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William F Lang IV
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William Lang’s Answers

338 total


  • Legal consultation on an issue of intellectual property (IP) law –question 1

    I am a researcher in a US Univ. A. Our lab, lead by Prof. B, invented a medical imaging device P and was patented through B&A. I am the major person developing the device. B wanted to collaborate with a Chinese Univ. C and a Chinese company D (D s...

    William’s Answer

    DO NOT do or send anything outside of the US unless and until the export control issue is resolved. Given the request that you travel to China prematurely, I would consult with your own lawyer before doing anything.

    Export control is a complex subject. Seek the advice of someone who does this work regularly.

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  • I run volunteer animal rights group and we have a logo. I would like consultation about whether I need trademark to protect it.

    We are not a formal nonprofit but we have a logo that identifies us. I am wondering if I need to register our logo for trademark to protect it and if so, what is the cost in terms of money and time involved to maintain it. If I don't register th...

    William’s Answer

    I would recommend both a clearance search as well as registration if the results are favorable.

    Trademark rights are acquired by using the mark in a specific geographic area, for specific goods or services, to distinguish your goods or services from those of others. Trademark rights exist where the mark has become known for its connection with those goods or services. This is known as common law rights. Common law rights do not extend to other geographic areas or to other goods/services unless the mark becomes famous. Federal registration provides a presumption of the right to use the mark throughout the entire country, but is inferior to common law rights that existed prior to the date the application for federal registration was filed.

    The risk your organization runs by not registering the trademark is the possibility that someone else could register a confusingly similar trademark. Not everyone does clearance searches before they file applications for registration, and the USPTO generally only searches registrations and pending applications when looking for marks with which there is a likelihood of confusion. So, if such a registration is issued, your organization will have the options of filing an opposition or cancellation proceeding (which is expensive), limiting your activities to locations where they were performed prior to the date the application was filed, or changing your name and logo. If the registration becomes incontestable before the issue is discovered, your options become even more limited. All of this can be prevented by simply registering your mark so that you have priority at the USPTO over anyone who comes later with a confusingly similar trademark.

    Before adopting a trademark, I always recommend a full trademark search and clearance opinion. The search covers not only federal registrations, but also state registrations, telephone directories, Dunn & Bradstreet, trade directories, Internet domain names, Internet searches, and other sources of information about common law trademarks. Variations, fragments, and misspellings of the mark are searched, so that any mark that might present a risk of confusion is identified. The results of the search are then analyzed, and a written opinion prepared. If the results are favorable, then you can be reasonably assured that you will not receive a cease and desist letter after having spent thousands of dollars on signage, advertising, etc., making the search very worthwhile.

    If the logo includes design elements, be aware that searching common law sources is generally limited to words. However, registered marks can be searched for design elements, and you can at least search for registered or pending designs here: http://www.wipo.int/branddb/en/

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  • Common law trademark rights and websites?

    Suppose that I create a logo for a website and suppose I acquire common law trademark rights on it. Do I have common law trademark rights in every place on the globe because a website can be viewed internationally?

    William’s Answer

    In the US, common law rights are based on the extent to which consumers associate your trademark with the goods or services sold under the trademark. To establish the extent of your common law rights, you have to establish the extent of your reputation under the trademark. This will typically be limited to geographic regions where the goods or services have been sold, and where consumers have come to know of your business.

    Things become trickier on the Internet. A website is generally viewable throughout the world, but this is insufficient to show that your trademark is known throughout the world, or that your goods or services are being provided and/or advertised sufficiently extensively throughout the world to convey common law rights.

    If you want to protect a trademark, your best option is to register the trademark. If there are specific countries of interest outside the US, you can file applications in these countries under the Madrid Protocol, through the US Patent and Trademark Office. If you file within 6 months of your US filing date, you will have the benefit of your US filing date. Different countries will have different requirements, but typically you will have to show actual use of the trademark within a given country in order to either receive a registration, or to defend a registration if challenged.

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  • I have a pending trademark application that is pending but there is a major casino that is trying to stop it and take it from me

    Just to be straight forward and honest, i would like to know if there are any attorneys here that are not afraid to fight this big casinos, that will not allow themselves to be paid off and will fight for what is right?? The question may sound cra...

    William’s Answer

    Depending on which firms you are looking at, you may be facing a conflict of interest and business development problem. Typically, large organizations are more comfortable dealing with large firms, and small entities are more comfortable dealing with small firms. A large firm might not wish to conflict itself out of a possibility of future, higher volume work for a casino by taking on an individual with a case against the casino. A smaller firm with less of a chance of getting business from a large entity might be more willing to do so.

    A small firm or solo attorney is unlikely to be afraid to fight a big firm. Many of us spent years in the big firms before moving to smaller practices.

    If you are in a dispute, please be aware that costs will be high and difficult to estimate or control, and that your ability to pay will be a factor in deciding whether to take your case.

    Also, your attorney should make an evaluation of the strength of your case, so that you can be counseled regarding the probability of success as well as the cost, so you can make the best decision for your business.

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  • Do I need to register a name for a hobby?

    I like to make films as a hobby and share it on social media, but I would like to add a name/logo at the beginning of the video that would identify the video is done by me. Do I need to register that name? It's not a business. I just want that nam...

    William’s Answer

    I think your biggest consideration is copyright - both in protecting your own and ensuring that you do not infringe someone else's copyright. Although trademark protection for your name and logo are ideal, and you want to make sure that both do not infringe anyone else's trademark, you are going to have to do some cost/benefit analysis before proceeding.

    If your material is all original, then obviously you have no concerns about infringing anyone else's copyright. However, if you include works made by others in your films, then you should make sure that your use is either fair use, or that the work you use is in the public domain. Given that this is a hobby, you probably do not want to go through the time and expense of negotiating license agreements, but this would be necessary to include copyrighted works in a context that is not fair use. Something as simple as background music will raise copyright issues. Consult an attorney before including any work by someone else.

    Registration of your own copyright to the film is simple, inexpensive, and necessary to make all remedies for infringement available. Statutory damages and attorney fees are available for infringement of registered works. However, if infringement occurs before the application materials are received by the copyright office, then you cannot get statutory damages or attorney fees for infringement of that work by that defendant, unless infringement occurs after publication, and you file your application within 3 months of publication. You should always register your films before you publish them on YouTube. Include a copyright notice in the video.

    Be aware that the YouTube terms of service require you to agree to certain uses of works that you publish.

    Trademark rights come from use of a mark in connection with goods or services in a specific geographic area. Registration provides a presumption of the right to use the mark throughout the entire country, but is inferior to pre-existing rights from actual use. So, before using a trademark, a full clearance search should be performed checking not only federal and state registrations, but also multiple sources of common law marks arising from actual use without registration. This is necessary to avoid receiving a cease and desist letter after beginning use of your trademark. Federal registration is a simple process once a search is performed.

    If a search is outside of your budget, you can mitigate your risk by using your own name as your trademark, keeping in mind that this can still be problematic if a well-known, confusingly similar trademark exists. Keep in mind that you will be limited to registration on the Supplemental Register for at least the first five years of use.

    Depending on the frequency with which you post videos and the audience you are capable of attracting, you might consider selling advertising in connection with your videos. There are advertising companies that will help you do this.

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  • I would like to register two designs with the USPTO and I’m not sure how to do this.

    I'm not sure how to register design work with the USPTO. Any advice would be great!

    William’s Answer

    The term "design" will be interpreted by someone familiar with intellectual property to mean an ornamental design for an article. This may or may not be what you intend, and I do not want to make an incorrect assumption.

    If your design is a useful article with novel and nonobvious features, and the structural characteristics create functional features that you want to protect, then a utility patent application would be appropriate.

    If your design is an ornamental design for an article, then a design patent application may be appropriate, followed by trade dress protection after the article has become well known in the marketplace.

    Depending on the nature of the design, copyright registration may be appropriate in addition to, or as a better alternative to, a design patent application. Jewelry, for example, can be protected by both copyright and design patent. Which will be more appropriate will depend on the specific design.

    I would suggest a private conversation with an attorney to discuss your specific designs and plans for them.

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  • Are these classes similar or identical?

    Suppose I have a registered trademark for a website where you can play games and suppose the class of my registered trademark is "online games." Question 1: Is a company that makes games for pc, websites or other consoles considered in th...

    William’s Answer

    Are you referring to the description of the services or goods rather than the class? Also, at what stage are you asking this question? Are you considering filing an application? Have you received a rejection? Have you received a notice of opposition or a cease and desist letter? The context of the question will have a considerable effect on the proper advice.

    From the facts presented in the question, everything you mention would be sufficiently related so that, depending on other factors, likelihood of confusion may exist. However, there are seven other factors set forth by the US Supreme Court for determining likelihood of confusion. The other names that concern you may or may not be sufficiently close to yours to cause a likelihood of confusion.

    I suggest contacting a trademark attorney in private to discuss your specific situation and goals.

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  • How can I use existing patented technology to make business?

    Hello! I need a consultation on a patent thematic, here's my case short description. I'm starting a crowdfunding campaign to find a device that uses condensation technology and allows to turn humidity into water, plus. I'm using filters to m...

    William’s Answer

    At the very least, your attorney will need to review the claims of the patents for devices within your knowledge to determine their scope, and how much room may exist to design a product outside of their limitations. More preferably, a freedom to operate search should be performed to locate other any other patents that may exist, and evaluate their claim scope as well. This information will allow you to find avenues to proceed without infringing an existing patent.

    If proceeding without infringing an existing patent is not possible, then you could seek to negotiate a license to use the patented technology. This would involve paying the patent owner a royalty based on a percentage of your sales.

    Your proposed device should also be reviewed for patentability. Patentability is a completely separate issue from infringement. Infringement occurs when each and every element of at least one claim is present in your device, either literally or under the doctrine of equivalents (equivalents perform the same function, the same way, to achieve the same result). Patentability is based on novelty (no one has done it before) and nonobviousness (not obvious to one skilled in the art based on what has been done before) over the prior art. It is entirely possible for a patentable device to infringe another patent, and for an unpatentable device to avoid infringement of prior patents. Ideally both issues should be examined.

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  • 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?

    William’s Answer

    The availability of a domain name is not an indication that it is safe to proceed. You should have a full trademark clearance search performed by an attorney before proceeding.

    Beginning with a few principles of acquiring trademark rights, trademark rights are acquired by using the mark in a specific geographic area, for specific goods or services, to distinguish your goods or services from those of others. Trademark rights exist where the mark has become known for its connection with those goods or services. This is known as common law rights. Common law rights do not extend to other geographic areas or to other goods/services unless the mark becomes famous. Federal registration provides a presumption of the right to use the mark throughout the entire country, but is inferior to common law rights that existed prior to the date the application for federal registration was filed.

    Although using an Internet domain name merely as an Internet address does not result in trademark rights, it is trademark infringement to use a domain name that is confusingly similar to a trademark.

    The standard for trademark infringement is likelihood of confusion. Thus, it is insufficient to search for exact names. Variations, misspellings, and fragments of the name must also be checked. A full trademark clearance search will check not only federal registrations, but also state registrations, telephone directories, Dunn & Bradstreet, trade directories, Internet domain names, Internet searches, and other sources of information about common law trademarks. The results of the search are then analyzed, and a written opinion prepared. Although you can get 80% of the way to a correct likelihood of confusion analysis based on common sense, getting 100% there requires applying the eight factors set forth by the Supreme Court.

    Another common mistake is doing a business name availability search at the state level, and stopping there. A state will allow a business name to be registered as a corporation, LLC, etc. if there is no identical name, regardless of whether likelihood of confusion exists.

    Having a full trademark clearance search performed by an attorney prior to spending thousands of dollars on advertising material will ensure that you will not have wasted those thousands of dollars due to inability to use the trademark. Since you are just starting your business, now is the time to choose your name correctly and avoid future problems and expenses.

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  • Should I be worried about trademark infringement?

    I'm interested in starting a credit counseling business. No companies with the name I've chosen (or a similar) name exist in my state, but I saw via a USPTO search that a national firm (Standard and Poor's) has the name registered as a service mar...

    William’s Answer

    The federal registration owned by Standard and Poor gives them a presumption of the exclusive right to use the name throughout the US. Using anything confusingly similar is trademark infringement. The relatedness of the services is one of the more important factors in the likelihood of confusion analysis, and from the facts presented in the question, it appears that the services may be sufficiently related. Although classification is not supposed to be determinative of similarity of services, it is an indication that similarity would be found by the USPTO if registration were sought, and both appear to be for some type of financial service.

    You have taken part of the right first step in checking to see if others have the same name, but keep in mind that trademark rights arise from use of the mark to identify goods or services, not from registration, so common law marks also need to be searched. Since the standard for infringement is likelihood of confusion, variations, misspellings, and fragments of the name also need to be searched. Although you can get 80% of the way to a correct likelihood of confusion analysis by common sense, getting 100% to a correct answer requires a trademark attorney applying the eight factors set forth by the Supreme Court. In short, you really need a full clearance search performed by an attorney before adopting a trademark and spending thousands of dollars developing marketing materials around that trademark.

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