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Questions Answered by Bernard Samuel Klosowski
2 Answers | Asked in Intellectual Property and Trademark for Kansas on
Q: When I consult with an attorney that specializes in patents, trademarks, etc . Do I need to protect my idea in advance?

I have rough prototype for an invention , i’ve done a rough patent search. I just want to protect my idea as best as possible. And maybe advice on my next steps .

Bernard Samuel Klosowski
Bernard Samuel Klosowski answered on Feb 24, 2021

Not to speak with an IP attorney, and for at least the reasons stated below, most attorneys won't sign a "confidentiality agreement" with a prospective client as it's unnecessary and not required and would be highly unusual.

IP attorneys, like all attorneys, are...
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1 Answer | Asked in Intellectual Property for Georgia on
Q: What sort of IP is need for a project that involves a combination medical device with drug delivery?
Bernard Samuel Klosowski
Bernard Samuel Klosowski answered on Feb 8, 2021

In the near term, a provisional or utility patent application might be worth considering, keeping in mind that the U.S. is now a "first inventor to file" system (time is not on the inventor's side like it once was). Whether the device, the drug, or a combination of the device and... Read more »

1 Answer | Asked in Patents (Intellectual Property) for Ohio on
Q: Is Patent number: 4728812 still in effect. as of 01/29/2021 ?
Bernard Samuel Klosowski
Bernard Samuel Klosowski answered on Jan 29, 2021

No, a "4 million series" patent would be from the 1980s and probably expired years ago. Setting aside continuation applications and other theoretical considerations, U.S. Pat. No. 4728812 likely expired in the early to mid 2000's, assuming that its "maintenance fees" were... Read more »

1 Answer | Asked in Trademark for Virginia on
Q: Should I get a trademark and/or service mark if I am trying to protect a service that is about to go nationwide?

I am filing for a trademark with the USPTO to protect my company name. But we provide a particular service that I want to protect, as we are about to be nationwide soon. This service is what differentiates us from other companies similar to mine.

Bernard Samuel Klosowski
Bernard Samuel Klosowski answered on Jan 25, 2021

A federal trademark application will be rejected for a business name standing alone (see TMEP 1202.01). A federal trademark/service mark registration must be directed to a mark that is used with some underlying goods/services (or is intended to be used with goods/services). It sounds as if a... Read more »

2 Answers | Asked in Patents (Intellectual Property) for Massachusetts on
Q: What types of inventions have to be patented
Bernard Samuel Klosowski
Bernard Samuel Klosowski answered on Jan 18, 2021

Nothing HAS to be patented. But any "new, useful, and nonobvious" machine, article of manufacture, process, composition of matter, or improvement on those things may be eligible for a "utility patent." While a utility patent protects the way an article is used and works (35... Read more »

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1 Answer | Asked in Copyright for California on
Q: Is blurring a watermark on a video clip a direction violation of copyright law or is it legal?

We own a list channel on YouTube, we make videos such as “7 Biggest Houses in the World” everything is under fair use (we have a voiceover over the clips and we use minimal footage as possible) and sometimes there are watermarks on video clips, are we allowed to blur the watermarks on the clip?... Read more »

Bernard Samuel Klosowski
Bernard Samuel Klosowski answered on Jan 17, 2021

The questions are very fact specific, so an IP attorney should be consulted for legal advice.

Generally speaking, it's not uncommon to confuse or conflate copyright "Fair Use" and trademark "Fair Use" and to misunderstand the role and limits of "Fair...
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3 Answers | Asked in Trademark for Georgia on
Q: I want to trademark a name that is considered “abandoned” and “dead” on TESS. What steps should I take?

The goods and services that the dead trademark provides is not in the same category as what I want to provide

Bernard Samuel Klosowski
Bernard Samuel Klosowski answered on Jan 16, 2021

A trademark might still be in use under "common law" even if the associate federal registration has been abandoned and listed as dead. It's even possible that the registration was unintentionally abandoned and if not too much time has passed, the owner could petition to revive the... Read more »

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1 Answer | Asked in Intellectual Property for Wisconsin on
Q: Looking for information on intellectual property.

I've done educational consulting for years and am considering an independent consulting contract as a trainer with a national company. The contract has a clause about intellectual property that I am looking for clarification or help with. I plan to continue work outside of this new contract... Read more »

Bernard Samuel Klosowski
Bernard Samuel Klosowski answered on Jan 14, 2021

Usually, unless an employee (of an employer) or a contractor (of a client) invents something or creates a copyrightable work FOR the employer/client as an express part or condition of the person's employment or as a "work for hire," the invention/work would belong to the... Read more »

2 Answers | Asked in Trademark for Georgia on
Q: If someone is using my company name as a website can I do anything?

Company name is trademarked.

Bernard Samuel Klosowski
Bernard Samuel Klosowski answered on Jan 8, 2021

Yes, possibly. If there's likelihood of confusion (LoC); i.e., trademark infringement, then the mark owner has various options to stop the infringement. Options might range from a demand letter to a Domain Dispute action to a federal lawsuit.

But there are a number of factors that...
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3 Answers | Asked in Trademark for North Carolina on
Q: I need to file or refile for my trademark it seems to be in the abandonment stage what do I do?

I also cannot pull up or enter my application information

Bernard Samuel Klosowski
Bernard Samuel Klosowski answered on Jan 4, 2021

Depending on whether it is an application or registration, different petitions to revive might be an option, particularly if the abandonment was related in some way to the COVID-19 pandemic.

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1 Answer | Asked in Patents (Intellectual Property) on
Q: Can something that is not man made i.e. occurs naturally with no human intervention, have a patent?
Bernard Samuel Klosowski
Bernard Samuel Klosowski answered on Jan 3, 2021

No, standing alone "naturally occurring phenomena" are not patent eligible.

35 USC 101 dictates that Processes, Machines, Articles of Manufacture, or Compositions of Matter are eligible for patenting (ultimately, the subject matter also has to be new, useful, and not obvious to...
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3 Answers | Asked in Intellectual Property and Trademark for South Carolina on
Q: Question on International Classes as listed in the USPTO can there be more than one per class?

My company prints clothing & we want to print shirts with a certain word on it. This word is a verb & describes the action of the specific activity, a pretty common one.

We discovered a company owns the trademark for the word. Its not their primary brand but they have a product with... Read more »

Bernard Samuel Klosowski
Bernard Samuel Klosowski answered on Jan 7, 2021

I agree with my colleagues Mr. Billick and Ms. Suero. I would only add - because you state that you "want to print shirts with a certain word on it" - that if the "word" is "common," is being used in a decorative or ornamental sense and not in a trademark sense, then... Read more »

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2 Answers | Asked in Patents (Intellectual Property) for Georgia on
Q: Who currently has rights to patent number PP 19561

The inventor is now deceased.

Bernard Samuel Klosowski
Bernard Samuel Klosowski answered on Dec 9, 2020

Probably a relative of the inventor.

USPTO records don't appear to show that the inventor assigned the patent to anyone, so presumably it remained the inventor's property and passed to his estate upon death. Assuming that the inventor left a will, the patent - like other property...
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2 Answers | Asked in Intellectual Property and Patents (Intellectual Property) for California on
Q: Can I find out which attorney did this patent?
Bernard Samuel Klosowski
Bernard Samuel Klosowski answered on Dec 8, 2020

Your question doesn't mention a patent number, but U.S. patents typically show "Attorney, Agent, or Firm" on the front page of each patent. Depending on how the attorney or firm fills out the issue fee paperwork, a U.S. patent might list only the firm name, or only the attorney, or... Read more »

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3 Answers | Asked in Copyright for North Dakota on
Q: If I post a YouTube video with my own self-made song in it, will third parties be able to infringe copyright?

Basically, I have a short "album" of dingy 1:30 - 3:00 songs that I might want to share with the world via YouTube, but there's the nagging fear in the back of my mind that somebody may be able to use it without my permission. I've discovered that I can order other channels to... Read more »

Bernard Samuel Klosowski
Bernard Samuel Klosowski answered on Dec 7, 2020

As my colleague Mr. Vondran notes, filing a U.S. copyright application is a relatively inexpensive way to protect your music. More particularly, YouTube's internal strike/take down procedures are only applicable to other YouTube channels. To assert your copyright against infringers on other... Read more »

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2 Answers | Asked in Intellectual Property for Texas on
Q: What prof is needed to be considered a co inventor?

I worked for a company that had an application patent on how to attach a polymer onto sand.

I was instrumental in buying lab equipment to test cps of coated sand. The company had no testing procedures before I was hired. I used my vendor relationships to source polymers to create new coated... Read more »

Bernard Samuel Klosowski
Bernard Samuel Klosowski answered on Dec 6, 2020

The claims of the patent are the key - if someone contributed to an inventive concept in even one claim (typically there are about 20 claims per patent) that person is likely an inventor. Typically, contributing to an inventive concept means that the person helped solved a problem or added... Read more »

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1 Answer | Asked in Copyright, Intellectual Property and Trademark on
Q: Can an item without a logo or symbol be a trademark infringement?

I make ornaments using commercial clear ornaments & books that I buy and cut apart & curl into ribbons to put into the ornament. I do not advertise them by the book name so that I don't risk infringing on anyone's copyright or IP even though the books I use are public domain.... Read more »

Bernard Samuel Klosowski
Bernard Samuel Klosowski answered on Dec 4, 2020

"Can a nondescript item be trademarked?" Trade dress is a bit different than its more common cousins, word marks (e.g., "Apple") and stylized (special form) marks (like the Nike "swoosh"), which are usually tagged or stamped on their associated products. Trade dress... Read more »

3 Answers | Asked in Copyright and Trademark for Florida on
Q: How can I renew a trademark that expired on July 2020?

Reef Chicks is registered to an ex co-owner of the company. I need to renew the trademark and have the owner name changed.

Bernard Samuel Klosowski
Bernard Samuel Klosowski answered on Dec 1, 2020

A petition to revive an abandoned registration might be an option, but there are time limits involved. A revival petition must be filed no later than 2 mos. after the expiration notice (so that seems to have been September based on your July date). But if the registrant didn't receive the... Read more »

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2 Answers | Asked in Copyright on
Q: Copying the initialization vector (IV) of an encryption key and the file for which it is used, is it CP infringement?

As mentioned in the topic, a company has ditto copied the IV and the file in its software, which was part of our software. Does it amount to reverse engineering?

Bernard Samuel Klosowski
Bernard Samuel Klosowski answered on Nov 1, 2020

Reverse engineering isn't unlawful per se if the subject matter in question isn't protected by copyright or a patent, or isn't trade secret theft.

To be copyright infringement, the IV/file must be copyrightable; i.e., it must be an "original work of authorship"...
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1 Answer | Asked in Copyright for Alabama on
Q: Online videos and textbook question

I am planning to create videos to tutor test prep students. Every student will register and sign in and purchase a hardbound copy of the textbook I use to access the videos. Can I use excerpts from that textbook for examples and explain solutions to problems from that textbook legally? I will... Read more »

Bernard Samuel Klosowski
Bernard Samuel Klosowski answered on Oct 29, 2020

Generally speaking, using "limited" parts of a copyrighted work is OK for criticism, commentary, teaching, etc. See 17 U.S. Code § 107. This is called "Fair Use." But Fair Use is just a defense to infringement; it can't prevent a suit. In other words, if a copyright... Read more »

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