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James Juo

James Juo’s Answers

821 total


  • Cancellation proceeding at USPTO

    Can you take a case out of TTAB and put it before the federal court during the cancellation proceedings?

    James’s Answer

    In general, you would not "take a case out of TTAB and put it" in federal court. Rather, you might file a federal lawsuit in US District Court involving the same trademark and then seek to stay the TTAB cancellation proceeding in view of the pending district court proceeding. This might occur where the federal lawsuit includes a claim, counterclaim, or defense that the trademark registration is invalid and should be cancelled. The merits of this approach for your particular case should be discussed with an experienced trademark attorney.

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  • What is the standard or recommended citation format for unpublished TTAB citations available in their public databases?

    The database could be e-foia or ttabvue. Is there not a recommended format for citations?

    James’s Answer

    Cite to the USPTO public electronic database. If a non-precedential decision does not appear in the
    United States Patent Quarterly (USPQ) or the USPTO's public electronic databases, the citing party should append a copy of the decision to the motion or brief in which the decision is cited. See http://www.uspto.gov/web/offices/com/sol/og/2007/week04/patcita.htm

    Notwithstanding the above, using the Westlaw or LEXIS citation may be acceptable as well.

    See also Blue Book rule 18.3.1.

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  • Textile company has been sent a notice of infringement of valuable rights. We have ceased sales of product, liable for damages?

    We purchase factory overstock from China, it appears some designs may be the property of another company they have demanded we stop selling and remove all information about this product from our site (done) Also requested sales report so they ma...

    James’s Answer

    You need to obtain legal counsel. It is not clear what IP rights are at issue here (and this may be relevant to the recoverable damages). At this stage, you do not "need" to provide the requested sales report, but the other side may sue you for past infringement if you do not (at which point you would have to produce such information in discovery). Again, you should retain an attorney to help you navigate these issues and hopefully resolve this without litigation.

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  • Does that constitute trademark infringement?

    iHookup.com and HookUP.com are both used for adult dating. Would one of them constitute a trademark infringement (specifically, "confusingly similar") against the other?

    James’s Answer

    This is not a question that can be answered in a vacuum. I am assuming the question relates to trademarks generally, and not specifically to domain names. If "hook up" is considered descriptive for dating, then neither would have trademark rights until one of them acquires secondary meaning--that is, when the consuming public primarily associates that mark with a particular source, and not as merely descriptive of the goods or services. This tends to be a fact-intensive inquiry.

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  • First file patent law

    I am interested in patenting a product and there is no patent on it as of yet. But there are few people selling this product. If I file a patent and its granted what are my rights against others who are currently using it? Can I stop them? ...

    James’s Answer

    "I am interested in patenting a product and there is no patent on it as of yet. But there are few people selling this product."

    Is this a product that others in the market have independently developed? If the answer is yes, then it would be considered prior art to a patent application that you file after March 16, 2013, and may be relied upon by an examiner to reject your patent application. Also, even if there is no patent issued, that does not mean that there not a patent application pending in the USPTO.

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  • Should I check "Intellectual property" or "Business tort/Unfair business practices" on the Civil Cover Sheet?

    I am suing a competing business for unfair competition. Because the conflict started with infringement of my copyright, I would like to ask for statutory damages. But my competitor tried to make me give up my copyright claim by bullying other ille...

    James’s Answer

    "Because the [unfair competition] conflict started with infringement of my copyright, I would like to ask for statutory damages." Please note that a federal copyright registration is required to obtain statutory damages for copyright infringement. It would be separate from an unfair competition claim.

    If you are asserting a claim under California's UCL (Section 17200), then you should review Kwikset v. Superior Court, 51 Cal. 4th 310 (2011); Clayworth v. Pfizer, 49 Cal. 4th 758 (2010); Saunders v. Superior Court, 27 Cal.App.4th 832 (1994); Allergan, Inc. v. Athena Cosmetics, Inc., 640 F.3d 1377 (Fed. Cir. 2011); and Pom Wonderful LLC v. Coca-Cola Co., 679 F.3d 1170 (9th Cir. 2012); if you have not already done so.

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  • Can I use a pro athletes face on a tee shirt and sell it?

    I had an idea about a possible tee shirt but it uses the face of pro athletes. If I cannot use it could I give them away for free but charge more for shipping? Or sell a smaller object and then include a free tee shirt?

    James’s Answer

    You risk infringing the pro-athlete's right of publicity. For an in-depth discussion, you might want to read the law review article at http://scholarship.law.marquette.edu/cgi/viewcontent.cgi?article=1442&context=sportslaw

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  • I submitted an invention to Davidson two years ago. I didn't have money for fees or patent, I see my product on tv what to do?

    I submitted a product for davidson inventions and was told the idea would sell two yrs. ago. I see my product being advertised just in a different form and I want to know If I have a law suit because although I didn't have a patent I have extensi...

    James’s Answer

    Without a patent, you cannot sue for patent infringement.

    Are you alleging that Davidson disclosed your invention to the company now selling the product? Is there any relationship between Davidson and the other company? Do you have any proof?

    You may find of interest the controversy over whether Antoni Meucci, Elisha Gray or Alexander Graham Bell invented the telephone independently (and whether Bell stole the invention from Gray). As stated by the Library of Congress: "Attributing the true inventor or inventors to a specific invention can be tricky business. Often credit goes to the inventor of the most practical or best working invention rather than to the original inventor(s). This happens to be the case of the invention of the telephone! ..." see http://www.loc.gov/rr/scitech/mysteries/telephone.html

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  • Can I use a company's name in my new business name ?

    I want to start a rental business focused on one specific piece of electronic device . Can I use that company's name in my new business name ? i . e . " San Fransisco Product X Rental "

    James’s Answer

    This is a difficult question to answer in the abstract. The key question is whether your use of the other company's name would likely cause confusion in consumers who may believe that the other company is providing the services you offer. For example, the use of the term "Volkswagen" by a car mechanic in an ad describing the types of cars he repairs has been held to constitute a nominative fair use. See Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350 (1969)). The court in that case held that extensive use of the word 'Independent' sufficiently distinguished his business from those affiliated with VW. However, these cases often are very fact-intensive, and slightly different facts can lead to different results. You should consult with a trademark attorney before adopting your business name.

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  • Merging after crossed infringement lawsuit? Is it legal?

    I just wanted to know if there are documented cases of two firm suing each other for patent infringement and then they have merged their patent portfolios . Is it legal for one firm to buy all the patents of another firm , and then become a mono...

    James’s Answer

    Sounds like a homework assignment. You may want to read up on the Mobil v. Exxon patent litigation in 1998. You can start at http://www.nytimes.com/1998/12/04/business/the-lion-and-the-moose-how-2-executives-pulled-off-the-biggest-merger-ever.html?pagewanted=all&src=pm

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