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William F Lang IV
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William Lang’s Answers

483 total


  • Filing a trademark application

    Can I file a trademark application for the term College mentoring?

    William’s Answer

    No. College mentoring appears to be a generic name for a service. Allowing such a term to be registered would prevent others from describing the services they offer.

    When selecting a trademark, try to choose something that suggests, rather than describes, a quality of the goods or services, or which has no apparent connection to the goods or services. A descriptive mark is not entitled to trademark protection until it becomes associated in the minds of consumers with a source of goods or services, which is called acquired distinctiveness or secondary meaning. Typically, this requires five years of continuous, substantially exclusive use, but more may be required in the case of a highly descriptive mark. A generic mark, which describes a class of goods or services, is never entitled to trademark protection. A suggestive or arbitrary mark, which is inherently distinctive, is entitled to immediate trademark protection.

    Before adopting a trademark, I always recommend a full trademark search and clearance opinion. The search covers not only federal registrations, but also state registrations, telephone directories, Dunn & Bradstreet, trade directories, Internet domain names, Internet searches, and other sources of information about common law trademarks. Variations, fragments, and misspellings of the mark are searched, so that any mark that might present a risk of confusion is identified. The results of the search are then analyzed, and a written opinion prepared. If the results are favorable, then you can be reasonably assured that you will not receive a cease and desist letter after having spent thousands of dollars on signage, advertising, etc., making the search very worthwhile.

    If the search results are favorable, then an application for federal registration should be promptly filed. This can be done based on a bona fide intention to use the mark, but actual use of the mark is required in order to complete the registration process.

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  • How can I determine if my idea is patentable or not?

    For a consultation, it will cost me approximately $400. What if my idea is not even patentable? I don't want to waste my money if I could have researched it myself.

    William’s Answer

    Unless an invention is particularly complicated, an idea of whether the invention is proper sobject matter for a patent can likely be provided very quickly. However, the question of whether an invention is patentable requires knowledge of the closest prior art, which requires a patentability search.

    You can and probably should start with your own search online. You can search the US Patent and Trademark Database as well as Google, including Google Patents. Keep in mind, however, that such searching is limited to term and boolean connector searching, so if someone picked a name for something other than the term you are searching, that reference will not be found. A professional patent searcher will also search by class and subclass, so if your own searching appears favorable, then a professional patent search and patentability opinion by an attorney are good next steps. You should also make your attorney aware of whatever references you found.

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  • Trademark domain name infringement

    I own an eCommerce shop that has a domain name that is similar to cheapelectronics.com The issue is I own cheapelectronics.net. From what I understand the USPTO does not show that my competitor has a trademark. It is just that the domain names are...

    William’s Answer

    There is no liability for having a domain name that is similar to another domain name, unless the other domain name is also a trademark.

    Use of a domain name is merely use of an Internet address. It is only when the domain name is used as a trademark, for example, in a large font at the top of a web page through which the goods or services are sold, that it becomes a trademark. It is trademark infringement to use a domain name that is similar to a trademark.

    Trademark rights are acquired through use of the trademark in commerce to identify goods or services as originating from a particular source. Registration provides a presumption of the right to use a trademark throughout the entire country (or state, if the registration is at the state level), but is inferior to common law rights that existed through actual use in a given geographic area prior to the filing of the application for registration. So, the lack of a registration does not necessarily mean that trademark rights to not exist.

    I tried to check the cheapelectronics.com website, but it was not active when I checked it. Depending on whether it has been active in the past, that may be an indication of whether they have trademark rights. In the absence of such rights, there would be no infringement.

    Given the desire of most business owners to use a domain name that matches one of their trademarks, a clearance search is advisable in advance to ensure that no trademarks are infringed.

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  • For a patent application, can Time extension be filed after 3 month reply period of final action from USPTO?

    If for a patent application a final Office action has been received with a 3 month reply period, can an RCE together with a 2-month time extension request be filed just a little prior to 2 months after the 3 month reply period? I remember seeing s...

    William’s Answer

    Yes, you remember correctly. Since this is a final rejection, the deadline continues in effect until you receive a notice of allowance, file a request for continued examination, or file a notice of appeal.

    From your question, it appears that you are trying to prosecute your application without the help of an attorney. In the very unlikely event that this results in allowance of any claims, the claims will likely be narrower than necessary. Furthermore, if the invention was publicly disclosed after the application was filed, depending on the timing of the public disclosure, the options for resolving any issues become much more limited. I strongly encourage you to engage a patent attorney ASAP.

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  • 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...

    William’s Answer

    It depends.

    The scope of patentable software has been scaled back in recent years, but software remains patentable, and some signs indicate that the pendulum might be starting to swing the other way. In general, an invention is patentable if it is novel (no one has done it before) and nonobvious (not obvious to one skilled in the art based on what has been done before). Algorithms, by themselves, are not patentable. However, software that is tied to specific hardware components and solves problems specific to the world of computers (or smart phones) remains patentable.

    You must also be able to describe how to make and use your invention well enough so that someone skilled in the art would be able to do so.

    I suggest discussing your idea with a patent attorney in private.

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  • Can I mention or refer to "Mario" or "Super Mario" in a promotion for my app?

    I've recently released my new mobile game that is similar to Super Mario. I also own 3 websites and have email list with thousands of people on all 3. My plan was to send a promotion for my game to everyone in my lists. I'm wondering if it's legal...

    William’s Answer

    I would proceed carefully, given the potential for both trademark and copyright issues.

    You can use a trademark owned by someone else to truthfully refer to their product, but not in any way that implies affiliation with or endorsement by the trademark owner.

    Since the game is "styled" like "Super Mario," a question arises about how closely your game follows the Super Mario game. Video game characters, movement patterns, etc. are copyrightable. A copyright for software generally covers both the code and the screen displays. However, certain elements that are common to many different games will not be copyrightable, and these elements are excluded from a copyright infringement analysis.

    I would suggest asking an attorney to compare your game to Super Mario, as well as to review your proposed promotional email, privately in order to identify and minimize any infringement risks that may be present.

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  • Can I amend my intent to use trademark application to show a different owner before getting a notice of allowance?

    I am in an odd predictement. I filed an intent to to use trademark application under COMPANY A name, I got a "SUSPENSION NOTICE: NO RESPONSE NEEDED" because "PRIOR-FILED PENDING APPLICATION FOUND". The prior filed pending application is another in...

    William’s Answer

    Both applications can be assigned to the company you wish to own them, provided that this is the company that will actually use the trademarks. Trademark assignments must be carefully drafted. In the US, ownership of a trademark cannot be transferred unless the transfer includes the "goodwill" or reputation associated with the trademark. You should speak with a trademark attorney about your plans for use of the mark.

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  • Can I name a band after a permanently closed business?

    I want to self-release a CD under a new band name, and I realized that an old arcade from my hometown (which is now closed down for good) has a cool name. If I want to charge money for this CD, are there any legal repercussions for using the title...

    William’s Answer

    As a general rule, nonuse of a trademark for three years creates a presumption of abandonment. Depending on when the arcade closed, your biggest concern might not be the former arcade, but other uses who may have adopted the same or similar names for related goods and services. As others have mentioned, a clearance search and opinion are always recommended before beginning use of a trademark.

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  • How do i file a u.s. patent

    it's a patent for a physical product. an accessory for SUVs and hatchbacks.

    William’s Answer

    Although your question is directed towards filing a patent application, and for which you have received some good answers, I suggest taking a step back from that question to the question of your commercialization plans. A patent is a tool for protecting your idea from others who would seek to profit from your work, but does not, by itself, enable you to profit from it.

    Many individuals hope to profit from getting a patent and persuading a large manufacturer to agree to license the patent. While this appears to be a simple way to go at first, it actually has only a small likelihood of success unless you are a known expert in your field, and/or have a pre-existing relationship with the prospective licensee. A more difficult road, but one with a higher probability of success, is commercializing the invention yourself.

    The patent process should start with a patentability search to determine whether patent protection is available for your invention. If so, then a patent application should be filed before you begin your commercialization efforts - which will require disclosing your idea to numerous individuals. If you commercialize yourself, you will also have trademark issues to consider, as well as a range of other business issues to consider.

    Shortly after the patent application stage, a consultation with a Small Business Development Center affiliated with the business school of a local college may be helpful. Or, perhaps SCORE has volunteer counselors near you. Begin with a formal business plan, taking into account not only the legal costs, but the marketing costs, prototyping costs, manufacturing costs, sales venues, and startup revenue sources. The combination of an experienced business counselor and a formal business plan will keep you on track and help you prioritize your resources.

    In addition to traditional investment sources, once your patent application is filed, you should also consider Kickstarter and other similar websites. These platforms allow you to test market and raise funds at the same time while retaining 100% equity in your business. You will need a reasonably good prototype, as well as a well-crafted video showing the capabilities and advantages of your instrument, as well as giving the viewer a chance to get to know you.

    By considering commercialization as well as patent protection, you maximize your chances of profiting from your invention.

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  • How should I respond to an email with UDRP complaint against me?

    I bought an internet .business domain name and a company in UK is claiming a trademark on it under UDRP. I have received an email from WIPO Arbitration and Mediation Center about it as well. How should I proceed/respond in this situation? Do I hav...

    William’s Answer

    Use of a domain name that is confusingly similar to a pre-existing trademark is trademark infringement. However, the fact that a complaint was made does not mean that a likelihood of confusion actually exists. It means that the party filing the complaint believes that it exists.

    Likelihood of confusion is determined based on an eight factor test set forth by the US Supreme Court. The two most important factors are the similarity of the trademark and domain name, and the relatedness of the goods or services marketed under each.

    You should consult with a trademark attorney in private to determine whether the domain name is confusingly similar to the trademark. The nature and strength of the claimed trademark rights should also be investigated. You should discuss the circumstances under which you purchased the domain name. Was this a domain name that was previously unused, or did you purchase it from an existing business? If the latter, then your attorney can also guide you regarding whether you have a claim against the seller.

    Both the likelihood of success as well as the value of the domain name will need to be considered in deciding how to respond.

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