James Juo's Answers

How close can a proposed registered trademark be to another to be acceptable for registration?

How close? That can be a very difficult and fact specific question. The legal standard is "likelihood of confusion." Would the use of the two mark likely cause consumer confusion as to the source of those goods or as to the sponsorship or approval of such goods? The legal analysis will typically look to a number of factors, including: (1) the strength of the mark; (2) the proximity of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of...

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What does deposition from day to day mean?

It sounds like there are several days between your husband's deposition and your deposition, and the opposing party is refusing to resume your husband's deposition and your deposition. It may be that, if the subject matter of your depositions overlap, then the opposing party may be hoping to use statements in your deposition to use against your husband (and possibly challenge his prior testimony). You could take the position that the opposing party should use the intervening days to finish your...

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Can you refile a federal case if you unilaterally dismiss it without prejudice before the statute of limitations runs out ?

This is a question you should be asking your current attorney. Nonetheless, here is some general information about FRCP 41 about voluntary dismissal. If the defendant has not filed an answer, then you can dismiss unilaterally by filing a notice. If the defendant has answered, then you will need the defendant to sign a stipulation to dismiss. If the defendant refuses to agree to a dismissal, then you will need to file a motion to dismiss (which a court may deny if the defendant...

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Do I need a trademark attorney? or Litigation?

Should [you] seek an attorney? YES. At this point, you need to consult with a trademark attorney about the specific facts of your case. For example, the first party to use the mark in interstate commerce is a critical issue. If you have not used the mark (for example, you only filed an intent-to-use, or ITU, application), and the other company has used the mark in commerce--then the other company may have superior rights. Then again, maybe the mark is generic, so no one should have...

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Shall I get patent in my name or my company's name?

A patent application in the US must be filed in the name of the inventor(s). While the inventor is the applicant, the application may be assigned to another person or company. Employment contracts typically include provisions requiring that the employee assign inventions created within the scope of employment. In addition to control issues (after you assign the patent to the company, if you lose control of the company, then you lose control of the patent), there may be tax implications...

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Invalidate trademark

If you believe that you will be damaged by the registration, you may file a petition with the USPTO to seek cancellation of an already issued registration of a trademark. Claiming that the registered trademark is generic is grounds for cancelling the registration. You will present evidence that the mark is generic. The registrant will present evidence that the mark is not generic. And the Trademark Trial and Appeal Board (TTAB), an administrative body of the USPTO, will decide the issue. While...

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Can I legally use a trademark word in conjunction with another word in my business name?

If the Florida company has a federal trademark registration for "Sparties" (which has nationwide effect), then your proposed use of Sparties in combination with another word is problematic. Before embarking on this course of action, you need to consult with a trademark attorney who can review the relevant trademark registration(s) and the specific mark that you intend to use, and help you assess the risk of proceeding. Good luck.

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What happens if discovery responses are due after the discovery cut off date in federal court?

If I were to receive discovery requests whose responses were due after the discovery cut-off date, I would likely respond with objections, including that the requests were not served with sufficient time to respond before the close of discovery. In a slightly different context, a slip opinion recently stated that "the timing of discovery must incorporate any deadlines imposed by the Court."

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Questions via interrogatories Vs Discovery

Discovery is the pre-trial phase in a lawsuit in which each party can obtain evidence from the opposing party using discovery tools such as interrogatories, requests for production of documents, and depositions. Interrogatories are written questions that are served on an opposing party. A request for production (RFP) is a legal request for documents, electronically stored information (ESI), or other items. A deposition allows you to ask questions of a witness under oath. This is...

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Can I go after a business in NC that is completely mirroring my company by using the same name/website/domain/email as mine?

If you have been using the same name before the other party, you may have superior trademark rights to that name. If you have not done so already, you may want to consider filing a trademark application with the US Patent and Trademark Office (USPTO) to register your trademark. You may also want to look into a UDRP action regarding the domain name, as well as a cybersquatting claim (15 U.S.C. 1125(d)). But before doing any of that, you should consult with a trademark attorney and conduct a more...

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