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Frank A. Natoli
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Frank Natoli’s Answers

6,162 total


  • Is there a unitariness exception to being deceptively misdescriptive?

    If a mark is being cited by an examiner as being deceptively misdescriptive is proving the mark to be unitary a defense?

    Frank’s Answer

    It is not really a "defense" - it is more of an argument. I suppose it's technically possible for individual components to be deceptively misdescriptive and when put together in a unitary mark create an impression/connotation that is now no longer deceptively misdescriptive, but i can't think of what that would look like. I would get some guidance on this before jumping in and I would hope that you properly cleared the mark before you sent in the application. If not, below offers a brief overview on that.

    Your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance.

    Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the link below for a brief article from Fox Business News on the importance of the due diligence process and our overview guide.

    I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • What are the chances that a major game manufacturer would steal your idea if you enter their contest without copyright/patent/TM

    gaming contest put on by major game manufacturer

    Frank’s Answer

    Far too any unknowns to your query here. Your "idea" of a game is simply not protectable. Copyright affixes automatically but a timely registration with the US Copyright Office is required in order to prefect your bundle of rights such as right to access the federal courts, the right to statutory damages, the right to attorney fees, etc.

    The trademark rights stem from use, but you would be taking a risk if you placed the mark in commerce before a proper clearance and I would file an application with the USPTO as well.

    If patent is even relevant, just know that you have only a 12 month grace to be in public with the invention before you sacrifice the invention to the public domain and many foreign markets have no such grace so getting even a provisional application in may be wise.

    I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • I am asking a company to use a NBA logo in a graphic design which i am paying them for. Do they need permission to use the logo?

    It is a one time graphic design that will not be publicized for money.

    Frank’s Answer

    You received some good responses. The company is exposed to claims of contributory infringement under the theory of secondary liability especially where famous marks like the NBA are concerned. If this was not a famous mark, for example, the logo for my law firm then the company would likely be able to rely on what is called the "innocent printer" defense and their exposure would be limited to their profits made from that transaction. But in your case they would be foolish to accept that order.

    If you need further clarification, I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • Can I sell public domain photos taken from government websites?

    I am a military journalist and all the photos and videos I produce are put onto a public domain website, dvidshub.net third parties have been downloading my products, and thousands of other journalists products, and reselling them. Is there any le...

    Frank’s Answer

    I agree with my colleague. It greatly depends on your specific station and any written agreement you have that governs your work. Absent that information, your question just cannot be answered here. But assuming you are an employee then everything you produce becomes property of your employer if done with the scope of that employment by operation of law.

    If this is of a serious concern, I suggest that you consult with a lawyer in private and discuss your best course of action in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • Had a interview on the TV station and I was given permission to use it. Is that copy write infringement?

    I was asked to be on a TV station in Palms Springs California. 2 years ago and was given the video of my interview for my use. I took a snapshot of me being interviewed and now a guy from the TV station says I cant use it now. He wasn't employed t...

    Frank’s Answer

    Really? Because of one still frame taken during the interview? That seems odd and I agree that on its own does not sound like infringement.

    How you proceed depends. You can just ignore them and hope that they would never invest in taking the matter further or if you really want to use it I suggest that you consult with a lawyer in private and discuss your best course of action in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • I plan on building a custom car that will be modeled after a Hotwheels car, would this be considered copyright infringement?

    The car would only be for personal use and would not be sold, but the model will be used to make a exact replica for the body of the car.

    Frank’s Answer

    Asker, if this is solely for personal use you have no problems. No one is going to know or care let alone bring a federal case over your one model for your own non-commercial uses. But if you are planning on using it to promote yourself or business, put online, enter it into popular contests, etc. then you have more to worry about.

    If you have any concerns, I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • TRADEMARK- CAN I trademark a phrase with the word "God" in it? What are the limitations of a trademark? thank you.

    Can I trademark a phrase with the word "God" in it? thinking of 3 words...one word would have "God" in it. thank you

    Frank’s Answer

    As noted, there is no prohibition to using "God" in a trademark unless it is done in some objectively offensive way. But before you invest anything behind the mark you need to properly clear it.

    Your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance.

    Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the link below for a brief article from Fox Business News on the importance of the due diligence process and our overview guide.

    I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • I purchased a Tshirt design through some software. Then I found that it was copyrighted. The seller claims he is not responsible

    The tshirt design was sold by a person through his software, and delivered in an image file, such as a jpg or png file. This image was found to be copyrighted by another person. The owner of the software states that he is not responsible because o...

    Frank’s Answer

    You received some good responses. Just to pile on, the only way you can hold the software owner responsible is if you have a written indemnification in your terms with him that holds you harmless and commits to defend you.

    If you need further clarification, I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • Using Movie posters or screenshot on movie review is under copyright infringement?

    Hello, I am publishing movie review and celebrity news. So using a movie poster or a screenshot from a movie in a movie is subjected to copyright infringement? Also using photo of a celebrity in celebrity profiles, news? Here is my site I...

    Frank’s Answer

    Just because you are discussing a specific celeb does not mean you get to use any image of that celeb you want to enhance your product. You will have to license an image from places like Getty images. I'm not sure exactly what you are referring to regards to the poster, but presumably this too would not be permissible. If you are using, for example, a very short clip to illustrate your critique then that is a good example of fair use.

    If you are taking this venture seriously, I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • Common law trademark rights and websites?

    Suppose that I create a logo for a website and suppose I acquire common law trademark rights on it. Do I have common law trademark rights in every place on the globe because a website can be viewed internationally?

    Frank’s Answer

    You received some good responses here.

    Courts have really just begun to carve out proper analyses to help determine common law rights or more specifically geographic market areas in an internet age. They will look at a number of factors to ascertain the zone of market penetration and the zone of reputation. For example, how many visits to the site and from where, where goods are being shipped and the volume of sales, the degree of advertising, among others. So merely having a website does not mean you are doing business everywhere in the trademark sense and most certainly less so internationally. It is important to remember that many nations do not recognize common law rights in trademarks. For example, in Germany only if the mark is a trade name (business name) could you rely on a common law prior use argument. If you are interested in protecting the mark abroad you need to consider all your options carefully and figure out the best strategy with your own IP counsel, but not before you deal with the mark here in the US if you have not done so yet.

    Your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance.

    Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the link below for a brief article from Fox Business News on the importance of the due diligence process and our overview guide.

    I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question