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.

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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.

Published v. Non-Published Patent Application – Is There a Benefit

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QUESTION: Filing a patent application which gives the most advantage to the inventor seeking to produce or license his product , having his patent application published or unpublished ?

ANSWER: If you want to use your US patent application to file in a foreign country, you will need to allow your US application to be published. If you want to delay your competitors in finding out about your new technology, you can request that your application not be published when you file the application.

Do I Need an Attorney to File Patent Application?

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QUESTION: I have met with Inventhelp regarding an idea, and paid $1000 for a patent search and a “blueprint” of my idea. I was told that I could file for a design patent. I spoke with an attorney who didn’t really know too much about patents and he quoted me $5k-10k. Is that the norm? Can I trust that by using a service like legal zoom, all of my paperwork will be in order?

ANSWER: You can file a patent application with or without an attorney. However, there would be advantages of using an attorney. A big advantage is that you do not need to learn all of the many patent office rules for preparing/filing an application. Having an attorney prepare/file your application will very likely reduce the number and extent of the problems you might create by doing it yourself. And the problems you create might not be “fixable.”

How Do I Register a Trademark?

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QUESTION: What do I need to know about registering a trademark?
I want to start up a clothing/bait and tackle shop in my home town. We haven’t made the products with our preferred name yet or sold anything because we fear the name might be rejected or something might some up. We want to get all our ducks on a row before we invest too much. I got the name and place and ideas for products. Where do I start. Do I register for a trademark first?
 
ANSWER: You should be first concerned about whether your preferred name might infringe another’s trademark and then whether you can register your preferred name.
 
For infringement, you can not only Google your preferred name to see who else might be using the same/similar name, but also check the US trademark office website – https://www.uspto.gov/trademarks-application-process/search-trademark-database
 
For registration, if your business is confined to the state in which you are located, you can obtain a state trademark registration. If your business goes outside of your state, you can obtain federal registration – https://www.uspto.gov/trademarks-application-process/filing-online

Adding a Tagline to Existing Logo

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QUESTION: My company already has a registered trademark for our logo, but we want to add our tagline/slogan. I’m not sure whether we can add the tagline to the existing trademark or if we would need to get an entirely new one for the tagline?

ANSWER: You can add your tagline to your logo, and then obtain a trademark registration for the tagline only or for the tagline plus logo.

What Can I Do About Other Businesses Using My Name

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QUESTION: I have an established retail store that has been open in NC for several years. In the past year, 2 other stores have opened up & are selling extremely similar merchandise as my store does with the exact same name as my company. The only difference, is that one of the stores added 1 letter to the name. One of these stores in in Tennessee, & the other store is in a city only 2 hours away from mine where I already had an established customer base long before it was opened. Can I prevent these shops from using my company name? The name is not yet trademarked, but I plan on filing for a trademark.

ANSWER: Trademarks seek to prevent a likelihood of confusion. If you do not do business in Tennessee, there may be no likelihood of confusion and, therefore, you may not be able to prevent the use of “your” name there. However, even if you do not have registered trademark, you may be able to stop the use of your name in the city two hours from you.

How much variation on a trademark is enough to not be a violation?

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QUESTION: A country band trademarked a name out East that does not perform anymore. A rock band in the West has become more popular now and has been sent a letter demanding they change the name. If you add an exclamation mark at the end of the name, is that enough? (I understand the the band “Fun!” added the exclamation mark because someone trademarked the name “Fun” but don’t know if that is true). If you add one word to make it different, like ‘The Who”, vs “Guess Who”, or has the laws changed since then?

ANSWER: Adding an exclamation point or adding one word will likely not be enough to enable you to obtain a trademark registration or avoid trademark infringement.