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Questions Answered by Paul Overhauser
1 Answer | Asked in Trademark for Indiana on
Q: If I file for a trademark, will the trademark office conduct a search for me?
Paul Overhauser
Paul Overhauser answered on Mar 23, 2011

Well, the Trademark Office (either Federal or State) will conduct their own trademark search, but it will not be "for you;" it will be to determine whether your mark is confusingly similar to another registered mark. If they find a conflict, they will reject your application, and you will have lost... Read more »

1 Answer | Asked in Trademark for Indiana on
Q: What is a certification mark?
Paul Overhauser
Paul Overhauser answered on Mar 23, 2011

A certification mark is any word, phrase, symbol or design, or a combination thereof owned by one party who certifies the goods and services of others when they meet certain standards. The owner of the mark exercises control over the use of the mark; however, because the sole purpose of a... Read more »

1 Answer | Asked in Trademark for Indiana on
Q: What is a collective membership mark?
Paul Overhauser
Paul Overhauser answered on Mar 23, 2011

A certification mark is any word, phrase, symbol or design, or a combination thereof owned by one party who certifies the goods and services of others when they meet certain standards. The owner of the mark exercises control over the use of the mark; however, because the sole purpose of a... Read more »

1 Answer | Asked in Trademark for Indiana on
Q: Do I have to register my trademark for it to be valid?
Paul Overhauser
Paul Overhauser answered on Mar 23, 2011

No. You can establish rights in a mark based on use of the mark in commerce, without a registration. However, owning a federal trademark registration on the Principal Register provides several important benefits, including: Public notice of your claim of ownership of the mark; A legal presumption... Read more »

1 Answer | Asked in Trademark for Indiana on
Q: Should I conduct a search for similar trademarks before filing an application?
Paul Overhauser
Paul Overhauser answered on Mar 23, 2011

Yes, this is always a good idea. Actually, you should conduct a search before you even start using a mark, to reduce the risk that another trademark owner will send you a "cease and desist" letter after you have invested money in promoting your trademark.

Paul...
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1 Answer | Asked in Trademark for Indiana on
Q: Where can I conduct a trademark search for trademarks for pending applications and federal registrations?
Paul Overhauser
Paul Overhauser answered on Mar 23, 2011

A good starting point for conducting a trademark search is the US Trademark Office website, at http://www.uspto.gov/ (then click on Search marks). As you are in Indiana, you can also search Indiana trademarks at http://www.in.gov/sos/business/2374.htm

Paul...
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1 Answer | Asked in Patents (Intellectual Property) for Indiana on
Q: Will the Patent Office recommend a patent attorney to help protect my invention?
Paul Overhauser
Paul Overhauser answered on Mar 23, 2011

No, the Patent Office will not make this choice for you. However, a general attorney may help you in making a selection from among those listed as registered practitioners on the Office roster. Also, some bar associations operate lawyer referral services that maintain lists of patent lawyers... Read more »

1 Answer | Asked in Patents (Intellectual Property) for Indiana on
Q: Are invention promotion companies reliable and trustworthy?
Paul Overhauser
Paul Overhauser answered on Mar 23, 2011

This can't be answered in the abstract - some companies are legitimate and some do a very poor job. No. The Patent Office publishes complaints regarding invention promoters and replies from the invention promoters. Questions or complaints can be sent to Mail Stop 24; Director of the U.S. Patent and... Read more »

1 Answer | Asked in Intellectual Property for Indiana on
Q: Are there any organizations in Indiana that can assist in developing and marketing my invention?
Paul Overhauser
Paul Overhauser answered on Mar 23, 2011

Two good groups are the Venture Club of Indiana, www.ventureclub.org; and the Hackers and Founders, www.meetup.com/Hackers-and-Founders-Indianapolis

Paul Overhauser

www.iniplaw.org

www.overhauser.com

317-891-1500

1 Answer | Asked in Intellectual Property for Indiana on
Q: Should I use an attorney to get a trademark?
Paul Overhauser
Paul Overhauser answered on Mar 23, 2011

You are not required to hire an attorney, but if you decide to prepare and submit your own application, you must comply with all requirements of the trademark statutes and rules and may be required to respond to legal issues raised by the the Trademark Office. Because the application process can be... Read more »

1 Answer | Asked in Intellectual Property for Indiana on
Q: If I apply for a trademark but they refuse, do I get a refund of the application fee?
Paul Overhauser
Paul Overhauser answered on Mar 23, 2011

Sorry, trademark offices (Federal or State) do not offer refunds, as registration is not guaranteed. The office will will conduct a search and will refuse to register your mark if there is another registered mark or pending mark similar to yours for related goods/services.

Paul...
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1 Answer | Asked in Intellectual Property for Indiana on
Q: Do I have to incorporate or get an LLC to file for a trademark?
Paul Overhauser
Paul Overhauser answered on Mar 23, 2011

No you do not need to be a corporation or LLC. You just need to be the owner of the trademark to file an application for registration. The owner controls the use of the mark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used. The owner may... Read more »

2 Answers | Asked in Copyright for Indiana on
Q: What is a copyright?
Paul Overhauser
Paul Overhauser answered on Mar 23, 2011

A copyright protects works of authorship, such as writings, music, and works of art that have been tangibly expressed. For more information, contact, see www.copyright.gov (U.S. Copyright Office)

Paul Overhauser

www.iniplaw.org

www.overhauser.com

317- 891-1500

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1 Answer | Asked in Patents (Intellectual Property) for Indiana on
Q: What is a reasonable royalty to pay for licensing a patent?
Paul Overhauser
Paul Overhauser answered on Mar 23, 2011

There are many factors to consider in determining a reasonable royalty. Under Supreme Court precedent, there are 15 factors (known as the Georgia-Pacific factors) to consider in a patent infringement lawsuit. These were first articulated in Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp.... Read more »

1 Answer | Asked in Patents (Intellectual Property) for Indiana on
Q: How can I be sure the Patent Office will not give others information contained in my application while it is pending?
Paul Overhauser
Paul Overhauser answered on Mar 22, 2011

Most patent applications filed on or after November 29, 2000, will be published 18 months after the filing date of the application, or any earlier filing date relied upon under Title 35, United States Code. Otherwise, all patent applications are maintained in the strictest confidence until the... Read more »

1 Answer | Asked in Patents (Intellectual Property) for Indiana on
Q: Can I write to the Patent Office about my application after it is filed?
Paul Overhauser
Paul Overhauser answered on Mar 22, 2011

The Patent Office will answer an applicant's inquiries as to the status of the application, and inform you whether your application has been rejected, allowed, or is awaiting action. However, if you have a patent attorney or agent of record in the application file the Office will not correspond... Read more »

1 Answer | Asked in Patents (Intellectual Property) for Indiana on
Q: Is it necessary to go to the Patent Office to get a patent?
Paul Overhauser
Paul Overhauser answered on Mar 22, 2011

No. Most business with the Office is conducted by email and written correspondence. Interviews regarding pending applications can be arranged with examiners if necessary and are often helpful.

Paul Overhauser

www.iniplaw.org

www.overhauser.com

317- 891-1500

1 Answer | Asked in Patents (Intellectual Property) for Indiana on
Q: If a friend and I work together to make an invention, to whom will the patent be granted?
Paul Overhauser
Paul Overhauser answered on Mar 22, 2011

If both you and your friend had a share in the ideas forming the invention as defined in the claims – even if only as to one claim, you are joint inventors and a patent will be issued to them jointly on the basis of a proper patent application. If, on the other hand, one of these persons has... Read more »

1 Answer | Asked in Patents (Intellectual Property) for Indiana on
Q: If a first person furnishes all of the ideas to make an invention and a second person employs the first person

Or furnishes the money for building and testing the invention, should the patent application be filed by the first and second persons jointly?

Paul Overhauser
Paul Overhauser answered on Mar 22, 2011

No. The application must be signed by the true inventor, and filed with the Patent Office, in the inventor's name. This is the person who furnishes the ideas (e.g. the first person in the above fact pattern), not the employer or the person who furnishes the money.

Paul...
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1 Answer | Asked in Patents (Intellectual Property) for Indiana on
Q: Does the Patent Office set the fees charged by patent attorneys for a patent?
Paul Overhauser
Paul Overhauser answered on Mar 22, 2011

No. The price is between you and your patent attorney, and the Patent Office takes no part. To avoid misunderstanding you may wish to ask for estimate charges for: (a) the search (b) preparation of the patent application, and (c) prosecution.

Paul...
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