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

Tags

, , ,

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most advantage to the inventor seeking to produce or license his product , having his patent application published or unpublished ?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 If you want to delay your competitors in finding out about your new technology, you can request that your application not be published when you file the application.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?

Tags

, , ,

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?

Tags

, , ,

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

Tags

,

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

Tags

, ,

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?

Tags

, ,

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.

TRADEMARK IN INDIVIDUAL OR ENTITY NAME

Tags

QUESTION: Should I register a trademark under myself while I am working up my business plans?
I would like to reserve my desired trademark name with the USPTO, but am still working up my plans. Is it better to register with myself as owner, or wait and have the company own the trademark? Can I own it first and then transfer it to the company second, when it becomes operational? I just want to ensure that I get hold of the name.
ANSWER: Trademark rights go to the person who first uses it. Therefore, it would be beneficial to file a trademark application in your individual name and then transfer to your entity when operational. Your entity will then get the “benefit” of your earlier, individual use.

TRADEMARK INFRINGEMENT – ENFORCEMENT

Tags

QUESTION: How do I proceed with initiating and preparing for next steps in trademark enforcement? My professional services company was first to register the trademark (filed Oct 2015, published April 2016), and first in commercial use by several years (2012). I was not aware of the existence of the offending name upon filing, but apparently it did exist; the offending name is the registered business name (but not registered trademark) of an LLC in Connecticut in the same field. The offending party is likely to resist a cease and desist, as they have been incorporated since 2014 and apparently using the name in their website and on professional forums since 2015. Thanks for your consideration.

ANSWER: You should determine whether you or the other company has priority over the other. Even if the other company does not have a registered trademark, it may have trademark rights and those rights may have priority over yours. And even if the other company is in the same field as yours, there may be a geographical difference between your business and the other business that would allow both of you to use the same trademark.

Corporate Name v. Trademark Name

Tags

QUESTION: If for example the name “Elite” is trademarked, but “Elite Inc” is available in my state to register as corporation, can i get it? Or will it conflict with trademarked name and i might have issues in the future? Does the Inc ending change the trademark? Elite is just a sample.

ANSWER: Even if you can register a corporate name with your Secretary of State, you cannot necessarily use the corporate name as a trademark. Your corporate name, if used as a trademark, may infringe another trademark.