances of signing a deal if you had a pending, non-provisional patent application, and increase it even further with an issued patent.

Can I Get a Patent For an Improvement?

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QUESTION: If I found a very similar patent to my invention but mine’s still better, what should I do? I recently invented a product but found a patent for a similar product which has now expired. The patent I found works in the exact same way as my invention except my invention is not as bulky or have the redundant attachments this one has meaning mine would be a lot more marketable. My improvements are simple but they have a big impact so I’m afraid they’ll be classed as obvious. Such as removing a handle which isn’t needed and moving a device within the unit to another area to make the invention smaller. So is there any way I can protect my improvements to an invention that is now public knowledge?
ANSWER: Improvements to existing devices can be patentable – if the improvement is not obvious. For example, making an existing device smaller may be patentable if the way in which it was achieved is not obvious in view of similar, prior devices.

Who Should Have Ownership to Trademark – Holding Company?

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QUESTION: If you’re going to trademark a name for publishing and other purposes, does it make sense to have an IP holding company? If we’re going to get a name trademarked, which we intent to use for publishing, merchandise, etc, does it make sense to have an IP holding company that holds that name and licenses it out to the company using it for maximum protection, or is that pointless? I’ve had different attorney’s offer different answers.

ANSWER: From a legal perspective, a holding company might make sense if you were going to license the IP to persons/entities other than yourself. Or, if the assets of one company need to be shielded, a holding company could be useful to separate out the IP assets. However, from a tax perspective, the answer might be different.