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New York Trademark Questions & Answers
2 Answers | Asked in Business Law, Intellectual Property and Trademark for New York on
Q: Hi,I want to trademark a business name and the name is available but there are other businesses that use the name.

The name is available but other businesses use the same name even though it is not trademarked. Should I still go ahead and trademark it?

Daniel Michael Luisi
Daniel Michael Luisi
answered on May 1, 2023

Trademark rights are created by use in commerce, not registration. Registration merely provides much stronger remedies for enforcement. You to need to clear your proposed mark through a common law search and a Lanham Act trademark-ability legal analysis unless you want to open yourself up to a... Read more »

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2 Answers | Asked in Business Law, Intellectual Property and Trademark for New York on
Q: Hi,I want to trademark a business name and the name is available but there are other businesses that use the name.

The name is available but other businesses use the same name even though it is not trademarked. Should I still go ahead and trademark it?

James L. Arrasmith
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answered on May 7, 2023

You can still proceed with trademarking the name as long as it meets the requirements for trademark registration, such as being distinctive and not causing confusion with existing trademarks in the same industry. However, keep in mind that if other businesses are already using the same name, they... Read more »

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3 Answers | Asked in Business Law, Intellectual Property, Trademark and Copyright for New York on
Q: Can I use any sauropod image for my educational small business or non profit if Sinclair has a similar dinosaur image?
Daniel Michael Luisi
Daniel Michael Luisi
answered on Apr 5, 2023

You need to conduct a copyright search to determine whether you are potentially infringing on Sinclair’s IP. You should also run a trademark knockout search to see whether your dinosaur is a registered or common law brand, or resembles one closely enough to create a “likelihood of confusion”... Read more »

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3 Answers | Asked in Business Law, Intellectual Property, Trademark and Copyright for New York on
Q: Can I use any sauropod image for my educational small business or non profit if Sinclair has a similar dinosaur image?
James L. Arrasmith
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answered on Apr 6, 2023

Using sauropod images for educational purposes in a small business or non-profit organization is generally allowed under fair use principles. However, if the sauropod image you plan to use is substantially similar to an image owned by Sinclair or another entity, you may be at risk of infringing on... Read more »

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5 Answers | Asked in Trademark and Intellectual Property for New York on
Q: I am working on launching my skincare brand but when it came time to trademark the name I realize that another company

That also sells skincare trademarked my brand name within their slogan. It is three words and the only difference in them is the words "of" & "and" ..would I be able to trademark my brand name?

Daniel Michael Luisi
Daniel Michael Luisi
answered on Mar 28, 2023

If you can show your brand was the first in the market for your products and related categories, you may be able to file a petition to cancel the other company’s trademark with USPTO, because federal trademark law grants legal ownership to the first to use the brand in commerce, not the first to... Read more »

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5 Answers | Asked in Trademark and Intellectual Property for New York on
Q: I am working on launching my skincare brand but when it came time to trademark the name I realize that another company

That also sells skincare trademarked my brand name within their slogan. It is three words and the only difference in them is the words "of" & "and" ..would I be able to trademark my brand name?

N'kia (NLN)
N'kia (NLN)
answered on Mar 30, 2023

A trademark that is "confusingly similar" to another one isn't eligible for registration in association with the same or related products/services. This is because the purpose of a trademark is to identify the "source" of specific products or services. In other words, a... Read more »

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4 Answers | Asked in Trademark and Intellectual Property for New York on
Q: Hello, i would like to trademark the word Love& loyalty. Is that possible ?

I would like to Trademark the words love & loyalty I already have been using these on merchandise but I want to secure it.

N'kia (NLN)
N'kia (NLN)
answered on Mar 25, 2023

A trademark is something that identifies the "source" of specific products or services. Words or phrases that are only printed on the outside of an item are often considered "merely ornamental," which means that they fail to "function" as a trademark. Something that... Read more »

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4 Answers | Asked in Trademark and Intellectual Property for New York on
Q: Hello, i would like to trademark the word Love& loyalty. Is that possible ?

I would like to Trademark the words love & loyalty I already have been using these on merchandise but I want to secure it.

James L. Arrasmith
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answered on Mar 15, 2023

Whether you can trademark the words "Love & Loyalty" will depend on a few factors, such as whether the words are distinctive and not already in use for similar goods or services. Here are some steps you can take to determine whether you can trademark the phrase:

Conduct a...
Read more »

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3 Answers | Asked in Copyright, Entertainment / Sports, Trademark and Intellectual Property for New York on
Q: A colleague (musician-turned-lawyer) and I have written a musical piece together.

A colleague (musician-turned-lawyer) and I have written a musical piece together. Can he himself represent the music legally and handle the copyright registration? He would also have to be the legal third-party regarding the publishing company. It seems to me this would all present a conflict of... Read more »

James L. Arrasmith
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answered on Mar 10, 2023

It is possible for your colleague, as a lawyer and co-creator of the musical piece, to represent the music legally and handle the copyright registration. However, there could be potential conflicts of interest depending on the specific circumstances of your situation. It is important to discuss any... Read more »

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3 Answers | Asked in Copyright, Entertainment / Sports, Trademark and Intellectual Property for New York on
Q: A colleague (musician-turned-lawyer) and I have written a musical piece together.

A colleague (musician-turned-lawyer) and I have written a musical piece together. Can he himself represent the music legally and handle the copyright registration? He would also have to be the legal third-party regarding the publishing company. It seems to me this would all present a conflict of... Read more »

Giselle Ayala Mateus
Giselle Ayala Mateus
answered on Mar 10, 2023

If you and him are business partners, one may thing that their interests are aligned. However, it may not be the case for ever. It is a good practice to have independent counsel. Thereafter, you can make an informed decision as to who should be in charge of the legal aspects of the registration of... Read more »

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2 Answers | Asked in Intellectual Property, Internet Law and Trademark for New York on
Q: I have a question regarding cybersquatting/domain name sales

Hi We have a bundle of domains that are similar to a large corporation/org although the domain names are not trademarked (but are similar/in the same "family" to those that are) They had inquired about purchasing them -they do not like the price and are now suggesting its cybersquatting... Read more »

Daniel Michael Luisi
Daniel Michael Luisi
answered on Feb 7, 2023

I agree with Attorney Steve as to the issue of registration conflicting with a prior trademark owner’s rights. Yet, it is probably advisable for you to be proactive, not simply reactive. You should strongly consider filing USPTO trademark registrations for your domains in available product... Read more »

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2 Answers | Asked in Intellectual Property, Internet Law and Trademark for New York on
Q: I have a question regarding cybersquatting/domain name sales

Hi We have a bundle of domains that are similar to a large corporation/org although the domain names are not trademarked (but are similar/in the same "family" to those that are) They had inquired about purchasing them -they do not like the price and are now suggesting its cybersquatting... Read more »

Steve Charles Vondran
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answered on Feb 6, 2023

The legality of selling domain names that are the trademarks of other companies is a complex issue and one that has been the subject of much legal debate. In order to understand the law on this matter, it is necessary to look at both trademark law and domain name law.

Trademark law...
Read more »

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1 Answer | Asked in Copyright, Intellectual Property and Trademark for New York on
Q: In a YouTube video, can my nickname be Captain America or would it be copyrighted

Creating a YouTube channel in tourism for Latin Americans visiting USA. Would like to use the nickname Captain America

Daniel Michael Luisi
Daniel Michael Luisi
answered on Jan 20, 2023

You will have to research whether the current owner of the Captain America trademark owns the rights in similar service or product classes to your proposed use to promote tourism. Whether you will be sued for infringement will then depend on whether your uses interfere with the rights owner in... Read more »

1 Answer | Asked in Patents (Intellectual Property) and Trademark for New York on
Q: If you have not received legal papers yet as a defendant in a case involving multiple defendants, what should you do?

I am asking on behalf of someone else. I believe this is a civil case and the defendant has only heard from a friend about the lawsuit who is also a defendant included in the case.

Daniel Michael Luisi
Daniel Michael Luisi
answered on Jan 14, 2023

Your friend should contact a patent litigation lawyer for advice. Not engaging in the lawsuit can have serious, permanent consequences as to the determination of your friend’s rights. It is possible that the process server took all required steps to serve your friend, filed affidavits of service,... Read more »

1 Answer | Asked in Trademark for New York on
Q: Looking for info on how a city trademarks its slogan. Is there a legal process for this? Ie NYC- City that never sleeps
Robert E. Wasserman
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Robert E. Wasserman
answered on Jan 13, 2023

Such commonly recognized slogans are challenging to register.

A USPTO examiner would very likely issue an office action refusal based on "failure to function as a trademark" because such common slogans are not distinctive and consumers would not clearly identify that a...
Read more »

1 Answer | Asked in Trademark for New York on
Q: Can you tell me if my trademarks are legally recognized
Daniel Michael Luisi
Daniel Michael Luisi
answered on Jan 13, 2023

What we can do, firstly, is evaluate whether you have a common law trademark that you are using as a brand in commercial channels, such as selling online. If so, you should explore ASAP the feasibility of a USPTO registration of your mark, as common law trademark rights are very limited and... Read more »

2 Answers | Asked in Trademark and Intellectual Property for New York on
Q: Hi is there a way to continue with this trademark process?

I already started the trademark process but it was canceled 10 yrs ago.

I’ve since changed the logo but the name remains the same. Can I continue with what I started?

Daniel Michael Luisi
Daniel Michael Luisi
answered on Jan 1, 2023

I would just like to add that before you start a new registration application, you must conduct a common law clearance search for your mark, covering every single U.S. geographic market. The Lanham Act does grant a presumption of exclusive use throughout the territorial US to the first successful... Read more »

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2 Answers | Asked in Trademark and Intellectual Property for New York on
Q: Hi is there a way to continue with this trademark process?

I already started the trademark process but it was canceled 10 yrs ago.

I’ve since changed the logo but the name remains the same. Can I continue with what I started?

Fritz-Howard Raymond Clapp
Fritz-Howard Raymond Clapp
answered on Jan 1, 2023

If you had an application in progress to register the mark, and it was not completed, it cannot be revived.

Since you refer to both a "logo" and a "name", I infer that the mark had both a text component and a design component. It is possible to register just the text...
Read more »

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2 Answers | Asked in Copyright and Trademark for New York on
Q: As a life coach I'd like to include a link to a published song I'd send my client post-session for inspiration.

Am I infringing on copyright permission/issues?

Gregory J. Tarone
Gregory J. Tarone
answered on Nov 9, 2022

This question is for a trademark and copyright lawyer, as they are specially qualified and licensed to opine on it. However, generally speaking from my experience, if the use is not for profit or to promote you or your business, but rather, educational as a reference for your student, it does not... Read more »

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3 Answers | Asked in Copyright and Trademark for New York on
Q: How do I get in contact with owner for permission to use a design?
Erik Špila
Erik Špila
answered on Nov 4, 2022

I would like to also add that if its design registered in other countries than it can also be trackable through design registry. EUIPO for instance has registry of Community design valid in EU where contact information of design owners can be found.

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