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Frank A. Natoli
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Frank Natoli’s Answers

5,934 total


  • My company and a vendor settled on an amount via a release agreement. They're now requesting more funds based on miscalculation

    A vendor filed a UCC1 against my companies assets until we paid off an amount of $300,000, which was stated in a release agreement. The vendor is stating that they made a miscalculation in the release agreement and the amount owed is actually 1.3...

    Frank’s Answer

    This requires more than a humble Q&A platform for you sort out and how one goes from 300K to 1.3 mil is not clear. I mean a million dollar miscalculation? What was the actual debt owed? I assume from what you are saying is that there was no security agreement originally but you created the security interest in your release agreement that gave them the latitude to file the UCC-1?

    You really need to get some legal advice here as to your best course of action. 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

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  • Does renewal of an International Trademark Registration forego the need to file a section 71 declaration and pay associated fee?

    It seems nuts to me that, with regard to renewal fees, WIPO charges so much for the basic fee plus continued extensions of protection fees for each designated country when you also have to file renewals direct in some of those designated countries...

    Frank’s Answer

    I think the reason no one has yet to offer a response to your question here is because if they are like me I would have to take a little time a look up a few things in order to address this. it is not something that comes up routinely.

    So of course there might be a lawyer here who either has a good answer for you off their head or is willing to take that time to look it up, but if that doesn't happen here I suggest that you consult with a lawyer in private and discuss your specific situation 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 
  • Question about an image on my website, in which a company is claiming it to be a copyright violation...

    I have an image on my website that was obtained through some free image database. I just received an email from Getty Images stating that the image belongs to them, and that simply removing the image will not suffice, they want me to pay for the ...

    Frank’s Answer

    No one is going to sue you in federal court over the use of one image on one website. McCormick or whatever firm that sent this demand are working on a contingency and hope to extract some money out of you for their loss. The reason why their demand now is much larger than any licensing fee is because of all the time and effort involved with discovering infringement, sending demands, dealing with responses, negotiations, etc.

    Doing nothing is a perfectly valid strategy given the incredibly low chance they will take any action. But we also have no crystal ball and as noted they will on occasion file against an infringer but in the vast majority of these cases they have good reason to believe the infringer can pay damages and has also likely been an enterprise infringer. You are also free to try to negotiate with them and in most cases they will take less than their initial demand.

    Getting a lawyer involved can help because once that lawyer makes contact then they have to go through your lawyer and can no longer contact you about it directly unless they serve you of course. But you still need to pay that lawyer something right? This is where the balance comes in.

    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 it legal to make food out of a cookbook someone wrote and sell it commercially? As in starting a food business?

    if so do you need to state of given them credit on the food label?

    Frank’s Answer

    The answer to your question is flatly YES. No one can lay claim over a recipe as that is just a fact (1 part X, 2 parts Y, etc.). And while a recipe can certainly be treated as a trade secret it would lose that status as soon as it is published in a book. Lastly, who the heck is going to know or care? How would anyone possibly even know it was that exact recipe? And if you change one simple thing would it not then be a different recipe?

    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 
  • Civil case: business suing individual that appropriated trademark symbol, made alterations, set up "look-a-like" websites.

    Bashing business & humiliate individuals at business w/hard to find public records & past criminal records - some of which were dismissed. Plaintiff asserting loss of business, trademark infringement & malicious/intentional defamation. Defendant i...

    Frank’s Answer

    It sounds like you are already deep into a big legal mess so I'm a little surprised you do not have a lawyer helping you out already. But I think what you describe here may certainly be seen as a criminal extortion. I'm going to tag this under litigation because I think that might be the more appropriate area as this is not really an IP question even though the underlying matter concerns IP infringement.

    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 wrote and produced with my own money a short film. The person I hired for the direction/production/edition stole my project.

    Unfortunately I trusted her and we haven't signed any contract. It was my first production and she gave me an excellent deal. Now she have all the originals for the edition and she doesn't answer me at all. I have all the digital proof with all ou...

    Frank’s Answer

    Look, if what you are saying is that you paid her money to produce something for you and she took that money and did nothing for it, or retained the work product for her own benefit then yes of course that is actionable. There may certainly be facts involved that can affect an outcome that we are unaware of here.

    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 
  • My boss instructed me to capture high school mascot images from the net and republish on his site. Is that legal?

    As a graphics artist, my new employer assigned me the task of snipping high school mascot graphics from all over the Internet as I find the mascot images, upload them in his database which then republishes the mascots on his various websites that ...

    Frank’s Answer

    I actually think the bigger problem might be copyright infringement more than trademark infringement. This is because while these mascots may very well be trademarks employed by the various schools, your employer's use of them is not really trademark use if I understand you correctly. That is, he collects the images then I think you are saying he then republishes or packages them to pitch these schools on an ad campaign of some kind? If I am correct or even kind of correct I think using the mascot images in this context would not create the kind of market confusion that would be the crux of a TM action especially if the only people that se this are your employer and the schools he is pitching, but it would constitute a copyright infringement because copies are being made and then used to help promote his business without permission of the owner. This of course assumes that we have copyright material as the subject which I would imagine.

    Either way, it sure sounds problematic and you could possibly be exposed as well, but I don't think that exposure is terribly high in such a case.

    If you have real 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 
  • Can a registed trademark owner take the domain name away from another if it is the pural form?

    A friend stole my business model I have been running and launched a website directly competing with me. For example sake: he had upcentsratings.com. I created upcentsrating.com and cloned his website, clearly infringing. upcentsratings.com registe...

    Frank’s Answer

    The only way you are going to receive any advice on something like this that you can rely on would be for you to consult a lawyer and flesh out all the details. You received some good insights but at this point your facts invite more questions than answers. If the domain was infringing on an existing trademark then merely making it plural does nothing. Just like I could not get away with using the following for my tech start up: "Googles" or "GoolgePlus.com" or "Goolgemenow.com" etc.

    Business models cannot be stolen. No one can claim a business model. If that were so then we would only have a dozen or providers for all the goods and services in the universe. The trademark assuming it is not actually generic or highly descriptive can be claimed and if someone uses it in their domain and in bad faith it is actionable as my colleagues note.

    I'm not sure if anyone else mentioned this, but you might want to do some due diligence on the trademark in any event before taking measures here because if that has not been done someone else might in fact have senior rights to 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 
  • Do I need permission to use a trademark as part of a merchandising product?

    I am planning on making Slash (the guitarist) posters to sell. I created original artwork for the posters, however, I am using his name in the poster, which is trademarked. Could I get a trademark claim when I start selling merchandise using my ar...

    Frank’s Answer

    Slash is quite aggressive in policing his IP. We are working with a client at present who he accused of infringing and violating his right of publicity.

    What you describe sounds very problematic to me so I would be sure to get some legal attention before you make any investment in this.

    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 
  • Do I need permission to use the nike swoosh on a class shirt?

    We have class shirts at my high school every year, and this year the top voted idea was "Just Do It Juniors" with the swoosh underneath, ordered from the website custom ink. It's not for a commercial/profit use, and we are not reselling it as nike...

    Frank’s Answer

    Look, Nike is not policing their mark for this kind of use. No one will likely know or care about your class shirts. But the fact that you have little exposure does not change the fact that it is still infringement and not the right thing to do.

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