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Frank A. Natoli
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Frank Natoli’s Answers

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  • Can I sell a garment If I have made it from a licensed pattern that I've purchased?

    For example, when my kids were children, I made them costumes from the Wizard of Oz movie using licensed patterns that I purchased at a fabric store (which I realize is legal for my own in-home use). Would selling the costumes instead of using th...

    Frank’s Answer

    If the pattern only concerns copyright elements, that is design / expressive elements then you would be free to create items from that and sell them without threat of legal action as this is what the "first sale doctrine" is intended to protect.

    But if the pattern is possessed of trademark material, whether that be text marks (NY Giants) or logo/image marks (McD's Golden Arches, or famous trademark characters like Mickey Mouse) then while you can make anything you want for personal use, you would not be free to create items from this and commercialize them. This is because the trademark holder's only endorsed the actual fabric or material that you purchased and not the various items you intend to fabricate from that .

    Let me offer a quick example so it's clear. It would cost me a lot of money and effort to obtain a license from the NFL to make and sell backpacks with their team logos on them. But I can easily find and purchase NFL fabric legally that has all the team logos on it. This of course does not mean that I can then use that material form which to make my backpacks and circumvent the licensing regime right? If so, then why would anyone even pay for a license? The fabric in this case is sold for personal use, but not for commercial use UNLESS that is part of the deal.

    I hope that was clear but if not, 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 
  • Starting a business what do I need to trademark? Logo, name, tagline? Logo and tagline locked up together?

    We are an online marketplace with national/global aspirations, and we will be pursuing trademarks, but are confused how many iterations of our logo need to be trademarked: horizontal version and vertical version, with tagline, without, etc...? If ...

    Frank’s Answer

    So you need to consider each on its own or at least in most cases, which is why you need to get some specific advice and not just rely on general responses here. So for example, the word "McDonald's" is the business name and a standard character text mark; the golden arches is a logo of course but this is also a trademark referred to as an image mark or stylized mark and will go on it own separate application. This is because image marks, those where you lay claim to artistic or graphical elements like color, are taken as a whole. So trying to stick your text into the image mark and thinking that it too will be adequately protected can be a big mistake. In some cases it may very be protected and in others it will leave you exposed. Now "I'm Lovin It" is a tagline or slogan and is its own text mark. "Big Mac" is a product name along with "McNuggets" and are also text marks that are cleared and filed separately - you get the idea...

    That said, 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 
  • How can I trademark something?

    I have a symbol that I'd like to trademark & use as a brand name for my crafts

    Frank’s Answer

    Frankly, I would be more concerned about the standard character text name first before I would the logo image mark.

    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 
  • Is my photography and graphic design work owned by me or the company?

    June 2014, I was hired as a full-time employee by a start-up boutique agency. There was a contract presented to me but nothing was signed after I requested changes and none were made. Photography was not initially entered into the scope of my work...

    Frank’s Answer

    Just based on what you offered here, it sure sounds like the employer has acquired the rights to these by operation of law, but you know this can be a complicated question.

    If you are serious about this issue, 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 
  • When determining the relatedness of the goods in a trademark likelihood of confusion analysis what role does intl class play?

    Consider the following situation. Product XYZ is listed in class 030 with goods described as "brownies containing added vitamins". In an office action the examiner finds a likelihood of confusion with a mark in class 005 with goods listed as "diet...

    Frank’s Answer

    You can't honestly expect to receive anything here that is going to be of much help. This kind of advice cannot be rendered in a vacuum nor in the hypothetical.

    Any trademark registration effort starts with a comprehensive clearance that would have at least put you on notice of this other mark and now that a substantive office action has issued it needs to be responded to properly and supported by legal authority if you stand any chance of changing the examiner's mind and overcoming the OA.

    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 
  • Is there a year limit to the statute of limitations for intellectual property law?

    I am contemplating the publishing of a short story that is comprised of numerous quotes from personnel that were affiliated with the same firm I retired from in 1998. The quotes are from the years 1994 and 1995 and focus on a comical situation inv...

    Frank’s Answer

    I think there is some confusion here. You are always free to write about anything or anyone you want without the need to seek permission. The issue is that without permission it is much more likely that anyone of those identifiable persons in your work might take issue with the veracity of your statements, which gives rise to claims for defamation. Further, publishers dislike unauthorized works about people. You are also always free to use the name of a business (trademark) descriptively in text to refer to that business. Of course, if what you are writing about makes a lot of people mad or uncomfortable they may bring an action even if they do not have the best of claims.

    Regards to using quotes, are you talking about using quotes from some copyrighted works or just quoting people? If you mean just quoting people, you are always free to do that assuming what you are saying is true. If you for example misquote someone you name in your book that then makes them out to be a criminal then you will likely be sued. but so long as they are truthful you should have no problem. If you mean using quotes from copyrighted works see below.

    Using quotes will generally be permitted. This is largely because using what amounts to a very small portion of a much larger body of work will not be considered copyright infringement and short phrases or small groups of words are not protected under copyright law. Now in some cases, especially where the work from which the quote was pulled is widely recognizable (the money part; like the chorus of a very famous song for example) it may be a copyright infringement issue.

    That said, some phrases are being employed as trademarks (slogans or taglines) and you need to be careful that whatever you use will not be considered infringing. In most cases, this will probably be obvious but certainly not in all.

    Further, using the names and likenesses of authors can easily become a publicity and privacy rights issue, especially if it seems that you are playing off of their celebrity and name recognition.

    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 
  • Help with computer companey

    My companey builds computer kits. How do we protect us so that if people build it wrong, and start a fire, we could not get sued.

    Frank’s Answer

    Your best protection will come from setting up a proper business structure (liability shield), having a comprehensive liability insurance product and proper legal drafting as between you and the companies that make the units as well as your customers. Many manufacturers of course will carve out protections and indemnifications regards to their efforts and engineering or design flaws, which may be found as the cause for such injuries. So anytime you are in the line of distribution you are exposed to some extent.

    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 
  • How can be protect our group name and logo?

    I have non for profit cultural dance troup and would like the name to be protected as well as our logo so that it is not used by others. Suggestions please?” It is a group of families that practice, dance, and perform in different events.

    Frank’s Answer

    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 need some advise concerning intellectual property. Can slogans or phrases be trademarked or copyrighted?

    My son sells tshirts on the internet. He sells the shirts through Facebook advertising. He made a design using the text of this image. http://bit.ly/1OKZm1w His design only used the wording, but had another image. http://teespring.com/iatd...

    Frank’s Answer

    So, as noted, short phrases are not subject to copyright protection because they lack the creative expression required for that to affix. But of course a short phrase can serve as a tagline or slogan, which is a trademark. For example, "I'm Lovin It."

    Now, it is important to note that a trademark is a source identifier which tells us from where a good or service comes from in the market. Merely, placing a phrase on a shirt as was done here does not mark it a trademark. Only if it actually serves as the source identifier will it be considered a trademark and protected as such. More on that below. Usually, the trademark is located on the label of the shirt NOT on the front of it, but that is very possible and common to do these days as well. So the best guess, and that is all this is at this point, is that this other merchant just doesn't like the fact that your son is using the same phrase on his shirts and that is probably too bad. But it is possible that one can make out trademark use this way under certain conditions, so I would not be too dismissive either and anytime you get a legal cease & desist letter like this it is probably worth consulting a lawyer in private to make sure you are not exposed to a law suit.

    Now, assuming that it is being used as a trademark and this other guy is laying claim to it, then we need to analyze other facts. Is there a registered trademark for it? If so, who was using it first and where? If not, again, who was using it first and where?

    That said, 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 
  • Hi, I have an Internet radio and want to commentate to the Machs or games while they are being played, if I do that do I will in

    Hi, I have an Internet radio and want to let my radio website users/visitors commentate on games (baseball, football etc) while they are being played, also I want to commentate on these games while I watch them being played on TV, if I do that do ...

    Frank’s Answer

    This sounds very problematic because you are re-broadcasting these games without express permission of the rights holder. You see, the argument here is a simple one. Think of it this way. The game being broadcast is on some pay-for-TV channel. So instead of paying for it, I can just go online, login to your platform for free and get the play-by-play without having to pay for access. Can you see how that might be a problem for say NFL or MLB?

    Now, after the fact you would be free to sum up the game details, etc.

    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