James Juo’s Answers

James Juo

Los Angeles Intellectual Property Law Attorney.

Contributor Level 16
  1. Do I need a trademark attorney? or Litigation?

    Answered over 2 years ago.

    1. Michael Charles Doland
    2. Anthony B. Cartee
    3. James Juo
    4. Frank Wei-Hong Chen
    5. Daniel Nathan Ballard
    6. ···
    9 lawyer answers

    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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  2. Even after a lot of reading and learning, I am still confused, how do I determine whether my business process is patentable?

    Answered about 2 years ago.

    1. James Juo
    2. Pamela Koslyn
    3. Robert A. Stumpf
    4. Gerry J. Elman
    5. Maurice N Ross
    6. ···
    8 lawyer answers

    The law of business method patents and patent eligibility (35 USC 101) is still in flux, even after two Supreme Court decisions (i.e., the Bilski and Prometheus cases). More recently, the Federal Circuit in CLS Bank International v. Alice Corp. Pty. Ltd., 685 F.3d 1341 (Fed. Cir. 2012) addressed a claim regarding a computer system for reducing settlement risk for business transactions. Two judges found the claim to be patent eligible because the computer limitations "play a significant part...

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

    Answered over 2 years ago.

    1. James Juo
    2. Michael Charles Doland
    3. Alexander H Butterman
    4. Daniel Nathan Ballard
    5. John E. Whitaker
    5 lawyer answers

    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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  4. I was sued in federal court for trademark infringement for the website i have taken out, is this case civil or criminal?

    Answered over 1 year ago.

    1. Andrew Kevin Jacobson
    2. James Juo
    3. Bruce E. Burdick
    4. Nicholas Duane Myers
    5. William Charles Sipio
    6. ···
    7 lawyer answers

    Most trademark infringement cases are civil, but some trademark cases are criminal. Have you been served yet with the complaint? Have you been asked to waive service of process? Or did someone simply inform you that a lawsuit had been filed in federal court against you? In any event, you should consult with a trademark attorney about your case.

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

    Answered over 2 years ago.

    1. James Juo
    2. Michael Charles Doland
    3. Frank Wei-Hong Chen
    3 lawyer answers

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

    Answered over 2 years ago.

    1. James Juo
    2. Daniel Nathan Ballard
    3. John E. Whitaker
    4. Richard Straussman
    5. Andrew Kevin Jacobson
    6. ···
    8 lawyer answers

    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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  7. Does law firm with no business registration in CA Sec. of State database have standing to sue me?

    Answered over 1 year ago.

    1. James Juo
    2. Frank Wei-Hong Chen
    3. Neil Pedersen
    4. Bruce E. Burdick
    5. Pamela Koslyn
    6. ···
    6 lawyer answers

    Johnson & Pham is the law firm that is representing the party suing you. If you are concerned whether the attorneys at Johnson & Pham are licensed to practice law in California, then you should check the State Bar of California (http://www.calbar.ca.gov/). Your reference to the California Secretary of State is off the mark because a law firm is usually either a partnership or LLP, and not a corporation or LLC. Copyright infringement is a serious allegation, and you should retain legal...

    12 lawyers agreed with this answer

  8. Is it illegal to sell designer inspired items in a retail environment?

    Answered over 1 year ago.

    1. Michael P Matesky II
    2. John E. Whitaker
    3. Frank A. Natoli
    4. James Juo
    5. Mario Sergio Golab
    6. ···
    7 lawyer answers

    It depends. Many stores sell their own versions of recent fashion designs under a private label. In general, copyright law does not extend to clothing designs (although there are some bills pending in Congress which may change that, if they are ever passed), although there are some exceptions such as a design pattern printed on fabric. A design patent could cover clothing, but this form of IP protection is underutilized because the lead time to obtain a design patent may be too long for a...

    13 lawyers agreed with this answer

  9. Invalidate trademark

    Answered over 2 years ago.

    1. James Juo
    2. Trina Ann Longo
    3. Alexander H Butterman
    4. Maurice N Ross
    5. Bruce E. Burdick
    5 lawyer answers

    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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  10. Is a Plaintiff entitled to discover a Defendant's litigation history as a Defendant?

    Answered about 2 years ago.

    1. James Juo
    2. Daniel Nelson Deasy
    3. A Melissa Johnson
    4. Lars A. Lundeen
    4 lawyer answers

    Discovery into prior litigation may be had if the requesting party can show that it is relevant to the claims and defenses in the present case. For example, if the prior litigation concerned an injury to your knee, and the current litigation concerns another injury to your knee, the prior litigation may be relevant. It comes down to the facts and issues in the cases, and the arguments that you can muster. Moreover, even if discovery into prior litigation is allowed by the court, that does...

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