PATENT A DESIGN

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QUESTION: Can you patent a design of a truck?
We are a aftermarket automotive design company that offer flared fenders and truck bedsides, we want to patent a design so our competition doesn’t copy our parts, which they have done in the past. My main question cal we do it?

ANSWER: Yes, if the design is new and not obvious in view of prior designs.

 

HOW TO CORRECT LIST OF INVENTORS

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QUESTION: How can I correctly petition with the USPTO my right to be a named co-inventor on a patent that just issued?
I have been the co-inventor of dozens of patents related to ceiling storage devices. I am the founder of HyLoft and we had some 20+ patents; utility and design issued over a 8 year period. Mr. Mattson and I live in Las Vegas. I heard he was working on a new type of ceiling storage device specfically to house or store plastic totes. We worked together for about 8 months on the embodiment and claims of the device. I took my daughter to her first semester at George Fox in Oregon and got really ill with a kidney stone. While I was waiting for surgery for that kidney stone, Mr. Mattson filed the patent application without adding me as a co-inventor. I filed a Patent Protest and followed the process thereof. The patent issued on Dec 11 2018 without me listed as a co-inventor. I have two inches of documentation supporting my rights as a co-inventor and specific claims associated with the patent.

ANSWER: You can file a lawsuit in federal court to correct the list of inventors.

CONVERT IDEA TO PRODUCT

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QUESTION: How to turn an idea into a product?
I have an idea for a product that is currently not found on the market. Great, right? Except, I have no idea where to start! I’ve read numerous articles online and so far I believe the route I would want to take would be to obtain a Provisional Patent Application. However, that leaves me with 365 days to turn that into either a Design or Utility patent. Is that correct? Can I reach out to manufacturers prior to a PPA to get a prototype, etc. without my idea being stolen? Looking for the most cost effective approach on testing this product idea. Any insight/guidance is appreciated.

ANSWER: You might start with a non-disclosure agreement with manufacturers. Also, you might file a provisional patent application before communicating with manufacturers. A provisional can be filed as quickly as a few days. A design patent application could be appropriate if what you want to protect is the look of the product rather than the functionality of the product

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.

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.