Brian Patrick Kinder’s Answers

Brian Patrick Kinder

Irvine Trademark Infringement Attorney.

Contributor Level 7
  1. Can I have an 'actual use' application converted to an 'intent to use' application?

    Answered 9 months ago.

    1. Brian Patrick Kinder
    2. Michael Charles Doland
    3. Michael D Volk Jr
    4. Bruce E. Burdick
    4 lawyer answers

    Yes, you can convert a use based application (Section 1a) to an intent-to-use application (Section 1b). Look up the Trademark Manual of Examining Procedure (TMEP) online and then look at Section 806.03(c) Amendment From §1(a) to §1(b). It explains everything in detail and I have copied and pasted it below. Keep in mind, however, that this often times does not solve the problem because the issue is usually more substantive. You really should speak with a tm lawyer to sort this out. It takes...

    11 lawyers agreed with this answer

    1 person marked this answer as helpful

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

    Answered over 2 years ago.

    1. Brian Patrick Kinder
    2. James Juo
    3. Michael Charles Doland
    4. Maurice N Ross
    4 lawyer answers

    It sounds like the terms is a telescoped word joining SPA and PARTY (or the plural) together as a single word. If they have registered it as you say, then they are entitled to a presumption of ownership and validity under the law (you would bear the burden of proving otherwise - one of the many advantages of registering your trademarks). The test for trademark infringement then essentially boils down to the issue of whether consumers will be confused into thinking that there is some...

    9 lawyers agreed with this answer

  3. If I use a trademarked company's name in a drop down menu on my internet page, would that amount to infringement?

    Answered almost 3 years ago.

    1. Brian Patrick Kinder
    2. Anthony B. Cartee
    3. Michael Charles Doland
    4. Maurice N Ross
    5. Gerry J. Elman
    5 lawyer answers

    It is very difficult to answer these sorts of questions in a vacuum - you really need to see how you're using it to make the determination. However, let me see if I can give you some guidelines because it essentially comes down to whether a consumer is likely to think that there is some sort of affiliation with your company and the owner of the trademark. For example, if you are selling windshield wipers, and your website makes clear that you are an independent company, then you would be...

    9 lawyers agreed with this answer

  4. Can the name of the product and its accompanying logo be trademarked under the same application?

    Answered over 2 years ago.

    1. Gerry J. Elman
    2. Bruce E. Burdick
    3. Michael Charles Doland
    4. Michael Alan Shimokaji
    5. Brian Patrick Kinder
    5 lawyer answers

    No, separate applications are required. One application would be directed to the words and the other to the logo. You will typically see the first type of application called a "standard character" or "word mark" application and the other a "stylized" or "design mark" application. Depending upon how you use your mark, it might also make sense to apply to register the design element of your logo alone - that is, if you use it separately and it has independent commercial value. Have to be...

    3 lawyers agreed with this answer

  5. Is it illegal to hash tag someone else nickname on your photo ?

    Answered over 1 year ago.

    1. Brian Patrick Kinder
    2. David Wade Barman
    3. Maurice N Ross
    3 lawyer answers

    Intellectual Property laws are both broad and complex. Every case rises and falls on the specific facts of the case. One thing you will find that holds true, however, is that the law in general will not allow someone else to profit off the name, reputation, and goodwill of another. Ask yourself, "would I be mad if someone else did this" or worse yet "would I be on the phone to my lawyer if someone else did this?" If the answer is yes, then there is a good chance that the other person will...

    2 lawyers agreed with this answer

  6. How do spaces and punctuation marks impact a trademark registration?

    Answered 9 months ago.

    1. Michael Charles Doland
    2. Bruce E. Burdick
    3. Michael D Volk Jr
    4. Brian Patrick Kinder
    5. Eugene Vamos
    5 lawyer answers

    You apply for your trademark in the exact manner in which it is used. Using your familiar brand as an example, you would apply to register MR. CLEAN as the trademark since that is how it is used.

    1 lawyer agreed with this answer

  7. Petition to Cancel at Trademark Board

    Answered almost 3 years ago.

    1. James Juo
    2. Pamela Koslyn
    3. Brian Patrick Kinder
    4. Trina Ann Longo
    4 lawyer answers

    Short answer, yes. Long answer. The strength of a mark falls along a spectrum with a generic term falling on the end where there is no strength and the term is not a trademark. Sometimes legal jargon makes things sound more complicated than necessary. So, here is a very easy way to distinguish between a trademark and a generic term (and you don't need to be a lawyer to make the call): a trademark is an adjective, a generic term is a noun. As an example, lots of people like to (...

    1 lawyer agreed with this answer

  8. My new company has the same name as someone else in a different state. I do apparel. they do precious metals/stone

    Answered about 3 years ago.

    1. Brian Patrick Kinder
    2. Edna Carroll Straus
    3. Barbara I Berschler
    3 lawyer answers

    Unfortunately, nobody here will be able to answer your question with an affirmative yes or no because to do so would require you to provide more specific facts. To preserve attorney client privilege you simply cannot get specific answers to specific questions on an open forum like this. In general, however, I can tell you that test for trademark infringement focuses on whether there is a likelihood confusion. There are many, many factors that go into determining if a likelihood of...

    1 lawyer agreed with this answer

  9. Is it legal to copy a CD that is borrowed from a library to my computer?

    Answered about 3 years ago.

    1. Esmond Jude Lewis
    2. Brian Patrick Kinder
    3. Mario Sergio Golab
    4. Daniel Nathan Ballard
    5. Alan James Brinkmeier
    5 lawyer answers

    The other contributors are probably correct that this would be illegal. However, the only way to truly answer your question is to read the terms of use, license agreement, or whatever agreement are associated with the contemplated CD. I suppose it is possible that the CD you have comes with an open source free to copy agreement - very, very unlikely though (hence the assumption by all other contributors that this would be illegal), but I suppose it is possible? In the end, you have to...

    2 lawyers agreed with this answer

  10. I am in a car club/crew and I was wondering what steps do we have to take to get our name legalized and where to do it at?

    Answered about 3 years ago.

    1. Pamela Koslyn
    2. James Juo
    3. Brian Patrick Kinder
    4. Christopher James Van Dam
    4 lawyer answers

    The other commentators have done an excellent job answering your question (also, hello to James Juo - we used to practice together back in the day! - Cheers). I would add that you could also look into registering your mark at just the California state level with the Secretary of State (i.e., rather than the Federal level at the U.S. Patent and Trademark Office). Go to the California Secretary of State website and there is an entire section devoted to registering a trademark with the State, as...

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