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Frank A. Natoli
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Frank Natoli’s Answers

8,115 total


  • Trademark infringement for a new website

    I am in the process of creating a blog around fashion. The blog would only really earn significant revenue if I had substantial traffic that I could then monetize. The issue I have now is whether or not to invest in a trademark search or just pick...

    Frank’s Answer

    So, "The Fashion Blog" is generic. "Emily's Fashion Blog" is far from a strong trademark like Exxon or Google but it would not be considered generic and could be protected, so if for example there was a confusingly similar trademark in use already that might be a problem which is why you would need to do a proper clearance.

    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.

    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.

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • Is it copyright or trademark infringement if a business displays gift artwork made for them that looks like a character?

    My friend owns a business. Their name is the same as a popular, still covered under trademark/copyright, video game character. It is spelled differently. Students at the local high school made a project piece of this character and gave it to the b...

    Frank’s Answer

    It is possible that it could be seen as both a trademark and copyright infringement. As my colleague notes, the exposure is probably pretty law here, but it is hard to say more without the proper context.

    If your friend is concerned, I suggest that he consult with a lawyer in private and discuss his objectives in more detail. He 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 
  • How Can I Protect Myself and My Company?

    I have a company in development, and just recently finished a prototype. An investment group jumped on and wants to help me get an official first version out and raise capital in return for equity, which is awesome. But, they are wanting to use th...

    Frank’s Answer

    Your question is appreciated of course but there are just far too many moving parts involved here for any of us to be helpful. For starters you are going to want to have a properly drafted agreement in place even before you get the substantive aspects like creating a proper entity, etc.

    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 be sued

    I am a volunteer for a nonprofit and I want to bring back a fair that ended back in 2007, I spoke with the board of directors and they like the idea, but want me to be the promoter. I agreed and spoke with the city because they were a co-sponsor o...

    Frank’s Answer

    No one has a right to the "idea" of a fair. That is, you are certainly free to run a new fair. If you are concerned about what we call "market confusion" which is the basis for a trademark infringement claim, you probably have little to worry about regards to the prior operator because so much time has passed. But if for example they continued to operate in other locations this could be an issue. It could also be the case that there exists other companies operating under the same or similar name. To that point, however, not every fair name is really going to be protected by trademark. That is, a Festival for St. Joseph is going to be a Festival for St. Joseph no matter where it is held. But if someone actually branded this as a business then that might be different. I would get some specific advice on it before moving forward just so you understand exactly what if any steps you should be taking and if it does seem that trademark is relevant to your situation I will offer some general remarks below on that topic.

    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.

    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.

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • Can I use the South Park disclaimer as the disclaimer for my YouTube talk show?

    Can I use the South Park disclaimer as the disclaimer for my YouTube talk show?

    Frank’s Answer

    The short answer is most likely yes because standard forms and contracts, etc. do not possess the creative expression that is the subject of copyright protection. It is possible that some terms or disclaimers are creatively drafted that one might be inclined to consider them "proprietary" but this would be a very rare instance.

    That said, you never want to just copy and paste someone else's terms or disclaimers because they were not drafted with a eye towards your interests and in legal drafting sometimes even one word can make a big difference regards to the outcome. But all likelihood it would not be a problem for you.

    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 
  • How can someone oppose one word in a trademark?

    I've applied for a trademark "intend to use". My name is something like 'Str8 Cake' in the category of clothing namely, shirts, ties, shoes, socks, pants and so on. (2016) Then someone sent me an email saying that i needed to amend my category ...

    Frank’s Answer

    Before you do anything further, you need to have a proper clearance done. I suspect that if someone has already registered the term "Cake" in connection with Class 25 then the Examiner may reject your application EVEN IF you omit shoes from your list, but this depends on how saturated that terms is. It is possible that a co-existence agreement could be entered into if you were sure that you did not want to deal in shoes and they were willing to allow you to move forward with all the other goods, but this requires a proper analysis and certainly has its drawbacks as well.

    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.

    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.

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • My contract says that any intellectual property is owned by my employers. Is hat always applicable

    As a physician working for a healthcare company I have an idea I want to patent something but my contract says that my patents are a property if the company. Is that enforceable?

    Frank’s Answer

    You received some good responses. These agreements are certainly enforceable especially where the IP was developed as part of your employment, falls within the scope of your employment, was developed on company time or using company resources, etc.

    What you need to do is have the whole agreement reviewed properly along with all the specific facts and circumstances. 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 sell a Seahawks inspired scarf on etsy?

    I love the Seahawks, so I knitted a blue, white, and lime green scarf. I know he nfl team names are trademarked. Can I sell the scarf as "Seahawks Inspired Scarf" or can I not make any mention of the team at all? Thanks

    Frank’s Answer

    While no one brand can claim the right to a set of colors in a vacuum they can claim trade dress in certain colors and police against others exploiting that to their benefit. So if your market is clearly associating your product with the Seahawks you are committing trademark infringement irrespective of whether you actually use their brand name or logos. A good question to ask yourself is "why are they buying my product?" Is it because they too are Seahawk fans? If so, then the NFL has a claim.

    Before you jump in here, 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 the copyrighted brand name in my own domain name?

    I want to start a consumer blog about products from one particular company. Can I use my own domain name such as : bestsumsungdeals.com It is just an example.

    Frank’s Answer

    You received some good responses. In general, you are free to use another's trademark descriptively in text to refer to that mark holder. This is called "nominative fair use" and the classic example is using the terms "Coke" or "Pepsi" on a menu as opposed to "cola flavored carbonated beverage." You just have to make certain that you are not presenting a false association, sponsorship, endorsement or other affiliation with any given trademark owner. I would also make sure you understand where to draw the line regards to disparagement to avoid being accused of defamation. Using logos, however, is often seen by the courts of using more than what is necessary to convey your point and can lead to accusations of infringement.

    That said, using another's TM in your domain raises the stakes, but it is not unlawful if in fact you are not presenting association and merely showing your market what products you sell. For example, the domain "leasealexis.com" was found not to be infringing on Lexis's brand where the business attached to the domain was in fact leasing Lexis products. Had they just used something like "Lexis_USA.com" I suspect that would have had a different outcome.

    You may want to brainstorm your own distinctive brand as well. 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 NY 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.

    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.

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • Can i sue these rappers for infringement, my work was copyrighted in 2012, since then they have stolen ideas & even lyrics

    All songs listed released by me (TA3$) on November 20, 2012: Paranoid - https://youtu.be/OK-GS_sZ9gg lyrics: "Man I'm paranoid yea the boy paranoid, smoking all this tweed got a ni**a paranoid/ at home by myself stay paranoid, even though I ...

    Frank’s Answer

    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.

    You cannot protect "ideas" and generally phrases or small groups of words will not qualify for copyright protection so unless there is a lot more to the picture here, I see no claim based solely on what you provided here.

    If there is more then 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