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Tracy Jong

Tracy Jong’s Answers

25 total

  • Hi, Why some inventors choose to don't publish their patent application when they file it?

    If someone choose to don't publish the patent application (while he files it), does this affect the application in the future or during the examination? Thank you.

    Tracy’s Answer

    The patent application will be treated the same way by the Patent Examiner. By not publishing, you give up two rights: the ability to get patent damages before the patent issues (they are available in some circumstances when the application publishes and becomes public) and the ability to seek international patent protection.

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  • When looking at trademarking a similar company name what constitutes "use" when determining who had rights to the name first?

    We have a company that uses a name similar to another company. From what I can tell, we both began publishing the name in press releases, etc at the same time but they claim to have used it before then and, in doing so, won't allow us to continue ...

    Tracy’s Answer

    What is “Use” for Trademark Registration?
    In order for a trademark to be registered, the applicant must be using the mark in commerce on the goods and services listed in the application. We are often asked what use is, and whether the applicant can print some business cards or sell one item to someone they know and satisfy the requirement. Unfortunately, these tactics will not work. The United States no longer recognizes “token use,” a one-time use made solely to comply with the use requirement.
    “Use” means actual commercial use ( actual sale, offer for sale, rent or distribution) in interstate commerce of the trademark on, or in connection with, all of the specific goods or services listed in the application in the normal course of business.. Commercial use can be either interstate (between two or more states) or international (between the United States and one or more other countries). Interstate commerce generally involves a common carrier to deliver the product or telecommunications to place the order.
    There are a few cases where use in one state may qualify for interstate commerce because the consumers themselves are frequently from out of state:
    Internet use
    Restaurants
    Retail stores (and their goods) located in airports or on cruise ships
    What does not qualify?
    International commerce that doesn’t include the United States
    Use of the mark on any goods or services not listed in the application
    In your application, you listed goods and services you intended to use the mark in association with. Often, you listed more products than you initially launch. The mark must be in commercial use on all goods or services listed in the application. If it’s not, you can delete the goods and services that are not currently for sale and file a divisional application on the others.
    First use anywhere means the first date the mark was commercially used on any one of the goods or services listed in the application even if it wasn’t in interstate or international commerce. First use in commerce means the first date the mark was commercially used in interstate or international commerce. Those two dates can be different or the same.
    “Proof of Use” means some tangible means of showing that the mark is being used as a trademark or service mark on or with the specific goods or services listed in the application. In other words, the mark must be used as a source identifier, as your brand. Even though the mark must be in use on all of the goods or services listed in the application, you only need to provide proof of use for one of the items listed, not all of them. The USPTO requires a declaration verifying use on all the goods, but only requires one specimen of use.

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  • Can one register a trademark that has the same phonetic sound of a geographic term?

    I was wondering if one can have a trademark that has the same phonetic sound of a geographic term. I understand that geographic terms are weak trademarks and cannot be registered. However, a company such as "Eataly" has registered its trademark al...

    Tracy’s Answer

    I agree with my colleagues. I will add a few points that may be helpful: Phonetic equivalents are generally indexed under the standard spelling. (For example, "kwic" and "quick" will come up under a search for quick.) The phonetic equivalents will be considered in the analysis of confusingly similiar marks. The answer depends on how distinctive the phonetically equivalent mark is overall. There are many factors used in this analysis. Sound is one of them, but there are many others.

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  • Can you get a patent if you better an existing idea

    for example can you get a patent for a toilet seat cover if you improve it by including the tank

    Tracy’s Answer

    Yes, if the improvement is novel and nonobvious. There are several legal strategies that can be used as a patentability strategy.To overcome obviousness, you will need to show that the combination does more than simply provide the known advantages of each component before you "duct taped" them together. In the combination, the component parts must serve a different function or provide a new advantage that was not present when the component was used alone. You might also be able to show that prior to now, technology did not allow for the combination - there was some manufacturing reason they could not be construction together as a single unit. You have overcome some previous drawback that now allows you to construct them together.

    These are a few of the most common approaches to cases like this. Each case is unique. Working with an experienced patent practitioner is the best way to analyze the potential patentability of your invention.

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  • Do i need a trademark attorney?

    I started a small Video Productions company in October 2012. In preparation in starting my business i researched steps to get it running. I purchased a local trademark domain for the name of my company. Business has begun to pick up and I have de...

    Tracy’s Answer

    Yes, an attorney is advisable. These claims are not always valid. You can only make good decisions with good information.

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  • When do I check off "use of the mark in a prior form" on a trademark application?

    I had a business with a trademark - image and words. The business changed names, so I am keeping the image but using new words (the new business name). Do I check the box for use of mark in a prior form? Not sure I need a lawyer since everything e...

    Tracy’s Answer

    I suspect you got into a section of the application for additional statements and you are replying to questions related to a prior registration claim for the mark. You have not provided enough detail to answer. However, the benefit of a prior registration is senority if someone else was using a confusingly similar mark or perhaps toward establishing a family of marks. If you are not concerned with these issues, then don't mark the box and go ahead and file.

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  • Would "Caribbean life" be considered a geographical indication ?

    If we assume hypothetically that my company is going to offer Caribbean food, would "Caribbean life" be considered a geographical indication when I apply for the trademark?

    Tracy’s Answer

    Geographic-related terms can be registered in many cases. The mark will be classified as descriptive, however, if the geographic area is known for the product. Think, for example, about Idaho potatoes, Florida oranges or Washington State apples.

    A mark cannot be deceptively misdescriptive. For example, since consumers know Florida is known for oranges, a business growing oranges in Michigan cannot protect the mark “Florida oranges.” Consumers would be misled into thinking that the oranges originated in Florida. Similarly, a U.S. company cannot protect a primarily geographic mark in “Columbian coffee.” Consumers would mistakenly make the association to Columbia as the source of the coffee product.

    However, a mark may not be “primarily geographically descriptive” if there are several different locations for the product, the name is also a surname or the name doesn’t import information about product origin. It may be the case that marks with terms such as Hollywood, New York, Miami Beach, Paris and other famous places are used in marketing but have no relation to the product’s origin. Popular examples include “Hollywood Burgers” (one would not assume that the burgers are made in Hollywood) and “Jilbere de Paris” clothing line.

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  • What is a geographical indicator in a trademarks? ( Examples are appreciated)

    I understand that when I register a trademark, I need to take care that there are no geographical Indicators. I find the explanation of USPTO a little bit confusing. For example, if I am doing a Caribbean food brand and want to call it Caribbe...

    Tracy’s Answer

    Geographic-related terms can be registered in many cases. The mark will be classified as descriptive, however, if the geographic area is known for the product. Think, for example, about Idaho potatoes, Florida oranges or Washington State apples.

    A mark cannot be deceptively misdescriptive. For example, since consumers know Florida is known for oranges, a business growing oranges in Michigan cannot protect the mark “Florida oranges.” Consumers would be misled into thinking that the oranges originated in Florida. Similarly, a U.S. company cannot protect a primarily geographic mark in “Columbian coffee.” Consumers would mistakenly make the association to Columbia as the source of the coffee product.

    However, a mark may not be “primarily geographically descriptive” if there are several different locations for the product, the name is also a surname or the name doesn’t import information about product origin. It may be the case that marks with terms such as Hollywood, New York, Miami Beach, Paris and other famous places are used in marketing but have no relation to the product’s origin. Popular examples include “Hollywood Burgers” (one would not assume that the burgers are made in Hollywood) and “Jilbere de Paris” clothing line.

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  • Can i do body rub without any license of masseur? Can i just start learning this craft and make money also?

    i came in USA like student and now am stay illegally here since my visa expired. i would like to try to do just body rub and make money. can i do that in new york state without any fear that the police will arrest me? my life is very difficult ...

    Tracy’s Answer

    Massage therapy requires a license in NY. Working requires an EAD. It would be very risky to undertake this path and will likely result in deportation if you are caught.

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  • Registering a trademark for a business name

    I am in the process of starting a business and understand the importance of registering a trademark for my business's name. I am a little confused as to what is the proper format for the trademark. For example, let's say my business is officially ...

    Tracy’s Answer

    You will want to register the name that you will be using in business and what your customers will use to find you. How will the mark appear on your letterhead, cards and website? In the scenerio you gave, I would probably register ACME Solutions as a combined term mark. (If, however, your customers will know you simply as ACME, then register that mark.)

    You may need to file for an assumed name to use your business name without the "Inc.".

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