Florida Intellectual Property Legal Questions

Hello.  I am a registered patent attorney and have been so since 1995.  Only registered patent ts practitioners may represent applicants for patents before the U.S. Patent and Trademark Office. Inventors are not limited to engaging patent attorneys in their local area.  A registered patent professional can represent clients worldwide.  My practice is focused on individual inventors and start-up companies.  Almost all my communications with clients is by email and telephone. I provide a free no-obligation initial consultation along with a brief patent search to investigate the novelty of your invention. I am on the West Coast, so three hours earlier than you in Florida.  Please feel free to call me at your earliest convenience. Regards, Anthony Claiborne Claiborne Patent Law Services 425-533-6132... Read Answer

Owning a domain name does not give you an intellectual property right or right to the trademark. If you are using the trademarked words in commerce on your domain, and you were the first to use those words with respect to the goods and services being marketed, you may be able to object to another person obtaining the mark based on common law trademark rights. With that said, if the other party was first, and the other party has a registered mark, it is possible that you  will need to relinquish your domain or simply be required to cease and desist use. There are a lot of factors to consider in this area including whether your site and domain actually infringe the registered mark. Simply having a domain does not mean it infringes and it is possible, especially if you were first, that the mark holder will not be able to force turn over.  With that said, we have forced turnover on behalf of clients who own marks when a domain was acquired and is being used to confuse and interfere with our client's trademark rights.  This is a comples area of intellectual property law and you should obtain the advice of a lawyer with knowledge and experience in e-commerce, intellectual property and UDRP procedures. ... Read Answer

Assuming that you have a valid trademark, you may be able proceed against the infringing party or parties. How this is done depends on the nature of the mark and on the nature of the infringement. You first have to decide if you want to try to resolve the matter through a cease and desist letter, negotiation or litigation (and if litigation, are you prepared for the potential costs in terms of time, energy and expense). Damages can include actual damages, statutory damages (damages that are awarded as a penalty and which are not tied to amounts lost by the owner or taken by the infringer) or the profits earned by the infringer. 15 U.S.C. §1117. There isn't much caselaw on hashtags yet, but it would be difficult to see how a hashtag could infringe on the deisgn elements of a mark, but certainly could infringe on the words that were registered. The important issue in any trademark case is whether the infringing use is likely to cause confusion as to the source of the goods. I can't express an opinion about that without knowing your mark or the infringing use, but suggest that you look at your mark and at the infringing mark and ask if a consumer would lliekly think that they were made by the same company. If yes, then you may want to look into legal action. Best wishes, Michael R. Morris... Read Answer

There are a number of questions bundled into this one, so let me take them one at a time. I am assuming that when you say registered mark, you are refering to one that has been registered with the USPTO. As to the one word, the answer to your question depends on what the word is. Generally, a mark is more defensible and restrictive the more arbitrary and less generic it is. Let me give you an example: "Benthos" (which is a real word meaning flora and fauna on the sea or lake bed) would be deemed arbitraty if used in the commercial banking industry and would stand an excellent chance of gaining protection. On the other hand, if "Benthos" was used in reference to aquariums, it would likely only be deemed suggestive or descriptive. Even if Benthos was protected with regard to banking, you could still open a business names Benthos that offered plumbing services and register the name, although you probably would not be able to copy design elements of Benthos bank's mark. In your case, factors to consider would be how similar the industries are to each other. The categories of business operations for which trademarks can be sought is quite vast. Some very large businesses may hold many trademarks because they produce movies, sell clothes, and even license their characters for food products - think Disney. You are not going to be able to trademark the name Disney for almost any business purpose without running afoul of their mark. Returning to the Benthos Bank example, if your business name is Benthos Wealth, and your intended are of operation is financial planning, then they might well argue that you are interferring with their mark, even though you have added another word. In terms of "admitting guit and making me liable" - more information would be needed as to how long this has been going on, what are the services or goods coverted by the mark. and the language of the letter. When my clients receive such a letter, and if it is determined that this is a likely case of infringement, then  one of the first things I do is to contact the party sending the letter and see if we can work out a release that if my client changes the name to a mutually agreeable one, that the party owning the mark agrees to release all of its rights to seek damages, injunctions, or any other relief. I have very rarely had difficulty reaching such an agreement.   For the USPTO guide on the spectrum from arbitrary to generic: https://tmep.uspto.gov/RDMS/TMEP/Oct2012#/Oct2012/TMEP-1200d1e6993.html Best of luck, Michael R. Morris  ... Read Answer

At a minimum, you should have a non-disclosure agreement drafted and have anyone you want to work with sign the agreement. You should also document your idea and talk with other people in your industry and try to get referrals/references for the people you are considering doing business with.... Read Answer

First, make sure you have obtained copyright registrations on all of your materials.  If you have not then you need to file for an expedited copyright registration with the US Copyright office(www.copyright.gov)  that is if you are the author of the original materials.  Second, you need to send a cease and desist letter to the large US Corporation demanding that they remove all of your materials from their packages, demand an inventory of how much they have sold of your materials and demand they pay you a royalty for every package sold.  If the US Corporation does not respond then you will need to file a Copyright infringement case in federal court against the US Corporation.  I would need more information to advise you further since there is the possibility that there are issues of trademark infringment and unfair competition.  Good luck to you.... Read Answer

You need to decide which state you are going to incorporate your business.  Each state has a Secretary of State website with a Division of Corporations section that will explain what documents you need to complete to incorporate your business. You would need a trademark registration for your logo and company name.  First you should conduct a trademark search to determine if anyone else is using the marks in the US or where ever you are going to market your products/services.  If your trademark search reveals other people or entities are using the same mark for similar products/services, you need to change the mark.  If your trademark search reveals no one else is using the mark for similar products/services you should proceed to file a trademark application for the trademarks (logo and name).   If you are marketing your goods/services in interstate commerce then go to the USPTO website and follow the instructions to file a trademark application.  There are videos and manuals available for your use on the website.  If you are marketing your goods/services internationally you need to consider other countries you need to register your trademarks.  This information is also on the USPTO website. You can obtain a copyright registration for your website through the US Copyright Office.  Go to their website and follow the instructions for registering a work.   Since you have not provided any details on the product/services and where you will be selling your products/services, it is very difficult to provide more advise.  Best of luck. Crystal Broughan Marks Gray, P.A.... Read Answer

Mr. Contois  Marks Gray. PA in Jacksonville has an estate planning attorney, John Crawford, and an intellectual property attorney, Crystal Broughan.  We will gladly assist you with your estate planning.  You can reach us at 904-807-2180.   Best regards Crystal Broughan Attorney at Law... Read Answer

The old world practice constitutes copyright infringement and doing the same digitally would be as well. A "derivative work" as such a work that is based on another work is called requires the consent of the copyright owner. The origin work would have to be changed so greatly as to be virtually unrecognizable for the copyright not to apply. At best, minor traces of the original could be retained.... Read Answer

Yes, they may in fact have a legitimate claim. The artist is the owner of an image s/he created. It may have been assigned to Getty and Getty may have the right to enforce the copyright. Getty is very aggressive about going after businesses who use their photos. We have successfully represented businesses  in defending their use. If your picture was taken by your photographer and you bought the rights, or you have a license agreement, or possibly your website developer has a license agreement, you may have a good defense. If not, sometimes we are able to help businesses negotiate a better solution with Getty. ... Read Answer

You really have not provided enough information. Is the Portuguese organization using the name in the U.S.? Does the U.S. organization have a U.S. and/or a Portuguese registration? Without more information, a proper answer cannot be given. It would also be helpful to know the name involved.... Read Answer

My advice would be to invest in the help of an attorney to draft up the document for you.  In my experience, while there are some good provisions here and there floating around the internet, they often have holes in them.  The thing is, you may never have an issue where the document will even come into play, but if you get sued by a client, you want to make sure that document is going to hold up in court and protect you from liability.  At least if you have one custom drafted by an attorney, you'll know what it says, what it does, and how it protects you. ... Read Answer

Assuming that the goods are counterfeit and have trademarks that are registered with the Customs Service, which is the case for major companies like Reebok, Addidas, etc., then there is a high likelihood that the goods will be seized by the Customs Service when they enter the country and will either be destroyed or donated to a charity based on the wishes of the trademark owner. The Customs Service will not fine you or send or have you arrested. However, should Customs fail to catch the counterfeit goods, if you try to resell the goods, you would be commiting a crime and you could also be subject to legal action by the trademark owner.... Read Answer

It depends upon the contract. If you think you have been wronged, bring an action in small claims court. The judge will look at the contract and decide whether you should be paid the fee and/or whether the boutique can use the photos. Not every legal dispute requires expensive lawyers. http://www.flcourts.org/resources-and-services/family-courts/family-law-self-help-information/small-claims.stml Good luck, Todd... Read Answer

If you are printing images that are copied or derivative of copyrighted images, you could be liable for copyright infringement. If you are selling materials bearing trademarks of others that leads consumers to believe that your goods are sold with the permission of or in collaboration with the trademark holders, you could be liable for trademark infringement.... Read Answer

First, I assume by a "general name" I assume you mean a name that is generic description of the type of goods, such as clothes for clothing.  Such terms are not registerable/protectable. However, if you have a unique logo, it would be protectible/registerable with or without the descriptive term. Furthermore, if you file for the combination of the descriptive term and the logo, you will be required to disclaim the descriptive term apart from the combined mark since you cannot preclude others from using terms that are comonly used to describe or identify a particular product.... Read Answer

If you are correct that " this company has tried taking other people to court before and they have not been successful because the name and logo in question are public domain," then you have no obligation to comply with any of their demands and you could take action against them for unfair competition if they are truely attempting to enforce rights that they know to be invalid. I suggest that you consult with an attorney who can assess the situation and appropriately respond to the accusing company.... Read Answer

Yes, it would be cited as prior art. If any section of 102 leads to the conclusion that the 2010 patent is prior art, then the 2010 patent is prior art. You are correct that the 2010 patent is not prior art under 102 (a)(2). However, it is prior art under 102(a)(1), at least as a printed publication. Because it qualifies as prior art under 102(a)(1), it is not necessary to determine what analysis, if any, of other 102 sections would find. For this reason, when a patent is about to issue, we generally do some analysis to see if we want to file any type of continuation application - before the issuing patent becomes prior art. Good luck, Todd... Read Answer

There is nothing wrong with providing a personal biography that includes the names of former employers, even if the names of the former employers are trademarked. There is a problem if you try to use the names of the former employers to imply a quality of the food service. The former might look like this, "Mike was a Disney chef from 2008-2013 at a Walt Disney World Resort." The latter might look like, "Here is your chance to hire your own personal Disney chef."  Good luck, Todd... Read Answer