Steven L. O'Donnell's Answers

Can I file for Trademark if I have received infringement letter?

The analysis is going to depend on the marks, how similar they are, how similar the markets are, and to some extent on how aggressive the other guy is likely to be. It might be possible to dissuade them from pursuing you with just a letter or two. It might also be a good idea to consider rebranding, even if they ignore you now, they might return when you become more successful. Anyone would really have to look at the marks before they could advise you.

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Marketing/Graphic design: Does my client own my working files or just the final product they hired me to do?

I may be wrong, but I'm interpreting what you've written not as "they want the draft designs I went through to get to their final designs" but as "they want the working EPS and PSD files with layers, etc intact so they can easily tweak and modify my designs." Usually, the contract just provides for transfer of the final design and not drafts or the native files, but what actually gets into the contract is limited only by the imagination of the drafter. In the absence of a contract, reread Ms....

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Does obtaining a 'Court Order' mean we have to file a suit?

I agree with Bryant and John. There aren't many of us patent attorneys in the mid-state. I'm in Lancaster. If you want to email me a link to the listing and your patent number I'll be happy to take a look at it.

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Re-packaging / re-branding of two companies product to produce new product.

Based on the scant facts, I don' t see a patent issue. The doctrine of patent exhaustion should allow a patented dispenser to be be refilled without infringing the patent. If that dispenser is meant to be used in a certain apparatus, then the one using the apparatus might be bound by a license that could interfere with them purchasing your article.

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Recreating board games as Excel files and also in wood working.

Do you mean something like Axis and Allies? Since copyright covers the artistic value of something, the Excel files are probably not infringing. I'm assuming that your Excel files are basically grids and do not incorporate scans of the board or copied art. Of course, I would need to see them before I could say with any degree of certainty. Similarly, your cousin's boards may infringe the copyrights if they incorporate the original board's artistry. It's a tough call, impossible to make on...

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Are my improvements to an already patented invention enough to spend the time, effort and money?

Without looking at the issued patent and comparing it to your improvements it is impossible to say much of anything about possible infringement issues. It may be possible to draft your application so that it doesn't require the other person's invention to be operable. In other words, your improvements might be able to stand on their own. If it isn't, it is still possible to obtain a patent on improvements to something that is already patented. In that case, you would not be able to make, use,...

A few years ago I published a patent application, then gave up. Now with iPhone it maybe a good app. Do I stil have copyright?

Do you mean that you submitted a patent application and then abandoned it after it was published? If so, you're probably not going to be able to get that patent to issue anymore, but that might depend on your specific facts. If you want to try to have your invention patented now you need to see a patent attorney as soon as you can. Copyright is a different beast entirely.

Conflict of Interest

The copyrights to those photos are probably owned by your former employer. I've recently had a client in a similar situation. I solved the problem by negotiating a limited-use license that gave my client what he wanted, but let the former employer keep what he wanted. You'll likely want a similar agreement if you want to use the photos. Using them without an agreement may be inviting a lawsuit.

Does compound trademark registration protects each part?

Since Chrome has a meaning in the hypothetical, first I would check the trademark registration file for a disclaimer of "Chrome." Although it's impossible to say with the very limited hypothetical facts, I'd be surprised to have a mark issue for a fanciful word when that word is already registered as part of another. One big fact that is missing is the similarity of the markets/products between the two registrants. Google brand dessert topping would have a much better chance of being...

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Can pictures used on Facebook R.I.P. pages be used in a PowerPoint presentation for educational purposes?

It might be fair use, but fair use is a defense to copyright infringement. In other words, you could still get sued even if you have an opinion letter from an attorney telling you that your use is fair use. People are usually touchy about pictures of their dead children. I would at least contact them first to ask if they would allow your use. That’s less legal advice and more common decency. I’d then follow up with a letter thanking them for their permission and maybe inviting them to see...

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