Can two different product trademarks sharing the same name exist in the same trademark class?:
Hello,
I am looking to trademark the name of my business but there is already an existing company with the same name and class. The difference between my company and the other is the type of product. Mine is a music/audio app and the other (registered) is a video game computer software. Would this be an issue? Thank you!
Jonathan’s answer: There are exceptions to the rule that the same name and same class equals a likelihood of confusion, especially in Class 009. See co-existence on the Principal Register for TROVE and TP in Class 009 for video games and apps by different owners. See also co-existence in Class 009 of marks like ERA, HURRICANE, IMO, and BEAST MODE by different owners. An IP attorney can conduct a clearance search and identify evidence that goods or services are dissimilar by finding any available active registrations for the same marks or similar marks that are owned by different parties and cover the listed goods or services. This can be used as evidence that goods and services are not considered closely related by the public. In re Thor Tech, Inc., 113 U.S.P.Q.2d 1546 (T.T.A.B. 2015).
Is a software developer liable for third-party use of their code if the party using it uses it for something illegal?:
I'm a software consultant and I build projects of all types for clients of varied backgrounds. Recently I've received numerous requests form separate parties requesting development of software that would be used to develop "blockchain games" which may possibly be construed as some sort of securities-related scheme. The concepts I've been pitched are all legitimate games with normal game mechanics and none of them explicitly guarantee any form of profit, but the *implied* message is something like "buy this game item for X amount, because someone later will probably want to buy it for more."
There are two concerns I have:
1) As I can't possibly be aware of all possible uses of something I build, am I liable for such use by a third party if it is later found to be illegal? If so, what limitations are there and what might I be able to do to limit my exposure as much as possible?
2) Does the existence of an implied (and specifically non-explicit) potential for profiting from a future buyer's purchase of an asset you own necessarily make that asset part of a pyramid or Ponzi scheme? And if so, how exactly is real estate or any other appreciable asset different in this respect?
Jonathan’s answer: It depends - providing software development services involving a complex transaction for creating and developing a custom network for distributed ledger technology (blockchain or crypto-currency tokens) is inherently risky. A software developer should only undertake such a project with a bespoke professional service agreement (PSA) drafted in a manner that protects you with extensive provisions to address the custom deliverables with terms that are common to many types of negotiated service agreements. The PSA must include regulatory and legal requirements along with compliance with applicable data and privacy security laws. Here, you would want to turn the tables on customary indemnification and insurance requirements, so it is the client assuming the risk of illegal activity. You also need strong limitations and caps on liability. If there is an "implied pyramid scheme" involved, remember the ethical practice: 'always avoid even the appearance of impropriety.'
If I develop a company/product on my own time, what are the chances that I will have to sign over my intellectual property to UC: I will be taking a job at UCSF and they require me to sign a "STATE OATH OF ALLEGIANCE. PATENT POLICY, AND PATENT ACKNOWLEDGMENT," or form UPAY585 (R 11/2011) E0420 71443-180. The language on what is my intellectual property vs what is theirs if I invent something, or start a company seems both sweeping and confusing. There is also some discussion on the UCnet website regarding the supreme court Stanford v. Roche case and revised language in the UPAT585 form, which seems more restrictive. I am also not clear on how Calif. Labor Code Sec.2870 applies here.
Jonathan’s answer:
University staff who create works within the scope of their employment generally do not own the copyright to the work. A work prepared by an employee within the scope of his or her employment is considered a “work made for hire.” When a work qualifies as a work made for hire, the employer or commissioning party is considered its author. Under UC policies, some written works created by certain categories of UC faculty, graduate students, and staff are considered works made for hire.
This question is similar to an Avvo thread linked below (bottom line, you should have an attorney review the specifics of your proposed company/product):