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Frank A. Natoli
Avvo
Pro

Frank Natoli’s Answers

7,882 total


  • Will I get in trouble if I were to make a song about a deceased person without notifying or asking permission from their family?

    I would like to make a song but I don't know if that'll get me in legal trouble with the family. Help me please

    Frank’s Answer

    You are free to write a song about anything you like in general. The rights of publicity and privacy, which many states extend to deceased persons ranging from 10-100 years after they pass, generally kick in when one's name, image or likeness (especially a famous person) is used to help promote or sell a good or service. Merely writing about them in a song does not get you there. Depending what is being discussed in your work if for example you revealed very personal private facts about someone who was not otherwise newsworthy or in the public eye there is a claim for the public disclosure of private facts, but I'm not at all sure whether an estate could bring such a claim on behalf of a deceased person. I think perhaps they could if they can show had it harmed them as well, but I'm not sure.

    In general, you have no worries if in fact the person is not actually fully identified in the song. That is, if you are singing about a deceased person their family may recognize that you are referring to that specific person, but perhaps no non-intimate person would ever know who you are referring to exactly in which case there would likely be no basis for any claim.

    Before you make any investment in this, I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • I want to trademark a design, and sell the product as a T shirt. If I register the trademark in my name, can I switch it over to

    I want to trademark a design, and sell the product as a T shirt. If I register the trademark in my name, can I switch it over to a business entity later? Or should I register the trademark in business entity? If I register the trademark in my name...

    Frank’s Answer

    The design may or may not be serving as a trademark (logo or image mark). It could just be a design on a shirt which we call ornamental use but it still has copyright protection. Any creative expression will be covered by copyright law automatically. Then you register the work with the US Copyright Office so to perfect your bundle of federal rights like the right to access the courts, the right to ask for statutory damages (sometimes the only damages worth bringing the case over), the right to attorney fees, etc. But if the design is serving as a source identifier like the Nike swoosh symbol or the golden arches of McDonald's it should be filed on its own image mark application. The first part typically is in clearing the standard character text name of the mark (e.g., the word "McDonald's" as opposed to the golden arches). You can register the mark to you personally then assign it over later if you prefer. You should set up a proper business entity to help mitigate liability as well, but registering your trademark will ultimately help mitigate law suits not increase the chances of one.

    Before you invest in any trademark make sure you get some legal guidance upfront. It is of course best practice to clear it before you start using any trademark and starting with a strong one is your best strategy. Know as well that merely registering your business name with a state or county agency or acquiring a domain does not convey any right to use that name in commerce as a source identifier or trademark. For example, I can presumably register my new tech start up "Boogle" with the TX secretary of state because there is no other business already doing business there under that name, but this does not mean that I would not be infringing on the Google trademark, which I would be. The onus is on you to ensure the name you choose is not a problem.

    Your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance.

    Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence on all the text names upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the links below on the importance of the due diligence process and common start up mistakes from Entrepreneur Magazine and our overview guide.

    I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free consultation, get some insights then pick the best fit to work with and know you are free to work with counsel located anywhere as you have many options available not just those that provide services in your home state.

    http://www.entrepreneur.com/article/220224

    http://www.avvo.com/legal-guides/ugc/the-import...

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • Do I have the legal grounds to copyright and/or trademark my clothing brand name if a similar name exists in other countries?

    I'm trying to create a clothing brand that creates designs to go on clothes, not designs for clothing. I'm in California currently but may be moving soon for college. The other companies are in Amsterdam and Denmark respectively but both sell on t...

    Frank’s Answer

    The fact that they operate in other countries really will not matter if they are not placing their goods into the US market. A registration is not required in the US however as is the case in many countries that recognize common law rights, but these rights only extend to the scope of your market penetration and market reputation. So if they are doing business here they may have rights. In an internet age this analysis is certainly more chewy but just because you have a website and sold some product in a certain area does not mean you can claim that as a market area as the analysis is much more nuanced. Of course, having an online presence should make you think about it as well because even if you have the clearance to use the mark will some people online confuse the companies? And if so, will this be a problem for you? Imagine if they started running their business into the ground and began to get terrible reviews. Would your potential market start to assume these reviews are your reviews?

    Before you invest in any trademark make sure you get some legal guidance upfront. It is of course best practice to clear it before you start using any trademark and starting with a strong one is your best strategy. Know as well that merely registering your business name with a state or county agency or acquiring a domain does not convey any right to use that name in commerce as a source identifier or trademark. For example, I can presumably register my new tech start up "Boogle" with the CA secretary of state because there is no other business already doing business there under that name, but this does not mean that I would not be infringing on the Google trademark, which I would be. The onus is on you to ensure the name you choose is not a problem.

    Your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance.

    Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence on all the text names upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the links below on the importance of the due diligence process and common start up mistakes from Entrepreneur Magazine and our overview guide.

    I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free consultation, get some insights then pick the best fit to work with and know you are free to work with counsel located anywhere as you have many options available not just those that provide services in your home state.

    http://www.entrepreneur.com/article/220224

    http://www.avvo.com/legal-guides/ugc/the-import...

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • If i make a short movie and post it on social site with a song that has been copyright for no financial benefit is it illegal?

    I am making a short film and want to post it for people to see. I would like to use a famous song in the video but i am trying to find out if i am not posting the film for financial gain will it be illegal without consent as long as i cite the so...

    Frank’s Answer

    As noted, unless this falls under some clear fair use it would be an infringement, for example if you were actually commenting specifically on the song or its author, social message, etc. A sync license is required when you use music in conjunction with a video work.

    If you need further clarification, I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • Can I use a country top-level domain when the top level 'com' is registered by someone else?

    I would like to register a domain like 'bookg.us' because the 'book.com' and 'book.us' is registered by others. In my case, the 'book.com' and 'book.us' both have a 'This domain is for sale' page as their first page. Could I register 'bookg.us' wi...

    Frank’s Answer

    I already answered the other almost identical question. If you are seeking to create trademark rights of your own here the following might be helpful.

    Before you invest in any trademark make sure you get some legal guidance upfront. It is of course best practice to clear it before you start using any trademark and starting with a strong one is your best strategy. Know as well that merely registering your business name with a state or county agency or acquiring a domain does not convey any right to use that name in commerce as a source identifier or trademark. For example, I can presumably register my new tech start up "Boogle" with the WA secretary of state because there is no other business already doing business there under that name, but this does not mean that I would not be infringing on the Google trademark, which I would be. The onus is on you to ensure the name you choose is not a problem.

    Your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance.

    Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence on all the text names upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the links below on the importance of the due diligence process and common start up mistakes from Entrepreneur Magazine and our overview guide.

    I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free consultation, get some insights then pick the best fit to work with and know you are free to work with counsel located anywhere as you have many options available not just those that provide services in your home state.

    http://www.entrepreneur.com/article/220224

    http://www.avvo.com/legal-guides/ugc/the-import...

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • Can I use a country top-level domain while the top level 'com' is registered by someone else?

    I would like to register a domain like 'book.us' because the 'book.com' is registered by others. In my case, the 'book.com' has a 'This domain is for sale' page as its first page. Could I register 'bookg.us' without any problem?

    Frank’s Answer

    There is no straight forward answer here. If the dominant part of the domain is just generic like you used here with book.com then this is no problem so long as you have a good faith purpose for the domain. But if the domain is also used as a trademark like Google.com trying to register "Googleg.us" would be a big problem for you unless you have a very good non-infringing purpose for it.

    Before you do anything, I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • Will I need a lawyer I have an invention idea?

    I know there are services available to take an invention idea to but how do I get protection for myself

    Frank’s Answer

    Before you make any commitments, I suggest that you consult with an IP lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with. I would stay away from invention help type outfits as they are notorious for being misleading and the USPTO even has warnings about them.

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • Is it common for an US importing small-business to put on its website the logo/website of its small-business provider?

    What is commonly done? Does the small-business/provider pay for having its logo on the distributor's website? Is it better for the distributor to not put its provider's logo on its own website in order to avoid unfair competition? Or, an agreement...

    Frank’s Answer

    A lot of this depends on the relationship you have with this other company if any. You should have a written agreement in place that will discuss the use of IP. This question cannot really be answered here without knowing exactly what you are using and how. You are always free to refer to trademarks or trade names descriptively in text but using a brand's logo is often seen as using more than what is necessary to express your point. For example, it is the reason we see Coke or Pepsi written in menus instead of "cola flavored carbonated beverage," we call this "nominative fair use." But if you present a false association, endorsement, sponsorship or other affiliation with a brand you afford them a cause of action, which is more easily proved out when using their logos and trade dress.

    Before you take any action, I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • I have a question in using the word snuggy (not snuggie) on an idea I have.

    Since the Snuggie name is trademarked I have a question on an invention I may be working on. Below is an example if I use the word Snuggy (not Snuggie) as follows. Would it be infringement if I name a utility with the word Snuggy in it for...

    Frank’s Answer

    The question has everything to do with what the trademark will identify. Many trademarks share the same or very similar terms. For example, we are not confused as between Delta Airlines and Delta faucets. But as the goods and services become more closely related the specter of infringement increases. I could not name my new tech start-up "Boogle" and get away with it. There are probably many Snuggy trademarks I use.

    Before you invest in any trademark make sure you get some legal guidance upfront. It is of course best practice to clear it before you start using any trademark and starting with a strong one is your best strategy. Know as well that merely registering your business name with a state or county agency or acquiring a domain does not convey any right to use that name in commerce as a source identifier or trademark. For example, I can presumably register my new tech start up "Boogle" with the CA secretary of state because there is no other business already doing business there under that name, but this does not mean that I would not be infringing on the Google trademark, which I would be. The onus is on you to ensure the name you choose is not a problem.

    Your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance.

    Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence on all the text names upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the links below on the importance of the due diligence process and common start up mistakes from Entrepreneur Magazine and our overview guide.

    I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free consultation, get some insights then pick the best fit to work with and know you are free to work with counsel located anywhere as you have many options available not just those that provide services in your home state.

    http://www.entrepreneur.com/article/220224

    http://www.avvo.com/legal-guides/ugc/the-import...

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • How do I protect my intellectual properties

    I'm thinking about releasing my music but how do I protect my intellectual property so it doesn't get stolen from someone more famous then me?

    Frank’s Answer

    Any creative expression, like a musical composition or lyrics, will be covered by copyright law automatically. Then you register the work with the US Copyright Office so to perfect your bundle of federal rights like the right to access the courts, the right to ask for statutory damages (sometimes the only damages worth bringing the case over), the right to attorney fees, etc.

    There can be many nuances involved with what you are doing, so I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question