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Ian Donald Titley

Ian Titley’s Answers

12 total


  • If I take a picture, and it contains a company image can I use it as the cover for an e-book?

    The picture contains the Nike mark, I wanted to use the photo for the cover for my free e-book on a free publishing site called feedbooks.com

    Ian’s Answer

    Trademark law protects against consumer confusion. In this case if Nike thinks the proposed use could lead someone to believe Nike is affiliated with the book, is a sponsor of it, or in some way has authorized the use of their logo in connection with the book, then Nike would be able to state a claim.

    You can advertise that you are selling your Ford because no one will confuse you with Ford Motors. The book situation does not seem as clear.

    Providing this information does not create an attorney-client relationship.

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  • Domain name and trademark

    Hello, I own a trademark and a domain name that matches exactly, i.e. MyDomainName.com is my name and trademark. If I sell the name, what happens to my trademark? Is it abandoned automatically? The person has no need for the trademark, just wants ...

    Ian’s Answer

    No your trademark is not automatically abandoned. You could still use the trademark without using the domain name. If the buyer is using the domain name for a completley unrelated business (eg Delta Airlines and Delta Faucets) your trademark and their use of the domain name could co-exist. You will need to think through whether the co-existence might be likely to confuse any customers or porential customers. If so then one side or the other may have liability for infringment.

    You will want to discuss this with a trademark attorney who can analyze all the relevant facts. Providing this information does not create an attorney client relationship.

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  • I am making a short film to be entered into film festivals. Can I film a character playing a video game?

    It is highly unlikely (though not impossible) for short films to be sold. Does this still count as non-commercial use of the video game, if it's shown in festivals? In the event that it is sold, can I pay for commercial usage then?

    Ian’s Answer

    Whether a use is commercial does not determine whether a copyright infringement occurs. The commercial nature of a use may impact the amount of damages that are assessed but an infringement does not become non-infringing because it is non-commercial.

    Providing this information does not create an attorney-client relationship.

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  • Pertaining to US Trademarks

    Pertaining to US Trademarks: I will explain my situation with an example. We want to register for example, XYZ as a trademark. But there is somebody using the name for a site, but hasn't filed a trademark. If i create my site and file the tr...

    Ian’s Answer

    Trademark rights arise from using a trademark not just from registering the mark - so if you are able to get a trademark registration that alone will not protect you from the other use you've described.

    In the trademark law infringement occurs when there is a "likelihood of confusion," which means it is likely people will be confused about whether there might be some type of connection between the two users - such as a sponsorship, a licensing arrangement, or whether they are related entities.

    The two marks are reviewed to see if they are "confusingly similar" which is considered by comparing the sight, sound and meaning of the two marks.

    So you can see why Delta Dental, Delta Faucets, and Delta Airlines can co-exist. Even though the names are identical there is no "likelihood of confusion."

    A trademark attorney will help you consider whether the uses you describe are likely to cause confusion. From a practical perspective - do you want to develop a brand for which you don't have the domain name? You may not get the full benefit of your branding.

    Providing this information does not create an attorney client relationship.

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  • On a trademark application, am I supposed to declare when the first use in commerce is?

    My application was filed under the basis 44 (e) foreign registration and the application was granted last year (ie the mark is fully registered). On my certificate, there is no "first date of use" mentioned anywhere. Am I supposed to put that in?...

    Ian’s Answer

    You don't add this to the trademark certificate, but make sure you keep good records of your first and continuing use of the mark. If you ever get involved in an infringement proceeding you will need to prove your use - even though you did not need such proof to get the mark registered.

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  • Federal Offense?

    Is it a Federal Offense to post a Youtube video making fun of a certain style? For example, one making fun of "Gothic", "Gangster" or "Scene" styled people? No peoples names are specified in this video and it wasn't sent to anyone in order to prov...

    Ian’s Answer

    The basic concept of a video that makes fun of certain types of people is protected free speech - but you could violate laws depending on how you implement the concept. Using images of people without their consent, or using someone else's film without consent are examples of how you could get in trouble.

    If something bad happens you can expect law enforcement to try to find a violation. This is what happened last fall when two students were charged with invading the privacy of another after they secretly taped him and posted the vido. The student who was secretly filmed committed suicide.

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  • Can I post action photos that I have taken at a Major League Baseball game on my website or blog? Does this violate any laws?

    The photos will be used to illustrate baseball instruction articles. These articles are not sold and are freely available to the public.

    Ian’s Answer

    MLB players get paid A LOT of money to consent to using their photos in connection with various products and services, and the companies that pay this money don't want others to use the images for free. This is why typical youth baseball instructional materials use photos or videos of youth players and no-name uniforms. Good luck Coach!

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  • Should I trademark my company name if someone else started using it online?

    I am a registered LLC with the state of Massachusetts and some had started using my company name online (a website, company profiles etc). Do I have to trademark the name before I can make them stop?

    Ian’s Answer

    Each state has its own traedmark laws so you should check with a Massachusetts attorney. Generally you do not have to get a trademark registration before you demand that someone stop using your name, but if you have the registration it can make your job easier. If you don't get the registration the other party might apply for it once they receive your demand. The owner of the trademark registration usually gets the benefit of the doubt, and the non-owner has to prove that they have superior rights.

    There are many other facts you will need to consider with an attorney. A few questions to consider are whether your company name is capable of being protected as a trademark, is the other company's use likely to lead to confusion (e.g. Delta Airlines and Delta Faucets co-exist), does the other company have rights that pre-date yours?

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  • Can a website be sued for false information ?

    Its an educational website but has given some wrong information

    Ian’s Answer

    Yes the company or person who runs the website could be sued if the information causes harm or somehow damages another person or business. Some things to think about include:
    Are the harmful statements opinions (which might be protected as free speech) or statements of facts that are provably wrong? Who is bringing the lawsuit? Not everyone can sue for a false statement. A consumer sued Hostess claiming their "zero grams of trans fat" statement on certain cupcakes was false - but the court dismissed the case because false advertising claims under the federal Lanham Act can only be brought by competitors - not by consumers. You should check with local counsel to understand the requirements in your state.

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  • Is it illegal to use a businesses name and managers name in a "review" of their services on a site without their permission?

    The business provided me services, and they were horrid. Is it legal to write a blog post, or other web article as a review of their services. I also used the General Managers name in the review. Is there any legal implications that go along with ...

    Ian’s Answer

    As Ms. Koslyn said - this issue will be controlled by state law so you need to check with an Arizona attorney. If you read Consumer Reports you will notice they very carefully report only facts that they know they can prove to be true. It is best to limit your reporting to the provable facts. Rather than saying the experience was "horrid" it would be safer to report the provable facts. Businesses and individuals can bring actions for defamation. Even if you win in court you may end up feeling like you lost because of how much you had to pay an attorney to defend the lawsuit.

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