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Kenneth Leo Kunkle
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Kenneth Kunkle’s Answers

33 total

  • Can i select all the products under a certain international category that are relevant to my brand and assign 1a filling basis?

    While applying for a trademark through the TEAS PLUS form, i came across the international codes for goods that I sell under my brand that i plan to TM. There are few items I am already selling and few that I would like to sell in future-very simi...

    Kenneth’s Answer

    You are limited to only those products or services you are actually selling or providing at the time of the application. In order to include the others, you would need to list is separately in the application as an intent to use (1b) and then provide proof of use in the future.

    Frankly, sometimes more is not better. It is usually best to carefully consider the applied for goods and services to provide the broadest protection - this sometimes means simple descriptions. This is where an experienced trademark attorney can help work with you to insure you are getting things .

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  • When submitting a response to a trademark office action do you submit one file consisting of the response and the exhibits or...

    I have written a response that includes arguments as well as exhibits. Can you tell me if I am supposed to submit it all as one file or do I submit each exhibit as it's own file etc?

    Kenneth’s Answer

    The preferred method of the USPTO is to paste the argument onto the form (in a text box), and the exhibits as separate attachments. That said, if the argument is complex, having the ability to format it is beneficial, and the USPTO allows the argument to be submitted as a PDF in the evidence section. Exhibits are then still attached individually (though you can group them if the grouping is relevant).

    That said, as others have said, responding to an Office Action can require technical answers, and you may benefit from consulting with an experienced trademark attorney prior to submitting your response.

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  • Can I make and sell 20 of the same piece of art (ALL PIECES ARE MADE BY HAND) using a trademarked logo in my artwork? Fair Use?

    Are there limitations to the quantity sold as long as I am making each by hand? Am I allowed to promote the art as: XYZ Logo Name by Me?

    Kenneth’s Answer

    While every situation is different and fair use requires analysis of four different factors, you probably need a bit of clarification first. Fair Use is a part of copyright law, not trademark law. As such it typically does not apply to questions of trademark infringement (I say typically because there are defenses to infringement that are akin to Fair Use). Without knowing the specifics of your situation no one can definitively advise you on this situation, however, generally speaking the number of products sold and how they are made is not usually related to a defense of trademark infringement.

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  • Trademark search and registration for company name and logo

    I have a Delaware-incorporated company in need of assistance with trademark search and registration for company name and logo.

    Kenneth’s Answer

    Well, you are in the right place.

    It looks like you are in CA, and your business is in DE - the good news is that you can find an attorney in either place (or some other place all together if you like), as trademark law is generally national in scope and does not require local representation (though it might be preferred by you).

    With the Find a Lawyer portion of this site (upper tool bar) you should be able to locate an attorney to help you out.

    Good luck - Ken

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  • Trademark/Service Mark - Unregistered, Still Protected? Am I protected under trademark law, without federal registration?

    I started selling a product in January throughout US, Canada & abroad. A specific title and name for a product, that I came up with - and started using immediately to distinguish this product as my own. I copyrighted photography, and designed cust...

    Kenneth’s Answer

    The question is one of likelihood of confusion by potential consumers of your product. While another party might use the same name on a different product, if that product is one that consumers might assume also comes from someone who wells your products, likelihood of confusion might exist and serve as a basis for a claim. However, since your mark is not registered it is limited in scope to the geographic area where it is known (think of a restaurant where everyone has heard of it in one town, but is unknown in another). Common law trademark rights like this can be enforced (but not as well and as easily as registered marks) in both state and federal courts. In short, it can get complicated quickly and will likely require you consulting a professional in your area.

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  • I bought some pair of glasses from outside the united states and got it shipped through a carrier but was seized by customs

    with the fact that theres a trademark violation,what do i do?though the carrier told me i can appeal but this is strange to me because its the first time this is happening.pls give me an answer.thanks

    Kenneth’s Answer

    Federal registration of a trademark has a major benefit in that it allows the registered holder of a mark to ask US customs to be on the watch for infringing products. In most cases this involve importation of knock-off products and the customs group is fairly well versed in spotting such items.

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  • Besides a business license and an "Are you over 18?" checks on the site, what do I need to legally sell eliquid with nicotine?

    I have some flavor mixes that are made in a clean room on-demand. I'd like to sell e-juice for vaping from the US online and I'd like to know if there are any legal hangups for selling nicotine-containing liquid over the internet. It would ship ou...

    Kenneth’s Answer

    Vape sales are regulated at a very local level - sometime 18 is the right age, but in some others it is not. Additionally, how the nicotine is taxed is also a very local issue. I highly recommend you try to find an attorney in your local state to assist you on these business issues.

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  • For a trademark to be a double entendre caselaw states that the second meaning must be readily apparent from the mark itself....

    For a trademark to be considered a double entendre the courts in In Re The Place Inc ( The Greatest Bar) and in re Wells Fargo (EXPRESSERVICE) have stated that the double entendre must be readily apparent from the mark itself without reference to ...

    Kenneth’s Answer

    For the issue to come up in the first place the mark would have to be in danger of being considered descriptive and therefore the nature of the goods or services would have to be known to the potential consumer. However, I don't believe that understanding the 2nd meaning would require knowledge of the goods or services, only that one of the meanings is not descriptive; if the 2nd meaning can stand without such reference it would strengthen an argument of double entendre.
    The reference to other indicia is typically related to packaging and marketing materials, not the product it self.

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  • What's the benefits of filing a trademark with an attorney? What can I expect to be paying for this service?

    I am looking to file for a trademark. However, I am not sure whether I should tackle the situation on my own or hire an attorney. I am considering hiring an attorney, but I also would like to know an estimate of what typical trademark attorneys...

    Kenneth’s Answer

    The long and short is that you get guidance on the best way to register your mark, whether to file a mark, and a host of other details that simply don't come-up if you file it yourself or use a service. The additional cost of having an attorney is a form of insurance - while the attorney cannot guarantee a successful registration, they can definitely ease the process and in some cases save you money in the end by preventing you from filing flawed or unnecessary applications.

    As for costs, you will find they range depending where you are at and what exactly they cover. For example, the government charges a fee to file the application, and this fee can dramatically increase the overall cost depending on how you file the application. In the end, I highly recommend picking up the phone a calling around.

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