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Stuart James West
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Stuart West’s Answers

75 total


  • I have a patent since 2000 - i made a mistake when filing and did an ad 13 months prior to filling my non provisiona - the

    patent was issued but a person knew about the add back then but just now came out and sued me --can a person with knowledge wait 10-15 years and bring it out

    Stuart’s Answer

    I agree with my colleague that this sounds like an action seeking declaratory relief of either non-infringement or invalidity--i.e. the suit is asking the court to preemptively make the determination that your patent is invalid because the application was filed more than 12 months after the initial public disclosure. Such actions are proper under certain circumstances.

    I STRONGLY RECOMMEND that you seek experienced intellectual property counsel with experience in this area and refrain from posting any other questions such as this on public discussion boards, as it may be used as evidence against you in the civil action.

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  • Which of these words are used in Specifications and Claims drafting, anyway?

    Adjust, adapt, alter, change, modify. So far all I know is that the first word I asked about, variation, isn't used, but does "refer to minor changes which are intended to fall within the scope of the patent claims." If none of them are used in ...

    Stuart’s Answer

    There aren't any terms (such as these) that are really prohibited from being included in claims and/or the specification of the application. However, there are terms that are more favored/disfavored. Whether a term is favored is largely determined by courts' interpretation(s) of the terms during claim construction/interpretation. Thus, terms should be selected based on whether they accurately describe the feature that you are trying to describe.

    If you're looking for a claim construction dictionary, the following may be helpful. However, it should not be relied upon as your sole source.

    http://www.pubpat.org/garrod-glossaries.htm

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  • I need to know if I should abandon or continue my trademark application.

    I recently applied for a trademark for our product in the UK as my US based company plans to sell our goods in the UK this year. But I just got a letter from the UK trademark office saying another company (a very big and well known one) has a tra...

    Stuart’s Answer

    In addition to my US based qualifications, I am also an English and Welsh Solicitor. Without more detail, it is difficult to tell what the reaction may be. However, the TM process is vastly different in the UK than it is in the US, so advice based on US law is not going to be helpful to you.

    First, I would recommend that you consult with a UK IP practitioner ASAP and keep the information off of discussion boards, as British evidentiary rules are also vastly different from US evidentiary rules and you do not want to write something that may come back to bite you.

    Second, the letter you received it accurate--if the examiner determines, in his/her opinion, that the owner of a similar registration may be damaged/offended by a new application by a 3rd party, the UK IPO is required to notify the holder of the TM. The owner of the registered mark then has a fixed period of time to object to your application for registration (similar to the US publication period). If there is an objection, the owner of the mark may (typically) reaches out to the applicant in an attempt to resolve the matter, prior to resorting to litigation. If the matter is settled via letters, there is not typically a request for compensation (unless the mark has been used and the registrant has already been damaged).

    Finally, you should be aware that unlike the US rule that each side bears its own attorney's fees, in the UK typically, the loser in a litigation pays the winner's attorney's fees.

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  • Are pro sports league abbreviated names (i.e. "MLB," "NFL," NBA," NHL," and "MLS") copyrighted? Example: "Future MLB Star" badge

    These would be kids' badges/buttons to wear in school, and to sell at a school fund raiser. No logos no team names, just generic black and white lettering on a yellow background. Thank you!

    Stuart’s Answer

    A quick check of the TESS (Trademark Electronic Search System) on the USPTO.gov site shows that these agencies do have trademark rights in these names in association with a variety of similar goods. Moreover, my experience with the NFL is that they are very sensitive to unauthorized use of their marks--our firm has represented former professional athletes and even they can have trouble obtaining licenses from these agencies in order to use the marks. Therefore, there is a possibility (although the probability is likely low due if these are only a very few items) that you could hear from the owners of the marks.

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  • Hi, I would like to trademark a name but it has previously been used. Can I trademark this name?

    It was previously abandoned in August 2006.

    Stuart’s Answer

    It sounds like you are referring to the status of the mark on the USPTO website. If the mark is indicated as "dead" that is not really the end of the inquiry. In the US, trademark rights arise out of use, not registration. So, while it does sound promising that the mark is indicated as abandoned or dead on the USPTO site, I would recommend that you conduct a complete investigation/search prior to either filing an application or investing a significant amount of money in using the mark as there may be a 3rd party that is using the mark and simply has not registered it.

    Assuming there are no senior users that show up in the search results, the there is a good likelihood that the mark would be capable of registration (assuming that the mark is not a generic term).

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  • If I license know-what to a manufacturer, will they ask me to indemnify them for manufacturability, operability, or safety?

    An inventor can't always be expected to know that an invention will have no snags or problems. It's as if companies expect it to have already been manufactured and test marketed, but rarely does an inventor sell his own product before he licenses...

    Stuart’s Answer

    Actually, in my experience it is very rare that a "naked" idea or patent/patent application is licensed by a legitimate manufacturer. Most licensees are quite risk averse and do not want to invest in products/ideas that have not been market tested.

    Regarding the indemnity requirements in the agreement, these are quite common--every agreement i can remember drafting has had some form of liability-shifting section in it. However, these terms are negotiable and do vary. Almost everything in a license agreement is negotiable.

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  • Attorney filing amendment after final followed by Notice of Appeal and Pre-Appeal Conference Request. What is this process?

    Attorney filing amendment after final followed by Notice of Appeal and Pre-Appeal Conference Request. What is this process and how much should it cost?

    Stuart’s Answer

    Unfortunately, there is really no way answer the first part of this question without seeing the final office action and knowing the prosecution history. A response after final could be as short as a few pages or many pages with exhibits and declarations and cost would vary dramatically based on the amount of work and level of complexity of the office action and required response. Moreover, every practitioner is free to set his/her own fees and should do so depending on education, expertise and experience.

    However, the filing if a notice of appeal is a simple process. So, the preparation and filing of that document should not have taken much time at all. I would say maybe between .3 and .5 would likely be reasonable as it is a simple document. That being said, the decision regarding whether to file a notice of appeal, pre-appeal pilot interview request, request for continued examination or do something else might have taken some time and required significant analysis.

    Regarding the examiner interview, once again without the office action and the prosecution history, it is really impossible to say how long the preparation would have taken. That being said, the interview itself would not likely have lasted more than an hour.

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  • Own registered trademark in USA. Ex agents using two websites that is under my trademark and gets directed to their copy brand

    My trademark is Chipstix with Registration Number 3904960 (http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4806:x7yj58.4.) One of my main websites is www.chipstix.org They are using a copy name called Tatostix, it is not registe...

    Stuart’s Answer

    Any analysis of whether the use of mark by another begins with a comparison of not only the trademarks, but also a comparison of the goods/services that are associated with the mark.

    Assuming for one moment that the goods that the competitor manufactures are identical to the goods associated with your trademark, the analysis would then turn to the a comparison of the marks "Chipstix" and "Tatostix" The question is whether to a consumer there is a reasonable likelihood of confusion between the two marks. Given the significant differences in spelling and the fact that the differences are at the initial part of the mark (understanding that the terminal portions of the marks are identical), it would likely be challenging to make a case that consumers would likely confuse one mark with the other and/or that a consumer would be reasonably likely to confuse the products based on the two marks.

    There are other factors that also bear on the analysis of whether there is a likelihood of confusion. If you search the terms "DuPont factors" or "Sleekcraft factors" you will find the relevant factors that are weighed in the likelihood of confusion analysis.

    In addition to the trademark issues, there may be other potential causes of action (unrelated to the trademark) that may give rise to a claim against the former agent/competitor. Any potential alternate claims would depend on the specific facts surrounding the split between your agents and your company and 1) may vary based on state law and 2) should be discussed in a private setting with your attorney.

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  • What is the "clear" demarcation between fair use and copyright violation?

    Do you have any representative cases that can attest these statements in a binary manner?

    Stuart’s Answer

    There is no "bright line" or clear demarcation regarding when a use is considered a fair use. The law regarding the fair use exception can be found at 17 USC §107 and identifies 4 factors that must be considered and balanced in making a determination as to whether the use qualifies as a fair us. The factors to we weighed and considered are:

    1.the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
    2.the nature of the copyrighted work;
    3.the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
    4.the effect of the use upon the potential market for or value of the copyrighted work.

    Each use requires its own independent analysis of the relevant facts and factors.

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  • If I wanted to get a logo patented what can I do?

    I am not an American citizen but I live in the United States. Will it be an issue for me?

    Stuart’s Answer

    The advice provided by others here is all directly on point. However if your "logo" has an artistic component, you may also want to consider registering the copyright on the logo in addition to seeking trademark protection.

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