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Thilo Claus Agthe

Thilo Agthe’s Answers

7 total

  • Can I use a car's name in the name of our club. Ie. Cleveland Camaro Club.

    We have used a car name as part of an enthusiast club for some time. We want to copyright our club name but it includes the name of that car.

    Thilo’s Answer

    My colleagues are correct in pointing out that you cannot copyright your club's name, if anything you can possibly get a trademark or, more appropriately, a service mark. Your use of the term "Camaro" in your club's name falls under the doctrine of "nominative fair use." In your case, you have a club that has Camaro afficionados as its members. The only accurate way to describe your club in its name is to use the name of the car that you are fans of, i.e. the Camaro. Under the doctrine of nominative fair use, this is permitted.

    This does not mean that Chevrolet won't try to stop you (though I doubt they would), but you have a very good defense against any claim of infringement, namely, that this is nominative fair use. In other words, I don't think you can't use the name in your name or even in a trademark/service mark.

    Be aware, however, that your trademark/service mark is extremely descriptive. Therefore, unless you can show that the mark has become distinctive, either though use in commerce for a minimum of five years or by other evidence, you will have a problem getting the mark registered in the USPTO. The most you might get is a registration on the "supplemental register," which is better than nothing and has its advantages and disadvantages.

    You really should consent a trademark lawyer before spending the money on an application to register the mark, so that you have all the necessary information.

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  • Corporate Email

    I forwarded to my home email from my companies Email system mainly to provide a backup in the event the corporate system failed. In order to make it easier, I dumped all the emails into a Excel document and sent that home (instead of having to hun...

    Thilo’s Answer

    There are a lot of unanswered questions here, including how sensitive the information in the emails was, what does it say about email in your employee handbook (assuming there is one), do you have an employment agreement with relevant passages, did you sign a non-disclosure agreement when started your employment.

    From what you have written, I would assume that the company could fire you, should they want to. I believe that Illinois is an employment at will state, and this sort of conduct could certainly rise to the level where a dismissal might be warranted and justified.

    I think the best thing you can do (which you appear to already have done) is to explain and beg forgiveness, pledging never to do it again.

    Good luck to you!

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  • Can you copyright a video that you appear in?

    Imagine you have a video, and you appear on portions of the video without your consent, but others also appear in the video. Can you still copyright it or the portion where you appear in?

    Thilo’s Answer

    • Selected as best answer

    The answer is no. Copyrights are owned by the creators of the works. In other words, the maker of the video owns the copyright. Persons appearing in a video have no copyright claim unless they are also the creators.

    The issue that you should be concerned about here is right to publicity and/or privacy. If your image in the video is exploited for commercial reasons, you may have a claim for damages, but these questions always revolve around the specific facts of each case and it is very difficult to provide a general answer on whether such a claim exists.

    The subject matter of privacy and right to publicity is very tricky. I urge you to consult a lawyer to obtain focused advice.

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  • How does the date a social internet website company domain name affect proof of ownership if the company was incorporated later?

    I had already secured a company domain name a few years ago (while in college) for my social networking website and continue to own it. I wanted to know if this was a good first step in establishing the date I first established the company as I di...

    Thilo’s Answer

    I'm afraid that ownership of a domain name registration in the situation you describe is unlikely to establish a date of first use in any connection. Certainly, if there is no actual use of the domain name, you have not established trademark rights to the domain. The date you started the company is the date on which you incorporated it. The domain name registration does not help you in that respect.

    I'm glad that you have spoken to professional web designers and, more importantly, that they have agreed (or would be willing to agree) to sign a non-disclosure agreement. NDAs are an absolute necessity.

    As for what to offer in payment, money is always best. However, if that is a problem for you, you may want to offer a share in your company and you might also consider appointing them as an officer of the company. He/she would of course take the chance that nothing ever comes of the project. On the other hand, there is the potential of a large payoff in the future.

    Good luck with your project and I hope this helps.

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  • Intellectual Property

    For the following timeline any ball park estimates on the time scale we are talking ? Filing----------examiner assigned? examiner assigned--------initial decision? Time to respond to office action? If issued a refusal after your OA response is...

    Thilo’s Answer

    1. Approximately 3-4 months right now (in my experience)

    2. Generally very soon, 1 to 2 weeks, sometimes less.

    3. You have 6 months to respond to an office action., and that is a hard deadline. No extensions are possible.

    4. If you receive a final refusal, you have another 6 months to either comply with all outstanding requirements or to file an appeal of the decision. That is also a hard deadline and no extensions are possible, except that if you file a cancellation action against a trademark that has been cited as blocking the registration of your mark, your application will be suspended while that cancellation action is pending, which could be a very long time.

    I hope this helps!

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  • Trademark attorneys

    Hi there is it possible to prove a registrant has abandoned their mark prior to the three year time period commonly cited . I have a letter from the company stating that the product was discontinued due to lack of sales two years ago. They expla...

    Thilo’s Answer

    I agree generally with the advice given my colleagues in response to your question, but there is one additional issue you must consider: if you "buy" a trademark, the way it is transferred to you (including the registration) is through an assignment, which is then recorded with the U.S. Patent and Trademark Office. The thing about assignments is that, in order to withstand later scrutiny, they must be made along with the goodwill of the business symbolized by the trademark. If the goodwill is not assigned/transferred along with the trademark, you have a naked assignment. The result is that the registration can be challenged, as well as your rights to the trademark itself - the trademark becomes essentially worthless. In situations where the assignment of the goodwill is not possible for some reason, I generally recommend to my clients that they should obtain an abandonment of the prior trademark (either through a cancellation action or negotiation with the owner) and contemporaneously file their own application for registration of the same mark.

    It is much more advantageous, however, if you can obtain an assignment of the trademark (and the goodwill), since you would then become the owner of the existing registration and also get the benefit of the prior use of the mark, (the earlier filing date). If the mark has been in use and registered for the requisite number of years, it may even have become incontestable, another benefit you would obtain. However, as I said above, that would require that the goodwill is transferred along with the trademark.

    I join my colleagues in recommending that you obtain the services of a qualified trademark attorney, who can explain all of your options to you and also recommend the best strategy.

    Good luck!

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  • I filed for a trademark that has a potentially blocking mark in another class and different G&S....

    Hi there, I filed an application for a trademark that may have a potentially blocking mark, but it is not clear cut and will be arguable through office actions etc. Suffice it to say I have very good evidence for a Petition to Cancel the mark, but...

    Thilo’s Answer

    Generally speaking, in my experience the best course of action is to wait until the USPTO actually finds a conflict and issues an office action on the basis of likelihood of confusion. At that point, depending on the exact nature and content of the refusal, you can judge which step to take next. Of course, every case is different and I would have to know the exact circumstances of your case in order to be able to give specific advice.

    If you have evidence that the blocking mark is actually not in use and has not been used in at least three years, you can file for cancellation of the blocking mark and your own application will then be suspended (you have to inform the examining attorney at the USPTO). If there is no use of the blocking mark, it is not at all unlikely that the other party will simply default, the registration will be cancelled and your own application will move forward. You should make sure to do some research on the other mark, including possibly hiring a private investigative service to do a use investigation.

    I would only approach the owner of the other mark if you have no grounds to cancel the mark and you have already tried to argue against the refusal to register your mark. At that point, you can ask for a consent to registration agreement or ask the other party to abandon their mark.

    I would definitely not contact the owner at the outset, as that owner has no particular reason to agree to any arrangement with you and may actually try to extort money in exchange for their agreement not to oppose your application, should it be published.

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