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Frank A. Natoli
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Frank Natoli’s Answers

7,138 total


  • Should I apply for a trademark?

    I will be selling t-shirts with an original phrase and a design to go along with it. The phrase is the more important component. Should I protect this in some way?

    Frank’s Answer

    So just placing a phrase on clothing does not mean that it is serving as a trademark. This can also be ornamental use (like shirts that say "peace" or "love"). . But sometimes the phrase does serve as the source identifier and that can be protected such as "Just Do It."

    If you are investing in this phrase as a trademark then know that in the fashion biz the mark is considered the centerpiece. At this point you really need to have a proper clearance conducted on the standard character text name you are employing as a trademark (the logo is usually much less of a potential problem) and this is not something you are going to want to do yourself. Know as well that merely registering your business name with a state or county agency or acquiring a domain does not convey any right to use that name in commerce as a source identifier or trademark. For example, I can presumably register my new tech start up "Boogle" with the PA secretary of state because there is no other business already doing business there under that name, but this does not mean that I would not be infringing on the Google trademark, which I would be. The onus is on you to ensure the name you choose is not a problem.

    If you have never actually properly cleared your trademark, this would be your best next step because for all you know there could be someone located elsewhere but doing business in your area or who has a federal registration and prior rights. 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 links below on the importance of the due diligence process and common start up mistakes from Entrepreneur Magazine 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 and know you are free to work with counsel located anywhere as you have many options available not just those that provide services in your home state.

    http://www.entrepreneur.com/article/220224

    http://www.avvo.com/legal-guides/ugc/the-import...

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • I used to write for a site that no longer exists. If the company I wrote for no longer exists, does the copyright revert to me?

    Used to write for a website that no longer exists. Unsure if owning company still exists. Looking to gain copyright over my work. I believe that, at the time, the company that owned the website owned the copyright. I assume they still do if I they...

    Frank’s Answer

    As noted, it will depend on who owned the copyright interests. Were there any written agreements in place? The rights never "revert." If you were independent and not an employee they the IP rights remained with you while they received an implied license that cannot be frustrated by you and which can be transferred to others like if they sold off the business or its assets. If you were a bona fide employee and this material was created within the scope of that employment then you never owned any of it as it transfers to your employer by operation of law.

    If this is a serious matter, 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 
  • If it is desirable enough, can you license intellectual property that is still patent pending?

    My attorney is finishing up the provisional application for my intellectual property and I will be patent pending soon. I know exactly which company I will license the first patent to and how to market it. Is there precedence for licensing/assigni...

    Frank’s Answer

    You are free to engage in an agreement, but you and the other party run a risk if the subject of that agreement has no formal protections attached. There is absolutely no guarantee that your PPA will convert as it is today into a full patent.

    Further, the fact that you have hired a lawyer to handle the PPA and I assume prior art searches, etc. but you find yourself here asking this question makes me think you have little faith in that attorney. Make sure you get competent advice before making any serious investment.

    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 copyright a scientific statement?

    I came up with a new definition for a term related to electrical engineering. Can I copyright the statement and charge royalty fees when other authors use it in their books?

    Frank’s Answer

    No, copyright protection affixes to creative expression not a single word or short phrases. It is not possible to merely coin a term all your own. You can protect a trademark (brand identity) if it is used to identify a good or service in commerce (e.g., Google, Exxon, McDonalds).

    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 
  • While still webcaming, what is my best course of action?

    I am interested in becoming a webcam model. I have worked in other areas of the commercial sex industry previously, but webcaming fits my current preferences best. The site I have contracted with collects my live feed and turns it into Video on De...

    Frank’s Answer

    I agree that this has far too many moving parts to be address here over a free and public Q&A forum. You are of course free to negotiate with any entity you please to work out the most favorable terms. In most cases, the production company will retain all the IP rights and in this business there is a very good chance, and this is speaking from experience with clients in this space, that they might not even honor the terms of any contract you enter into. So make sure you engage with a reputable company.

    I suggest that you consult with a lawyer in private and discuss your objective and 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 
  • 1. How much protection does a DBA cover Legally? 2: What names should I get Copyrighted?What If I plan on using abbreviations?

    When starting an apparel company how important is it to get your company copyrighted? What is the most economical way to get your business off the ground and still have most of your bases covered legally and follow tax parameters?

    Frank’s Answer

    You have a lot of legal considerations here that should be discussed with a lawyer before you start investing.

    Regards to the name we are talking about your trademark and in fashion that is considered the centerpiece. At this point you really need to have a proper clearance conducted on the standard character text name you are employing as a trademark (the logo is usually much less of a potential problem) and this is not something you are going to want to do yourself. Know as well that merely registering your business name with a state or county agency or acquiring a domain does not convey any right to use that name in commerce as a source identifier or trademark. For example, I can presumably register my new tech start up "Boogle" with the CA secretary of state because there is no other business already doing business there under that name, but this does not mean that I would not be infringing on the Google trademark, which I would be. The onus is on you to ensure the name you choose is not a problem.

    If you have never actually properly cleared your trademark, this would be your best next step because for all you know there could be someone located elsewhere but doing business in your area or who has a federal registration and prior rights. 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 links below on the importance of the due diligence process and common start up mistakes from Entrepreneur Magazine 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 and know you are free to work with counsel located anywhere as you have many options available not just those that provide services in your home state.

    http://www.entrepreneur.com/article/220224

    http://www.avvo.com/legal-guides/ugc/the-import...

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • Should I form a LLC, do I need to trademark my company name?

    I run a T-Shirt business out of my apartment, and I am selling products over the internet, and business is picking up.

    Frank’s Answer

    At this point you really need to have a proper clearance conducted on the standard character text name you are employing as a trademark (the logo is usually much less of a potential problem if that is relevant) and this is not something you are going to want to do yourself. Know as well that merely registering your business name with a state or county agency or acquiring a domain does not convey any right to use that name in commerce as a source identifier or trademark. For example, I can presumably register my new tech start up "Boogle" with the TN secretary of state because there is no other business already doing business there under that name, but this does not mean that I would not be infringing on the Google trademark, which I would be. The onus is on you to ensure the name you choose is not a problem.

    If you have never actually properly cleared your trademark, this would be your best next step because for all you know there could be someone located elsewhere but doing business in your area or who has a federal registration and prior rights. 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 links below on the importance of the due diligence process and common start up mistakes from Entrepreneur Magazine 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 and know you are free to work with counsel located anywhere as you have many options available not just those that provide services in your home state.

    http://www.entrepreneur.com/article/220224

    http://www.avvo.com/legal-guides/ugc/the-import...

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • Can a trademark owner whose mark has been cancelled oppose an application that he thinks similar?

    I applied for a trademark U.W.J., and a guy who owns another mark U.W.D. in the same international class, opposed it. I searched for his mark on USPTO website, his registration has been cancelled. So (1) Is my mark confusingly similar to his? (2) ...

    Frank’s Answer

    The short answer is yes they can oppose or petition to cancel based on their common law use of the mark even if the federal registration has lapsed.

    As to whether it is confusingly similar really depends on a number of factors that cannot be addressed here. How saturated is this acronym in the related goods or services?

    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 links below on the importance of the due diligence process and common start up mistakes from Entrepreneur Magazine 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 and know you are free to work with counsel located anywhere as you have many options available not just those that provide services in your home state.

    http://www.entrepreneur.com/article/220224

    http://www.avvo.com/legal-guides/ugc/the-import...

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • If we use logos on our site, would we infringe on trademarks? If so, could we get around it by removing logos from figurines?

    I'm creating a website that promotes copywriting (content development) services. Our theme includes superheroes. The logo is 100% original. We have also added elements commonly recognized to be superhero-esque, like a lighting bolt here and a star...

    Frank’s Answer

    You know, I'm sure you are aware that there is no way for anyone to offer a conclusive answer here without knowing all the details. What you describe absolutely sounds like it could be both trademark and copyright 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 and know you are free to work with counsel located anywhere as you have many options available not just those that provide services in your home state.

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question