Skip to main content
Frank A. Natoli
Avvo
Pro

Frank Natoli’s Answers

8,135 total


  • I want to start my own Animation Studios. How do I patent the name I want to call my animation studios?

    And what is the process you go through when you patent ideas? How do you do it internationally and, do you have to pay? If so, how much?

    Frank’s Answer

    The name is a trademark matter, which I will explain in more detail below. You really cannot patent an idea, only an actual invention. In you case, most of what you create will be protected under copyright law.

    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.

    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 you patent mobile app idea?

    I've heard that the wireframe plan (or plan of functionality on paper) can be patented. Is this true? The technology that is required for my app is not unique- it's a hybrid of existing technologies. However, I was wondering if the process in whic...

    Frank’s Answer

    The odds that a patent will add value or be economically viable for an app these days are probably pretty slim, but always worth have that discussion assuming you have the budget and are willing to spend on pursuing a patent. These days patent protection in this realm is usually out of reach but certainly not in all cases. This is a huge commitment that is not required and will be very costly if possible so you really need to do your homework before making any commitments about that if you were considering it.

    You always have trademark protection that identifies your app in the market place. There are a lot of games for example but only one Angry Birds. I will offer some general remarks about TM protection below.

    The written code, graphics and other creative expression will be protected under copyright, but if you are not the one actually creating all of that you need to have the right written agreement (IC/work-for-hire/NDA/NNN) prepared as between you and the people doing that work to ensure that all IP is conveyed to you.

    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.

    I will also add that you should be getting some specific actionable advice on your platform. You are going to have to deal with a number of legal considerations as you move forward anyway. For example, you have the business entity structure, clearing and registering your trademark (see below), copyright/DMCA considerations, written terms and conditions of use, privacy policy and Terms of Service or EULA drafting among others.

    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 my company use a design inspired by the Man of Steel logo on a T-Shirt meant for internal use only? It will not be sold.

    I've designed a Superman style logo, specifically parodying the Man of Steel logo. It is the 3-D "shield" shape, there is no "S", it is replaced with 3 numbers in a radically different font than the Superman logo, and it's entirely green. It is su...

    Frank’s Answer

    If you are only using it internally and not really using it to promote your goods or services then it is ornamental use and not really trademark use in any event. I would not be concerned assuming this is just a small scale usage.

    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 
  • My apologies for not being specific when I posted the following:

    I have a band and one of our members, or former members I should say, quit on their own. Since he decided to quit he is now demanding all pictures and song sample he was involved in at the time be taken down online because they are still online. ...

    Frank’s Answer

    Asking the same question again is not really going to be helpful. You need some actual legal advice here and much more attention than what a free public Q&A platform can offer you. As noted, there are several lawyers to consider here. The photos, the music, etc.

    I suggest that you consult with a lawyer in private and discuss your best course of action 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 and you are free to hire a lawyer located anywhere - that choice is yours to make.

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • What are the necessary steps to legally use a cover song that I produce and record for a commercial or movie sync

    I am a music producer, specialized in music for advertising and films. I would like to know what is the procedure to have the right to pitch a cover song to an ad agency or a film maker. Let's say I record and produce a cover of a David Bowie son...

    Frank’s Answer

    A mechanical license will be required for you to be able to record a cover. These can be obtained through Harry Fox Agency or Limelight.

    Beyond that, you will need to figure out the licensing stricture moving forward and there are several layers to it.

    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 
  • What should I do in this copyright infringement case?

    So I received an email in mid July from my ceg tek about copyright infringement. In a fear and panic I logged onto the site that they gave me the information for. The sum they are asking for is 2100. On top of that I called to find out If this is ...

    Frank’s Answer

    There is no "one way" to approach these scenarios. The odds that anyone would ever bother to sue you for this are very slim but I also can't say that it doesn't happen.

    Before you take any other 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 
  • What legal forms do I need to have signed to pass the rights to a logo over to me?

    My friend is designing a logo for me. It is for my service project and I want to ensure that I have all of the rights to it.

    Frank’s Answer

    This would be a work-for-hire/assignment agreement that will serve to transfer all IP rights over in the work. Remember too, that even without an agreement you would still be receiving an implied license to use the work for all its intended purposes, but it is much better to own all rights moving forward.

    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'm registering a copyright, what does "limit your claim" section mean exactly?

    I am going to register a copyright where I used something from an earlier design so I'm not sure if I need to limit my claim or not. I drew a picture of a strawberry and published it but never copyrighted it. I made a new character and he is...

    Frank’s Answer

    In general, 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.

    That said, and just based on your posting, I think I would treat this as a new drawing entirely especially in light of significant differences between the earlier design and what you now have.

    If you need further, 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 
  • My idea/solution can save the hotel industry millions? Do I need an intellectual property attorney to protect my idea/solution?

    The sharing economy has cost the hotel industry millions of dollars. By sharing economy I mean AirBnB, HomeAway and other similar platforms. Hotels lose an approximate $450 Million in direct revenues to AirBnB. NYC is the most affected city alt...

    Frank’s Answer

    Unless what you have is an actual invention of some kind that might qualify for patent protection, you really can't protect the "idea" of it. While you can employ a very well-drafted Non-Disclosure/NNN Agreement even here it will need to be particularized in order to be enforceable and it will not cover the general idea of your concept. Think of it this way. You are pitching an idea to the hotel industry in an effort to help solve a competition problem they have with these other services. This is certainly something they have been thinking a lot about and most probably have hired high-priced consultants to help solve it. You are obviously not going to divulge your ideas until they commit to the NDA. So even if they sign it, then say to you upon hearing your plans "sure, we have been kicking around something like that for the last year or so." How exactly are you going to prove that they have not already had the same or similar idea? And why would they put themselves in that position to begin with? And let's say they have already invested in a similar plan. Do you think that they would now scrap all that R&D and investment because they signed your NDA?

    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 
  • If two companies have the same name except one has "my" the other has "the". One of these companies is trademarked.

    If two companies have the same name but one has "the" the other has "my" in the name. One company is trademarked, the other isn't. Can the trademarked company sue the other even though their names have that slight difference?

    Frank’s Answer

    There is way more info needed to offer an answer for this. For example, if one was using the mark first then they have prior use rights under common law at least within the scope of their market penetration and market reputation even if the other registered their mark federally.

    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, but we also helped a client register their mark "VIP Television" after receiving an office action rejection because of the already registered mark "VIP TV" in the same class - the facts and nature of the mark matter.

    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 GA 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