Skip to main content
Gerry J. Elman

Gerry Elman’s Answers

558 total

  • Does a trademark have to be previously used in commerce in order to be licensed?

    Can I licence an unregistered trademark to another party that was not previously used in commerce (or at least for the same goods)? By doing so, I imagine that would make the trademark unregistrable to the other party and make me its owner (despit...

    Gerry’s Answer

    Gee, as I read the question, it feels as if I'm playing Twister. I'm unsure what result you're seeking to accomplish.

    Trademarks are tricky, because they can involve overlapping rights in various jurisdictions.

    Federal trademark rights arise from federal statute. The rights stem from federal trademark applications, which may be based either on Actual Use in interstate commerce or on your Intent to begin such use in the future.

    Rights enforceable in Pennsylvania courts can arise from actual use of the trademark within the state. It's also possible to register a trademark with the Pennsylvania Secretary of State in Harrisburg.

    -Gerry Elman
    Elman Technology Law, PC
    Media, PA

    See question 
  • Is there a way of checking if a "zipadeezip" patent has been filed in Europe? They are special sleeping bags for children.

    I saw this question earlier regarding USA Market. I wonder if we could copy the product and sell it under our new brand-name in Europeian market. I didn't saw no patents being filed.. is there a way of knowing if a "zipadeezip" patent has been fil...

    Gerry’s Answer

    Beware that patent applications in Europe are secret during the first 18 months from filing. So if a patent application for a given product is pending but recently filed within that window of time, it won't be turned up in a patent search.

    See question 
  • If you file a provisional patent and someone comes and files a non provisional right after yours what are your rights?

    If you file a provisional patent and someone comes and files a non provisional right after yours-Do you have rights to your invention over theirs as long as you proceed with the non provisional before the 12 months is up to keep your patent withou...

    Gerry’s Answer

    The good news is that Robert is right.

    The bad news is that many Provisional Patent Applications aren't written with the care and completeness necessary to support pertinent claims to the invention. In that event, the result would be just as if the Provisional hadn't ever been filed.

    For an example of a company having learned this lesson the hard way, see the case of New Railhead v. Vermeer Mfg., decided by the Court of Appeals for the Federal Circuit.

    So if you're contemplating getting benefit from the legal tool provided by a Provisional Patent Application, it's wise to consult a patent professional to ensure that the technical disclosure is as good and complete as you can possibly make it.

    See question 
  • Do my local patents apply only in terms of territory of producing the item, and can I sell it worldwide without concerns?

    Do patents cover only the country of production or also the country with the target market for selling the product? For example, if I make a legal product according to my local patent attorney, and the item is produced in my country, should I be c...

    Gerry’s Answer

    • Selected as best answer

    A U.S. patent provides the exclusive right in the United States to make, use, sell or import the patented product. If the product is made outside this country, in a jurisdiction where it is unpatented, it would still be an infringement of the U.S. patent if the product were to be imported into the U.S.

    Similarly, if a product isn't patented in the U.S., then it could lawfully be made in the U.S., but if
    the product is patented in Australia (for example), it would be an infringement of the Australian patent to market the product there.

    See question 
  • 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.

    See question 
  • 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 for further info, as we are a firm of attorneys practicing Internet business law here in Pennsylvania,.

    See question 
  • 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.

    See question 
  • 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:

    See question 
  • 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.

    See question 
  • 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.

    See question