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Gerry J. Elman
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Gerry Elman’s Answers

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  • I want to Trademark my clothing brand. (Sports related goods) called "Second II None Apparel/Second II None Sports Apparel

    But there is already a "Second II None" that is trademarked. Is it possible if I can Trademark my name "Second II None Sports Apparel" since its a different name? What are your suggestions? I really want to work with my brand name.

    Gerry’s Answer

    Sorry, but I must agree with Mr. Lang. The doctrine is "first in time, first in right."

    And the slight change you are discussing wouldn't be a sufficient distinction.

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  • If I do business globally, what sort of legal document do I need if I want to charge a commission for my services?

    I'm starting a company that will connect manufacturers with buyers on a global scale. I will charge a commission (to the sellers) for any sale I secure them. I'm trying to figure out what sort of document I need to secure payment from them (taking...

    Gerry’s Answer

    It looks like you'd want an agreement that sets up your business as a broker and includes provisions that would be breached if the other party seeks to circumvent the agreement.

    The further complication of doing business worldwide means that the agreement would need to be executed and enforceable as a binding contract in the various legal jurisdictions (states and countries) in which business is being done.

    I invite you to visit our website www.elman.com for further info, as we are a firm of attorneys practicing Internet business law here in Pennsylvania,.

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  • When is it ok to use an abandoned trademark in the same field as my potential product?

    Previous trademark was abandoned in 2004. and it is relating to cell phone cases.

    Gerry’s Answer

    Messrs Lang and Kelly have done a great job answering this question. I admire the clarity with which some of my colleagues helpfully provide answers on this Forum.

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  • Do I have recourse when someone publishes my photographs?

    I gave permission to an author that he could use my photographs in his book as long as I was given credit. The book has been out under a month and I did not get credit even though he used my photos and in fact gave credit to someone else. He cla...

    Gerry’s Answer

    Gee, your question reminds me of a case I once litigated for a professional photographer who photographed jewelry for Lapidary Journal. You can read the case of Marco v. Accent Pub. Co., Inc., 969 F. 2d 1547 - Court of Appeals, 3rd Circuit 1992 at this web address: https://scholar.google.com/scholar_case?case=3288171263870698317

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  • Are VPNS in the USA legal?

    I was just wondering if VPNS are legal in the USA specifically.

    Gerry’s Answer

    If by VPNS, you mean "virtual private networks," which provide an encrypted and pretty-much-secure tunnel between two computers, then the answer is YES.

    If you have other questions about Internet-related law, I'd be glad to hear from you. I'm in Media, PA.

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  • Are the drawings you submit for a provisional patent application the official drawings?

    Are the drawings you submit for a provisional patent application the official drawings? Or do you hire someone to make better drawings if your going for a full patent?

    Gerry’s Answer

    Mr. Kelly and Mr. Lang have each written cogent responses to your question. Though paradoxically they may seem inconsistent, they're both right on target.

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  • Can I legally be asked to discontinue making and selling an item that is similar to others?

    I have been making a simple supporting band for securing dogs on a grooming table for friends. I recently began selling them on facebook. Two days ago, I received a letter from an attorney saying my device was too similar to one their client has a...

    Gerry’s Answer

    Unless your product violates a valid right of their client, there's nothing to prevent someone from copying an existing product. And it's unlikely that copyright would protect the configuration of a product, though it might protect an instruction sheet or text and graphics on packaging.

    And the mere fact that a patent application has been filed for an invention and is currently pending doesn't create an immediate right to stop others from infringing the pending claims. However, do take into account the possibility that if the U.S. patent has already been published officially and you are given notice of the publication, then when and if the patent eventually issues, and your product is found to infringe a claim of that patent that was actually published, a court could award patent infringement damages based on sales retroactive to the date you received the notice.

    Therefore, I concur with the suggestions of my colleagues on this forum that you take seriously the letter you received and promptly seek advice from an attorney with expertise in intellectual property, and particularly patents.

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  • If you establish a think tank and utilizing the tank's input you create a product, who owns the product?

    To extend the question, say you are a sole proprietor and establish a network of friends who throw around ideas to help you create a product. Do those individuals take part ownership of the product even though their ideas aren't A. Copyrightable, ...

    Gerry’s Answer

    That's a good question. And the answer demonstrates the importance of thinking through the implications of new business models.

    Some of the other lawyers who've posted answers have talked about the kinds of "protection" that might arise under classical principles of "intellectual property": copyright and patent. And under the terms of your hypothetical, it seems that neither would apply.

    Now to alter one of the aspects of your hypothetical, suppose your "think tank" involves textual communication in some form, e.g. an online forum or a wiki. For that, the principles of copyright would probably be applicable, where each author owns his work of authorship, unless the output of the "think tank" were expected to be a "collective work" that would be deemed under the copyright law to be a "work made for hire." Note that copyright protection doesn't extend to ideas themselves, but rather to the "expression" of the idea created by the author.

    I believe you're spot on when you refer to "some sort of contractual agreement." If the members of the "think tank" are led to believe that their participation could result in financial benefit if the corporation adopts their suggestions, then there could well be an enforceable contractual right in favor of one or more such participants. Even if the terms of the contract don't appear in writing, sometimes a court will enforce a "contract implied in fact." For further details and actionable legal advice, consult a lawyer.

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  • When converting a provisional patent application to a non provisional can I change some things?

    1. Can the title be changed or does it have to match? 2. Can certain claims be removed as I do not think they fit the scope of the patentable idea. 3. Can certain claims be added as the invention has changed slightly?

    Gerry’s Answer

    Although a provisional U.S. patent application can be "converted" to a nonprovisional application, I wonder if that's what you meant to ask. I suspect that you self-filed a provisional application in November 2013 and are aware that it turns into a pumpkin on the corresponding day in November 2014, and wish to take advantage of its filing date as a priority date for a new nonprovisional U.S. patent application.

    If that's really what you meant to ask about, the generic answers are:

    1. Yes, the title of the nonprovisional application can be different.
    2. Yes, and indeed, it was entirely optional to present any formal "claims" in the provisional application filed last year.
    3. Probably, provided that the disclosure in the provisional patent application was complete enough or there hasn't been a disqualifying disclosure of the invention more than 12 months before the date you file the nonprovisional patent application . See New Railhead Mfg. v. Vermeer Mfg.

    If you value the invention that you're seeking to protect, it would be wise to get professional help, so as to avoid the many pitfalls in the path of inventors that seek to generate and prosecute their own patent applications.

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  • Do I need to file a non provisional application?

    I filed a provisional patent application in 2013. Due date is coming up. If I file a PCT application which references the provisional do I still have to file my USA non provisional before the provisional expires? Or does the PCT extend when I must...

    Gerry’s Answer

    You are correct in understanding that filing an international patent application under the Patent Cooperation Treaty will extend the deadline to file a nonprovisional patent application in the U.S. until 30 months from the filing date of the provisional U.S. patent application that it claims priority to.

    However, do take note that the application might be worthless unless the provisional patent application contains a complete disclosure of the invention that meets all the legal requirements of U.S. patent law. See, for example, the case of New Railhead Mfg. v. Vermeer Mfg, If you haven't yet consulted a patent attorney to confirm that the patent application does so, it would be wise to do so now. In fact, since patent law has been changing rapidly (see, e.g. the Supreme Court's decision this June in Alice Corp. v. CLS Bank) even if you've already consulted a patent attorney, it's high time to go back again.

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