Skip to main content
Maurice N Ross
Avvo
Pro

Maurice Ross’s Answers

5,817 total


  • I'm trying to start a beauty line, since I made this products do I trademark or patent it? Additionally, I have created a logo.

    There's a recipe for skin and hair care that has been passed on in my family. I have decided to start selling since this product does work. How can I go about it to make this a business?

    Maurice’s Answer

    • Selected as best answer

    Congratulations on your new business. However, none of us can answer your questions without a substantial amount of additional information about you, your product, the history of this recipe and how it was used and passed on in your family, and many other matters.

    It is premature to think about obtaining patent, trademark or copyright protection, but all three potential avenues of protection need to be considered. But the first and most important step is to make sure that your proposed products will not violate patents and other intellectual property rights owned by third parties. We call this a "clearance search". Before you can safely begin to market and sell this product, you should engage intellectual property counsel to conduct a clearance search. The results of this search will be a critical factor in determining your company's commercialization and intellectual property strategies.

    After this search, it is quite possible that you will seek patent protection for your products, and trademark protection for the "brand" name that you use to market the products.

    Note that commercializing a line of skin care products is complex endeavor. Aside from the intellectual property issues, skin car products are highly regulated at the state and federal levels. At the Federal level, the FDA, FTC, and CPSC have relevant safety, testing and labeling regulations, Additional regulations exist at the state level, including, for example, regulations governing how, where and by whom products are manufactured and imported.

    Clearance and regulatory compliance searches are expensive. Compliance with safety, testing and regulatory requirements is a complex and expensive matter. You are going to need significant capital to start a business----thus, unless you are independently wealthy (good for you if that is true), you are going to have to raise a significant amount of money. You will need to find investors, draft a business plan, prepare an offering memorandum and set up the corporate legal foundation that you need to operate a business with investors.

    All of this requires substantial legal and business expertise. Your first step should be to hire a law firm (not an individual lawyer) which has experts in these various disciplines. No one lawyer can give you all the advice and assistance you need. Lawyers, like doctors, tend to specialize in specific legal areas or industries. You will need lawyers who specialize in corporate law, intellectual property, FDA and FTC regulatory compliance, and business fund raising. You should hire a law firm that helps start up companies and has lawyers who specialize in each of these areas, and probably others, And let's be honest here---this costs real money. But if your product is commercially viable, you should be able to work with legal counsel to develop a plan to raise the money you need.

    I suggest that you call several law firms and find out how they can help you.

    See question 
  • Trade Mark Law.

    Have entered into a contract with a company overseas to be the sole distributor of their products in the USA market. Based on that, we have trade marked the name for use in USA. Just found out that the company was selling another company in USA ...

    Maurice’s Answer

    You need to retain intellectual property litigation counsel to review all the facts and circumstances, Your question does not contain sufficient facts for me to advise you as to appropriate strategies, You may have breach of contract claims with the overseas company. You may also have claims against your U.S. competitor for intentionally interfering with your contractual relations with the overseas company.

    On the other hand, without reviewing the contract and investigating the facts, I hesitate to conclude that your rights have been violated here. It is helpful that you filed for trademark protection in the U.S., but if you did so without retaining legal counsel you may have made a major mistake. I hope that your agreement with the overseas company gave you the right to file for trademark protection in the U.S., and that you retained counsel to conduct an appropriate trademark clearance before filing the application.

    In any event, you may have valid claims here. You need to immediately retain intellectual property litigation counsel. This will neither be inexpensive or easy, but you have no choice in this situation other than to retain experienced intellectual property counsel.

    See question 
  • RE: trademarks- just started a business- chose a name, checked go daddy- it was avail. got the .com with it- can i proceed?

    I'm in the US - just in the beginning stages of starting a business. Got a name (was available on Go daddy), I only got the name with .com Can I rest assured that THAT name is mine before I start printing out cards & spend money into business?

    Maurice’s Answer

    • Selected as best answer

    No you are not ready to proceed. The mere fact that a domain name is available tells you nothing about whether you can use the name as a brand for your business. You cannot safely use the name until you retain legal counsel to conduct a trademark clearance analysis. This is neither a simple nor inexpensive matter. For example, even though you are operating from the U.S., in today's global economy, it is rare that is sufficient for you to obtain a trademark clearance analysis only for the United States. Most U.S. start-ups need trademark clearances to cover Canada and Europe as well as the U.S. While trademark clearance analysis is not cheap, your investment will pay enormous dividends in the long term. The worst thing that can happen to any small business is to devote substantial resources toward developing its "brand name" only to find out after a few years that it cannot continue to use that brand name because it violates trademark rights held by others.

    Trademarks (sometimes referred to as brand names) identify the source of goods and services. Trademark rights in the United States arise from use in commerce---you acquire those rights by using them in your business. In most other countries, the first company to file for trademark owns those rights. Regardless, you need to develop a comprehensive trademark strategy for your company, which includes making sure that the brand name that you choose will not violate rights of third parties.

    While trademark rights arise from use in commerce and registration is not technically mandatory, it has become critical in today's economy for even small, start-up business to apply for federal trademark registration with the U.S. government. Thus, once your trademark clearance is successfully completed, ordinarily your trademark attorney will file a trademark application on your behalf with the United States Patent and Trademark Office. A federal trademark registration has numerous economically important advantages for any business, big or small, including a presumption that the trademark is national in scope and that you own it. Without a federal trademark registration, it is very difficult in most situations to enforce your trademark rights in courts. Indeed, many law firms that provide trademark clearance analysis will quote flat fees for the conducting the trademark clearance search and filing the U.S. trademark application.

    Finally, as I mentioned above, it is almost never adequate to conduct trademark clearance analysis only in the United States. If your business plans to have an internet web-site, chances are that it will have customers in many countries. Because trademark rights are national, and there is no such thing as an international trademark, you need to prepare for obtaining trademark rights in each nation where you realistically will be marketing and selling your company's goods and services. You need to retain and work closely with intellectual property counsel to review your trademark strategy, including whether you need trademark protection in Canada, Europe, Mexico, and elsewhere.

    See question 
  • What evidence do I need to file a Lanham Act for Mis-designation of Origin?

    I have been trying to figure out an appropriate law to file a lawsuit against a company for manufacturing and marketing the product I made and the offender is also using the same name. What evidence do I need to have to prove my case.

    Maurice’s Answer

    You need to retain intellectual property litigation counsel to review the relevant facts and circumstances. Note, however, that your question is quite vague? What do you mean when you refer to the "product I made?" If you mean simply that you came up with an idea for a product and/or made a prototype, you may not have any rights to enforce. Our patent, copyright and trademark laws do not protect mere ideas. Unless you are actually marketing and selling this product in interstate commerce, you have no trademark rights and the alleged "offender" would be free to use the brand name that you developed for the product. Further, if you did not file for a patent application within one year of the date that you began to sell or offer to sell this product, disclosed the product publicly, or showed the product to third parties in the hope of commercializing it, you missed the deadline for obtaining patent protection. Unless your product is protected by a patent, there is nothing to stop another company from making and selling it, nor would you be entitled to compensation. Perhaps you have some legitimate claims here, but I am skeptical. Your next step is to retain intellectual property counsel to review the relevant facts and circumstances.

    See question 
  • Intellectual Property Rights Infringement Notice from a manufacturer

    We sell on Amazon and a manufacturer claimed that we were selling counterfeit items, specifically data cables. Due to this complaint, Amazon has shut our account down and refuses to reinstate unless the manufacturer retracts their complaint. W...

    Maurice’s Answer

    Amazon's terms of use allow Amazon to suspend or terminate your account for any reason at any time, including based on allegations that you were engaging in counterfeiting or other illegal conduct, Thus, your only recourse here is to force the manufacturer to acknowledge that its claims were erroneous. This may require that you commence litigation against the manufacturer for a declaratory judgment by a court that you have not infringed its intellectual rights. Amazon has no obligation to reinstate your account, and you will only convince it that the manufacturer's claims were wrong.

    And unfortunately, my guess is that the manufacturer's claims are legitimate. With respect, I do not believe you have sufficient evidence of authenticity--at least based on the statements in your question. You state that the distributor was "authorized by the manufacturer" and is listed by the manufacturer as an authorized distributor. However, that same distributor could be selling both authorized and counterfeit goods. It is not sufficient for you to rely on the fact that the distributor is authorized. Rather, your duty is to make sure that the specific goods (data cables) that you purchase are authentic. You cannot just rely on the assurances or representations of the distributor---the law imposes a duty on you to verify the accuracy of those assurances or representations. There are lots of companies that sell and distribute both authentic and counterfeit goods. It is your legal obligation to make sure that the goods you purchase are authentic--you need to inspect them carefully, and verify authenticity with the manufacturer before selling them. And it is not sufficient to rely on the fact that a distributor is authorized

    Do you have a written agreement with this distributor? One way to protect yourself in the future would be to make distributors agree to indemnify you from liability in the event you are accused for violating third party intellectual property rights by selling goods that you obtain from the distributor. Such indemnification agreements have become standard in situations like this, Unless you had a written agreement with this distributor providing such indemnification, you left yourself exposed to this problem.

    Note that Amazon has done nothing wrong here. Further, if the goods are counterfeit, the manufacturer did nothing wrong. My guess is that your problem arises with your distributor---and your own failure to have taken adequate steps to assure that the goods you sell are authentic and that you are indemnified by this distributor from liability in the event that the distributor sold you counterfeit goods.

    One further point---most companies today are procuring intellectual property insurance to cover liabilities that may arise in situations like this. Intellectual property insurance surprisingly inexpensive---and the insurance companies help companies in your situation develop practices and policies designed to make sure that they are selling only authentic goods.

    In sum, any company which sells on Amazon, E-Bay. or other such web-sites is under a legal obligation to make sure that all goods that its sells are authentic. It is not sufficient to rely on a wholesaler's representations that goods are authentic---the law imposes the duty on companies who deal in goods like these data cables to verify authenticity. Companies routinely retain legal counsel to assist them in verifying authenticity. If you have not been working closely with experienced intellectual property counsel on matters such as this, you have left yourself open to some very unpleasant consequences, such as the shut-down of your account by Amazon. Your next step is to retain experienced legal counsel to review detailed facts and circumstances and recommend a viable plan of action. Hopefully, the manufacturer was wrong. If, as I suspect, the problem was with your distributor, then you need to work with counsel to vindicate your rights.

    See question 
  • An NDA with employer restricts an employee in join the client to whom he is working?

    Received my Green Card since 10 months and still working for the same employer for its client and now the client want to hire me but my employer signed a Non-Disclosure Agreement with me not to join the client while on contract or one year after t...

    Maurice’s Answer

    You would breach the contract by joining the client as an employee. The contract is clearly enforceable in most states but check with a North Carolina lawyer to be sure. You must honor the NDA. A one year restriction is not unreasonable

    See question 
  • What difference among these fields of law? IP, Patent application, Patent Infringement, Copyright Infringement, Franchising?

    I am planning for an f&b business business plan, I want to protect: 1- branding concept identity 2- patent customized innovative exclusive equipment 3- Industrial Design 3- Recipes 4- franchising (for a second phase) I prefer finding one l...

    Maurice’s Answer

    Generally speaking, law firms have intelletual property departments which include teams of lawyers who specialize in these fields. For example, members of the patent bar typically draft and prosecute patent applications for inventions involving new products or technologies. Patent litigation experts generally specialize in litigating patent infringement cases (defense and prosecution). Trademark lawyers specialize in helping companies obtain trademarks to brand themselves. Copyright lawyers are involved in obtaining and enforcing copyrights for works of art, music, film, authorship, architecture etc. Many intellectual property lawyers have backgrounds in all are most of these fields, Often, lawyers specialize in licensing intellectual property rights---franchising is a form of this. Most law firms (such as my firm) have lawyers who specialize in all of these areas. When hiring a law firm, you don't just hire individual lawyers--you hire a firm that can put together teams with legal practitioners who specialize and these and other related areas (trade secret law, right of publicity law, privacy law, internet law, cybersecurity etc).

    While there are many solo practitioners, even solo practitioners who draft and prosecute patents (for example) often form business relationships with lawyers who specialize in these other areas. None of us are presumptuous enough to claim expertise in all of these areas---it takes years of experience to become an expert in one or two of these areas of law. Thus, look for a law firm that provides a diversity of expertise and specialists in these various fields.

    See question 
  • Please see my question below regarding potentially trademarking a slogan.

    I've recently come up with a short slogan that I believe could be used in an advertising campaign. Since I would be interested in selling it, are slogans able to be trademarked? Should I trademark it before trying to sell it? If yes, what would th...

    Maurice’s Answer

    Ordinarily, short slogans cannot be protected by either copyright law or trademark law. Further, you cannot legitimately file for a trademark on a short slogan merely because you want to sell it for someone to use in an advertising campaign. Trademark rights are dependent upon proving actual use in commerce. You cannot apply for a trademark on slogan unless you have a good faith intent to use it in commerce. Further, before a trademark will issue, you must submit a statement of use containing evidence proving that you use it in commerce.

    Some people do try to file bogus intent to use trademark applications covering slogans that they never intend to actually use. Sometimes they even get away from selling these applications. But it makes no sense for anyone who understands the law to purchase such a trademark application. This is because it is worthless unless you actually intend to use, and use in commerce. If you are not using it in commerce, you will never be able to enforce it against an infringer, Thus, anyone could use the slogan without paying you a dime.

    The only reason someone would purchase this from you is if they had a short term need to acquire trademark rights and wanted to expedite the process of doing so. But in most cases, you won't have any success trying to deal in trademark applications----your application would essentially considered fraudulent because you have no intention to use the slogan to market your business's products or services.

    See question 
  • Can I use the Robert E. Howard Character Solomon Kane as the basis for an original fictional work for sale?

    I am not sure if this character is in the public domain for usage in original, for sale fiction.

    Maurice’s Answer

    I doubt it but you would need to retain IP counsel to conduct a clearance analysis. Even if the character is no longer protected by copyright law, it may be protected as a trademark. This would have to be carefully investigated.

    My colleagues have provided wise guidance, but everyone seems to forget the importance of understanding foreign intellectual property rights. Even if this character is no longer protected by U.S. copyright or trademark law, it might be protected under laws of other countries. This is a very common occurrence, particularly in music, where works that fall into the public domain in the United States because they were created before 1923 remain protected under laws of other countries.

    This is a much more complex question than you may realize. For example, although the United States does not yet recognized moral rights, moral rights are recognized in most European Countries and indeed, most countries throughout the world. This might substantially limit the usefulness for you of using this character, since you would at the very least need to provide attribution to the original author and probably compensation in some countries.

    You need to get a lawyer to investigate this for you---Avvo is for asking general questions and finding lawyers. It is not for providing legal advice on specific questions of this nature.

    See question 
  • If your provisional patent gets appoved does that mean your utility patent will be appoved

    Thank you

    Maurice’s Answer

    Provisional patent applications are not approved, and there is no such thing as a provisional patent. Provisional patent applications are not examined. They are merely filed as a placeholder for a utility patent, which must be filed within one year of the date on which the provisional patent application is filed. Only a utility patent will be examined and, if appropriate according to the examiner, approved.

    See question