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By J.D. Houvener
Patent Attorney and Founder

Hey everyone good morning i’m jd hoover owner here at bold patins law firm and you’ve made it to our live program uh i’m a patent attorney and owner here at bold patents law firm i’m here every wednesday so uh you couldn’t make this session live and you’re watching after the fact show up one of these next wednesdays nine o’clock uh on the west coast and noon on the east coast i’m here to answer live questions and answers from you uh please don’t share anything confidential okay this is not an attorney client discussion but i will be able to answer generic questions process questions you know wondering whether patenting is the right right time for you uh whether it’s a trademark copyright trade secret or something that might be actually that eligible love to talk with you about the process and any questions you might have about that um today i was really hoping to have one of our clients on uh christina evans who is the owner over at shy city alkalinity unfortunately she couldn’t make it here today so we’ll be talking about her invention briefly and celebrating the fact that she is now patent pending um in just a little bit coming up later on the program we’ll be sharing uh some questions that have come in from and so those of you that are joining in from the audible community welcome you’re welcome to stay tuned for the whole program but if you want to jump to the end that is where i’ll be addressing those questions and i do want to offer a chance here about midway through the program for some of those who are looking for a way to get started you know they’re not quite sure how to do it and what’s involved and it might be overwhelming to them about the patent process and that’s why i wrote this book behind me both ideas the inventor’s guide to patents and that copy of that book a pdf downloadable version is available to you if you take action and schedule a free uh screening session today so i’ll provide that link for you to do that in just a few minutes all right so let me do that here and again i will be prioritizing live questions for those who are got something burning always been wondering about i’ll be happy to share that with you guys all right so put up a quick disclaimer here as you might have seen in the different posts we are live across linkedin streaming live streaming now facebook as well as our uh youtube uh google youtube platform um so again this is um this is a webinar live format so please do not share anything confidential i am a patent attorney registered at the uspto and an owner and founder here at bullpat’s law firm so i just put in the comments there a disclaimer at least i tried to here we go legal notice um and so uh yeah let’s get into it uh so i want to share with you guys the uh invention that christina evans uh who is a female black entrepreneur based out of the chicago area she’s invented this uh what we have now filed and our attorney at our firm reed rising may has helped for submit is a method and system for a tincture or a spray to go on topically to provide pain and otherwise positive health effects so i want to share with you guys her website in case you’re interested in looking at her information so i’ll share your screens you can take a look at her website i thought it was pretty uh pretty impressive so aside from this tincture this sort of oil that she has now patent pending protection for um she can see that she has many products okay including shy city alkalinity which is the bottle of water that has alkaline in there so it’s just you’ve got proprietary methods and system as well as the composition all protected now through our firm and it’s really fascinating logo as well we’re hoping to help her protect and so she’s in chicago areas where she’s getting her start so if you happen to be in the chicago area and you haven’t heard about shy city alkalinity check it out um i’m going to put the website in the comments here really impressive what uh christina has been up to all right so put that link over there and again congrats to christina for being patent pending and uh kudos to her attorney lead rising mate one of our top attorneys here at bold patton’s law firm okay i think now is a good time to jump right ahead to our questions i don’t have any live viewers at this moment so we’re going to go to those uh those questions that have come in from our community

all right this question hilarious has uh is coming out of the chicago area as well this is related to patent applications

so they’re the lengthy question try to put into the box here

all right so what is ip or patent ownership assignment i submitted a good patent with my previous company uh i get that that’s good and now as part of the filing they sent me an assignment pdf file to sign which is odd to me and i never had experience with signing such a file i was going to sue the company so i’m a bit suspicious about the request he uses the following language what is it exactly and what do they mean by asking for it i’m asking me to sign it they understand here by authorizing the request to commission your patents and frameworks to issue letters patents to assign me yeah so this is actually pretty standard believe it or not um whether you’re a current employee um or a previous employee if you’re the inventor and while you invented or maybe a co-invented specific invention if you were an employee at the time the company that you were working for the employer actually owns that invention and so they have a right to all that ip including the inventions and perhaps any trade secrets or um supplying supporting information including copyrights or even trademark material that’s related to that innovation so it is your duty and obligation to assign it to that company even if you’ve now left the company and of course it sounds like you may have other legal issues and civil matters related to the employment perhaps in a uh litigation matter which you said but it is irrelevant the underlying fact is that if you were an employee at the time you invented co-invented while on the job then it uh the invention is owned by the company the employer so um well there may be some wiggle room uh in that if you were to have a decent argument for example if the invention was done off hours and is unrelated to the job and you weren’t using the company computer or company tools to produce the invention um that is possible you can make an argument that no no this doesn’t belong to the company this is me personally so if you have any questions about that or you want to talk further please uh get ahold of me or one of my attorneys at the firm we can help you walk through that but i’m i’m guessing this is probably related to the actual work you were doing as an employee and so it is standard to have you um assign otherwise give up ownership to the company under your employment contract all right i’ll put my email address and contact information here for you to follow up with me i’ve got a email address and a text only phone number you’re welcome to text me at pretty good got that okay let’s go to our next question in the patent application space this question is out of los angeles california

all right here we go

all right can you patent a rug shaped like a country okay uh new company website is claiming that they have a patent in the us and the european union for a small country-shaped rug can you actually patent an item shaped as a country um i can’t locate divided by search nor do they display their patent number well interesting okay so um patents are there are two main types of patents that are issued by the uspto and there’s utility patents and there’s design patents okay utility patents protect and give you rights for functional inventions things that are actually they do something and that’s exactly what you get the rights for is what what the activity is what the functionality the benefit that they’re providing the utility okay the other aspect is design patterns where all you own is the actual art right the actual just you know the three-dimensional um article of manufacturer right what is actually built in three dimensions in sculpture and shape and form and ornamentation not what it does right different so those are two very different rights and it is possible in this case i would say that uh the this company may have a design patent for a specific type of you know tapestry right a rug in other words um it may be shaped in a certain way uh and uh it is possible that that that exists as a design i would highly doubt that they’re they have an active patent for a rug um in other words the utility of a rug has largely been been around for quite a long time and so unless they come up with a new type of a polymer strand or new type of material pattern or method for actually making the rug then it is unlikely that they have a utility patent on it so if you’re curious in terms of you know are they actually you know do they actually have a patent in the us there are ways to do a search on the uspto website you can actually search by company name under assignee assignee means the owner of the patent or you can also search under inventor if you know the actual inventor’s name there are easy ways to search for that so you can do you know check out the uspto website it is odd that they’re not claiming that they have a patent or putting the patent number usually labeling is an important part of putting the right amount of notice out so thanks for that question all right let’s go to our next one we’ve got three questions here in the trademark domain all right and we’ll cover just a couple more and then we’ll wrap up here okay so this question is out of dallas texas

all right can i use the name that is trademarked but in a different way and with the variation i wanted to begin a business and register in llc my field involves social media management content creation and web building let’s say i’m wanting to name it i love social media i went to the us gov website and searched trademarks good for you and found that entertainment and news company production studio has already trademarked the name uh is there any way that i can use this name with a variation um and what if i love social media is a common phrase that people use and it’s almost part of the culture okay good question all right so uh it’s a trademark law right just the underlying features of registering in mark and trademarks is that you have a distinctive mark distinct it means independent meaning it’s the only one in other words will not confuse the consumers so um that phrase i love social media if you’re going to be using the exact same phrase as that someone else has already used it’s not going to be distinctive meaning you’re not going to get the underlying registration for it and you could potentially be infringing someone else’s use with that mark and the only catch is that it is possible i suppose that someone could use i love social media um in a different classification right it sounds like you’re in the field of website development social media management content creation which certainly falls right into the wheelhouse of social media but like i said it could be someone’s using i love social media but they’re actually a pet adoption company okay i’m using kind of a little bit outrageous example but if they were in the pet industry okay pet you know care um pet adoption specifically and they use isle of social media that’s the name of their brand well in that case you you might be able to secure i love social media for social media management because it hasn’t been done before it hasn’t been registered and there’s no prior user of that mark so you have to kind of take a look at the current registration that you found on the government website like they went to the tss website and if the classification is the same as what you’re going after that is going to be difficult to get around certainly you’re not going to use the same exact name uh if you want to try to find a similar name that’s not going to be um rejected uh i would highly advise you get with one of our trademark attorneys and matt cole seth here at our firm is awesome at that so please uh take a look at the link above my my email and contact information please do reach out and help you get get that mark registered all right well i see a couple people pop in if you guys have any questions i will feel those live questions first but i’m kind of chipping my way through the album questions as we go here to the broadcast so just keep those questions coming in i’d love to have some live interaction here with any of you um any question related patents trademarks trade secrets anything in ip okay another question out of chicago this is popular all right here we go so this is one that came in through avo and it’s related to trademarks as well okay would be possible to trademark an artist’s stage name if the youtube channel is already using it and get ownership of it first of all i think i take the time to read my question i’m an artist and they make sculptures paintings and compose music so no artist or brand has the name they came up with except for an inactive instagram and tick tock account youtube seems to have a channel with the same name which posts old music from the 80s and has 2 000 subscribers

and so it looks like there’s sort of this this issue where you come up with a name to conduct business and there may be a prior use if you find one you know a channel on youtube um and maybe someone that’s using this uh for a tick tock account but not necessarily for business purposes that will kind of i believe be the be the root of the issue um working with the trademark attorney is the question is is there a prior use right of this mark you’re going after but more importantly was that prior use a commercial use and did they maintain right maintain their use up until current date or did they at any point abandon that mark right stop using it and um and if they did right if they actually stopped using the mark then it is in a way up for grabs and you could make a claim that now look they weren’t actually using it for economical purposes uh this was just sort of a fanciful they used this term in almost a an artistic or a leisure or personal use and the trademark office will likely see through that and and i said they’ll reward you with the registration if you can prove that you are actually in commerce using this mark for selling your art right you mentioned you’ve got sculptures and paintings so i believe there is a way to move through this it’s just a matter of documenting and understanding all those prior uses to make sure that you’re not going to run a foul or get rejected um for those um those uses and the other question that they will come up to is is more than the same classification as um you know the other ticktock account and you know this youtube subscriber they don’t necessarily seem to be in the art domain um of course they’re posting old music but there is no distinction from your type of art which seems to be more fine art um as opposed to music production so yeah i’d love to help you if you have any questions about getting registration reach out to us i’ll probably connect you with matt on our team okay we’ll do one more question and i appreciate that too i see that um the linkedin user i appreciate yeah you guys tuning in i’m not able to see how many linkedin users there are uh so it shows up right now there are zero live viewers uh fingers crossed that there actually are a few of the people out there live um if you have any questions at all i will feature i’ll i’ll take your questions right away uh i’ll probably on for five minutes or so but for now i’ll jump to our last question here on trademarks which is going to be out of las vegas nevada okay and again trademarks is is something i’m happy to talk about but i do actually love talking about patents so um i wish there were more questions out there all right so okay this question asker says okay can i use the same name of other businesses for my logo i am starting my clothing business and i found the name before my logo had already been used by a jewelry store can i still use it because jewelry and clothing are not related thank you well maybe maybe i mean i don’t know if they’re completely unrelated okay and i would say jewelry and raising reptiles okay those would be completely separate i think clothing and jewelry it could be bucket into this giant bucket called apparel and i think it is possible depending on how broad the prior user that’s in jewelry got their registration so it could rotate that they cover what they’re selling now in jewelry but they may also have rights and protections for other types of merchandise and apparel including clothing so that’s something to sort of look out for and if you don’t necessarily know how to look it up i would get with the trademark attorney to make sure the last thing you want to do is start up a company get investment you know get actual money coming in the bank and then you know realize you got to have uh a settlement now with this company because there’s trademark infringement so you wouldn’t want that to happen um so if you’ve got um their actual name uh in your logo right you’re actually using it the main issue there is there’s any confusion in the market where you’re in a way sort of using the goodwill that this other company the jewelry company has produced over time and you’re getting some of that name recognition for the commercial benefit of your company so that is the major concern consumer confusion and in a way sort of unearned um good will that is being in a way stolen from this other company unintentionally perhaps right but the difference of classification i think is closer than i think you you’re warranting here so let’s take a look at the underlying trademark registration that the jeweler has uh and see if it is specific to jewelry and if it is i think it does lean in favor of it being able to get registration uh and you’ll likely have to disclaim um jewelry or you wouldn’t be able to own that uh with your logo design um i should also quickly mention that there are two major types of marks out there uh one is a word mark and one is a logo or cell call a design mark is the true technical term and so a word mark covers the actual english letters um so like bold patterns right yeah not the you know the blue and pink and green shapes and colors that’s actually part of the design pattern we actually have two separate um starting up design trademark the word mark just has the english characters normal bold patents law firm so there are two separate trademark rights one covers and what actually spells you know in order in in english language and the other is merely artwork which is what a logo or design mark is and so you have to think about whether the logo if you could perhaps rework the logo to get rid of the actual words in the logo and rely solely on the color the imaging right the shading uh the artistic uh way that that design looks if you can pull the actual name out of that and still sort of have that you know that powerful imagery that you want you likely will have a much more uh much easier time getting that registration all right well guys we’re going to wrap up uh again i’m jb hoover owner and founder here at bold patton’s law firm and i’m here every wednesday so if you missed us live please join us next week i’ll be here wednesday uh at 9 a.m pacific and on the east coast and for your copy of the bold ideas book if you want to take action and get a copy of that here is a link to schedule a free screening session with one of our advisors and for taking action you’re going to get a copy of the book so sorry i took a lot of put that link in there but there it is please check it take advantage of that and schedule some time and get yourself started have a great day everybody go big go bold

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at