Questions Answered by Paul Overhauser

Q: If I file for a trademark, will the trademark office conduct a search for me?

1 Answer | Asked in Trademark for Indiana on
Answered on Mar 23, 2011
Paul Overhauser's answer
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 your filing fee. That is why it is a good idea to do a trademark search before you file, or better yet, before you select your trademark.

Paul...

Q: What is a certification mark?

1 Answer | Asked in Trademark for Indiana on
Answered on Mar 23, 2011
Paul Overhauser's answer
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 certification mark is to indicate that certain standards have been met, use of the mark is by others.

Paul Overhauser

www.iniplaw.org

www.overhauser.com

317- 891-1500

Q: What is a collective membership mark?

1 Answer | Asked in Trademark for Indiana on
Answered on Mar 23, 2011
Paul Overhauser's answer
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 certification mark is to indicate that certain standards have been met, use of the mark is by others.

Paul Overhauser

www.iniplaw.org

www.overhauser.com

317- 891-1500

Q: Do I have to register my trademark for it to be valid?

1 Answer | Asked in Trademark for Indiana on
Answered on Mar 23, 2011
Paul Overhauser's answer
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 of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration; The ability to bring an action concerning the...

Q: Should I conduct a search for similar trademarks before filing an application?

1 Answer | Asked in Trademark for Indiana on
Answered on Mar 23, 2011
Paul Overhauser's answer
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 Overhauser

www.iniplaw.org

www.overhauser.com

317- 891-1500

Q: Where can I conduct a trademark search for trademarks for pending applications and federal registrations?

1 Answer | Asked in Trademark for Indiana on
Answered on Mar 23, 2011
Paul Overhauser's answer
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 Overhauser

www.iniplaw.org

www.overhauser.com

317- 891-1500

Q: Will the Patent Office recommend a patent attorney to help protect my invention?

1 Answer | Asked in Patents (Intellectual Property) for Indiana on
Answered on Mar 23, 2011
Paul Overhauser's answer
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 available to accept new clients.

Paul Overhauser

www.iniplaw.org

www.overhauser.com

317- 891-1500

Q: Are invention promotion companies reliable and trustworthy?

1 Answer | Asked in Patents (Intellectual Property) for Indiana on
Answered on Mar 23, 2011
Paul Overhauser's answer
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 Trademark Office; P.O. Box 1450; Alexandria, VA 22313-1450 or call at (703) 306-5568.

Paul Overhauser

www.iniplaw.org

www.overhauser.com

317- 891-1500

Q: Are there any organizations in Indiana that can assist in developing and marketing my invention?

1 Answer | Asked in Intellectual Property for Indiana on
Answered on Mar 23, 2011
Paul Overhauser's answer
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

Q: Should I use an attorney to get a trademark?

1 Answer | Asked in Intellectual Property for Indiana on
Answered on Mar 23, 2011
Paul Overhauser's answer
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 complex, many applicants hire an attorney to represent them. Your local Bar Association website may offer a referral service to help you find local attorneys who practice trademark law.

Paul...

Q: If I apply for a trademark but they refuse, do I get a refund of the application fee?

1 Answer | Asked in Intellectual Property for Indiana on
Answered on Mar 23, 2011
Paul Overhauser's answer
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 Overhauser

www.iniplaw.org

www.overhauser.com

317- 891-1500

Q: Do I have to incorporate or get an LLC to file for a trademark?

1 Answer | Asked in Intellectual Property for Indiana on
Answered on Mar 23, 2011
Paul Overhauser's answer
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 be an individual, corporation, partnership, LLC, or other type of legal entity.

Paul Overhauser

www.iniplaw.org

www.overhauser.com

317- 891-1500

Q: What is a copyright?

2 Answers | Asked in Copyright for Indiana on
Answered on Mar 23, 2011
Paul Overhauser's answer
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

Q: What is a reasonable royalty to pay for licensing a patent?

1 Answer | Asked in Patents (Intellectual Property) for Indiana on
Answered on Mar 23, 2011
Paul Overhauser's answer
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. 1116 (S.D.N.Y. 1970), and include: 1. The royalties received by the patentee for the licensing of the patent in suit, proving or tending to prove an established royalty. 2. The rates paid by the...

Q: How can I be sure the Patent Office will not give others information contained in my application while it is pending?

1 Answer | Asked in Patents (Intellectual Property) for Indiana on
Answered on Mar 22, 2011
Paul Overhauser's answer
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 patent is issued or the application is published. After the application has been published, however, a member of the public may request a copy of the application file. After the patent is issued, the...

Q: Can I write to the Patent Office about my application after it is filed?

1 Answer | Asked in Patents (Intellectual Property) for Indiana on
Answered on Mar 22, 2011
Paul Overhauser's answer
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 with both you and the attorney/agent concerning the merits of your application. All comments concerning your application should be forwarded through your attorney or agent.

Paul...

Q: Is it necessary to go to the Patent Office to get a patent?

1 Answer | Asked in Patents (Intellectual Property) for Indiana on
Answered on Mar 22, 2011
Paul Overhauser's answer
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

Q: If a friend and I work together to make an invention, to whom will the patent be granted?

1 Answer | Asked in Patents (Intellectual Property) for Indiana on
Answered on Mar 22, 2011
Paul Overhauser's answer
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 provided all of the ideas of the invention, and the other has only followed instructions in making it, the person who contributed the ideas is the sole inventor and the patent application and patent shall...

Q: If a first person furnishes all of the ideas to make an invention and a second person employs the first person

1 Answer | Asked in Patents (Intellectual Property) for Indiana on
Answered on Mar 22, 2011
Paul Overhauser's answer
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 Overhauser

www.iniplaw.org

www.overhauser.com

317- 891-1500

Q: Does the Patent Office set the fees charged by patent attorneys for a patent?

1 Answer | Asked in Patents (Intellectual Property) for Indiana on
Answered on Mar 22, 2011
Paul Overhauser's answer
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 Overhauser

www.iniplaw.org

www.overhauser.com

317- 891-1500

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