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Richard T Matthews

Richard Matthews’s Answers

149 total


  • Can You trademark a Citys initials?

    I started a Parasail Company in myrtle Beach south carolina and named my business Parasail MBS. I received a letter in the mail stating that i was infringing on their trademark. The letter states that they have the rights to MBS. when i researched...

    Richard’s Answer

    Trademark law requires use and not necessarily registration, although registration confers greater benefits. Descriptive marks are generally not as strong unless there is secondary meaning associated with the mark. I would want to know as much as possible about this other party's use before I comment on their rights. If they previously had a registration and/or sent you a cease and desist letter, then it may not be worth the fight to use a weak and descriptive name. Talk with an attorney before deciding to respond.

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  • Text Trademark, Upper Case or Lower Case?

    We are applying for a text mark containing two words, which we usually use in commerce in topic case (like "Smart Orange") However, when we searched in the PTO, we found that all word marks there are upper-cased. Is it because everyone appli...

    Richard’s Answer

    The case makes no difference for the application and/or clearance of the mark. Upper case is often used by trademark practitioners to identify a trademark. Otherwise, if the same mark exists as an active mark on the register at the PTO, filing for a lower case mark in the same class of goods/services will make no difference and will be refused over the prior word mark identified in upper case. You should consult with an attorney before filing a trademark on your own.

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  • When do I need to contact a university about licensing?

    I'm about to launch a line of crowdsourced t-shirts affiliated with an American university. The line of shirts do not infringe upon the school's mascot / logo, but do contain phrases (words) and last names of former athletes that create a theme /...

    Richard’s Answer

    You need to run this by an attorney. There are potential trademark, right of publicity (or the equivalent in Ohio), copyright, and possibly other issues that could make this all not worth the effort. You are asking an abstract question and needing a specific response. Go talk to someone or don't do it, as it sounds too risky to me.

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  • Is using the title of a TV show copyright infringement when an additional word is added to the title? Example: Duck Dynasty CA

    This project would be a private club, restaurant and store selling knockoff clothing etc.

    Richard’s Answer

    This is a bad idea and will likely get you a waning letter at best, or sued at worst.

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  • Another brand is launching with a very similar name which will damage our brand, what can we do?

    We are an independent small, but growing fashion label. We have trademarked our logo and brand name which is two words, and have built up a strong brand identity within our market in the past two years. We have recently discovered that another bra...

    Richard’s Answer

    You need to speak with a trademark attorney, disclose to her/him ask the facts and evidence you have, so that the attorney can help decide whether to send a letter or take a more aggressive action.

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  • If I make my products in China and have them shipped to the USA, does that count as use in commerce?

    If I make my products bearing the trademark in China then I have them shipped to WI and I sell my products in WI does that count as use in commerce?

    Richard’s Answer

    Generally speaking, yes. Any use that can be regulated by Congress is use in commerce.

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  • I would like to know if this is an infringement when another company is selling a product with same name like backstage pass ?

    I have a trademark usa and I sell shower curtains backstage pass shower curtain co. And noticed on line that there are several companies selling shower curtains with backstage pass in front is it considered infringement.

    Richard’s Answer

    The answer is maybe. How are you using the mark? Are you certain you are the first to use the mark? Do you have a federal registration? If all of these questions are answered in your favor, then you may have a basis to send a cease and desist letter or bring a suit to stop the infringement.

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  • Speaking in terms of patents, is there any legit way to search for patents besides having to pay for a prior art search?

    Thank You

    Richard’s Answer

    Yes:

    http://www.uspto.gov/patents/process/search/index.jsp

    https://www.google.com/?tbm=pts

    www.freepatentsonline.com

    Although, none of these will be as comprehensive as done on your own in comparison as having a search conducted by a trained search agent. I try to avoid doing my own dental work too.

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  • Do I need to trademark my company logo and name?

    Hello. I have recently formed an LLC and had my son design a logo. Interest has gone global. Recently a competitor has announced their intent to use the same name, but add a word. Am I protected under the LLC and if not, what steps do I need to ta...

    Richard’s Answer

    This is a specific inquiry that must be discussed with an IP attorney. Not knowing more, I would recommend trademark and possibly copyright protection. Trademark protection would cover the brand, and copyright protection would cover the unique design. Then we would have a basis to possibly stop the competitor, but I would want to look at that logo/design as well. There are many issues to consider here (e.g., like whether your mark/design is descriptive, functional, etc.), but these can be easily discussed with quick phone call. I'll be in Asheville on the 22nd, but would recommend a phone call beforehand.

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  • Is it illegal for a government agency to use a company's exact name, logo and slogan to promote an event they are hosting?

    The logos started being used a week ago, and the event will be held in a few days. The company has not given permission to use the logo. What are the legal options one has to pursue the government on this? It is the thought of the company that at...

    Richard’s Answer

    If you are going to sue the federal government, you'll have to bring suit at the Court of Federal Claims. You should at least speak with someone experienced with handling such cases. I worked at the Court and note that there are some procedural steps that must be followed. I would likely recommend starting with a letter to the agency. Either way, discuss this with someone specialized in IP law and with experience before the Court of Federal Claims.

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