SIMULTANEOUS UTILITY AND DESIGN PATENTS

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QUESTION: Should design and utility applications be submitted simultaneously?
I have an invention that may support utility and design claims. Must I Pursue both patents simultaneously. Or can I apply at different times.

ANSWER: If you eventually want to have design and utility patents on the same invention, you do not have to file the applications at the same time. However, it would be desirable to at least file one while the other application is pending.

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HOW TO FIND A PATENT ATTORNEY

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QUESTION: What’s a good strategy to search, find and pick the right attorney for me among hundreds if not thousands of attorneys in LA?
I am looking for a patent attorney to research and file a design patent.

ANSWER: If you cannot obtain a referral to a patent attorney from someone you trust, then do a Google search and review the client reviews. The review may give you insight into which attorney(s) may be a fit. The attorney does not have to be within driving distance of you, since most if not all matters can be handled by phone/email. Then interview the attorney to see if your personalities are a fit. If you cannot get along with the attorney, it will not matter how brilliant the attorney.

USING TRADEMARKS IN SEARCH TAGS

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QUESTION: Using trademarked words in search tags?
I design and make shirts & totes & other crafts, and sell these on Etsy. I would never use logos or trademarked names in my products or product titles, however, I do have a question about search tags. Etsy allows sellers to tag their items with search terms that are relevant to the item. Is using trademarked terms in search tags permitted? For example: “gift for Porsche drivers” or “onesie” (as both Porsche and onesie are trademarked). Second question – for most of my listings, I have personal stories. Can I mention trademarked words in the stories if it’s clear that the item has nothing to do with that trademark? For example, “My dad is a huge Porsche fan, and drives a bright red 911. I designed this cosy knitted hat in bright red for him to wear to the winter car show…” (It’s Etsy, so stories actually help) I’m a bit confused about this and most of the advice I’ve found is from other sellers, who really don’t seem to know what they’re talking about and provide conflicting answers. Etsy’s advice is simply to avoid copying trademarked or copyrighted images (which should be pretty clear, but if you search “Disney” on Etsy, you’ll quickly find that many people don’t get it…).

ANSWER: Doing so would like constitute trademark infringement.

TRADEMARKS IN FOREIGN COUNTRIES

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QUESTION: Can I use a trademarked word that’s registered in the UK, but not in the USA? Does that trademark apply to the US at all.
I want to revive a dead community website, I own the domain but upon further research I noticed the word mythros is trademarked in the United Kingdom. However, it’s not trademarked where I live in the USA.

ANSWER: One can have trademark rights without registration. Therefore, a company in the UK may have registered their trademark in the UK but may also have unregistered trademark rights in the US. These unregistered rights may have “priority” over your rights.

 

DOES ETSY STORE NAME OR DOMAIN NAME GET THE TRADEMARK?

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QUESTION: I bought a domain, then found there is an Etsy shop with the same name. Does this person have legal claim to the name?
I am in the beginning stages of starting an ecommerce business, came up with a name, and bought the domain. I just found an Etsy shop with the exact same name that has been active for a few years. Does this Etsy shop owner have legal claim to the name enough that it would prevent me from trademarking and moving ahead? Would she be able to sue me or take any legal action against me?

ANSWER: The right to use a trademark goes to the first user of the trademark. Simply registering a domain name does not constitute trademark use. Therefore, the person who has been using the name for his/her Esty store likely has the right to use the name – as between the two of you.

 

WHEN TO REGISTER YOUR TRADEMARK

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QUESTION: When do I trademark, before or after I begin to establish my brand?
I checked USPTO’s TESS, and the name I’d like to trademark for my brand is available. Should I start the trademarking process now, while still in the planning phases of my business, or would my application be more successful if I had a product to show for it, but taking the risk of the name being filed for by another party in the meantime? Thank you for your time!

ANSWER: If you have not yet started using your trademark, you can file an intent to use application. Doing so may give you “priority” over another once you start using your trademark since your date of first use will go back to the date of application filing.

TRADEMARK REGISTRATION FOR DIFFERENT GOODS

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QUESTION: I have a registered trademark in one class. If I want to register the same name in an additional class what am I required to do? My trademark is in 037 and I want to add a related product class or maybe an education class to that same registered name. By the way, I just renewed my 8 & 9 form for $425 in the single 037 class.

ANSWER: To add an additional class of goods, you will need to file a new trademark application.

SIMILAR TRADEMARK FOR DIFFERENT GOODS/SERVICES – INFRINGEMENT?

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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.

 

Trademark Confusion/Protection in Different States

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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

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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.