Shimokaji IP

Our August 2017 Newsletter - http://www.shimokaji.com/cli/newsletters/2017_08_August.pdf **USPTO Reports on Patent Eligible Subject Matter **Regeneron's Inequitable Conduct Bars its Patent Enforcement **William Adams of the Black-Eyed Peas Cannot Register "I AM"... **Do You Have a Claim For Trademark Reverse Confusion? See more

QUESTION: We have been using a trademark since January 2015. We are selling products with the trademark displayed on packaging and product labels. We also own the trademark domain name. However, we never filed with the USPTO since we were told that it is unnecessary and we would still be protected if we actively using it in commerce. Now, someone filed it and their mark is published for opposition in September. I am planning to have a Notice of Opposition filed as soon as they are published. Any suggestions? ANSWER: If you have been using your trademark in other states and there is a likelihood of confusion between your trademark and the later used trademark, you can file an opposition. After filing the notice of opposition, the process is similar to a lawsuit.

QUESTION: I have a question on compound word trademark registrations. Without disclosing the actual name, we have a trademark application that has passed through opposition. we have submitted the specimen and are awaiting a registration. Two months ago a new application (has not been issued an examiner) was submitted with a similar name, in the same category, 03. our name is: GoodSkinActives competitor application is: Good Actives. What are the chances that the examiner will ...see a conflict with our mark which hopefully will be registered by the time an examiner is issued to our competitor? ANSWER: Typically, when the latecomer to the same market removes one word of a multi-word trademark by an earlier user, the earlier user of the multi-word trademark has prior rights. Therefore, if the earlier user has filed a trademark application, and the examiner finds it, the latecomer's application will likely be rejected.

Join Michael Shimokaji @ UCI Lunch & Learn to discuss Patent Fundamentals for Start-Ups - July 14 http://innovation.uci.edu//lunch-and-learn-with-michael-/

Our July 2017 Newsletter - http://www.shimokaji.com/clien/newsletters/2017_07_July.pdf **US Supreme Court Gives Right to Use and Resell Patented Products **Amazon is Not Liable for Patent Infringement by its Online Sellers **US Supreme Court Says First Amendment Allows Disparaging Trademark Registration... **Clothing Designs Are Copyrightable According to the US Supreme Court See more

QUESTION: I am working in a company which filed a patent application for me (I am the only inventor and the assignee is the company). Currently I have the application number but the patent is still under review. Now I am thinking of switching job to another company in the future but wondering if I will need to wait till the final publication of the patent. ANSWER: Even if you leave your employer, you will still be an inventor of the patent. However, whether you leave now or after the patent issues, you will not be an owner of the patent. Your employer will be the owner.

QUESTION: If a manufacturer makes improvement to the patent pending idea, is the company considered a co-inventor to the invention moving forward to update the patent application? If so would the manufacture now be more likely to have an invested interest to help fund the development? ANSWER: An improvement to an existing idea can be patentable. The inventors of the improvement are not necessarily the inventors of the existing idea. If the manufacturer was not the inventor of the original patent pending idea, an improvement does not make them an inventor of the original idea.

QUESTION: Can I get a licensing deal with a provisional patent. I have a product with a provisional that has great potential and I want to try and get a deal so I can receive royalties with my provisional. ANSWER: Yes, but you may increase your chances of signing a deal if you had a pending, non-provisional patent application, and increase it even further with an issued patent.

QUESTION: If I found a very similar patent to my invention but mine's still better, what should I do? I recently invented a product but found a patent for a similar product which has now expired. The patent I found works in the exact same way as my invention except my invention is not as bulky or have the redundant attachments this one has meaning mine would be a lot more marketable. My improvements are simple but they have a big impact so I'm afraid they'll be classed as obv...ious. Such as removing a handle which isn't needed and moving a device within the unit to another area to make the invention smaller. So is there any way I can protect my improvements to an invention that is now public knowledge? ANSWER: Improvements to existing devices can be patentable - if the improvement is not obvious. For example, making an existing device smaller may be patentable if the way in which it was achieved is not obvious in view of similar, prior devices.

Our June 2017 Newsletter - http://www.shimokaji.com/clien/newsletters/2017_06_June.pdf **US Supreme Court Changes the Landscape (Venue) for Patent Lawsuits **Encoding and Decoding a Digital Image is Not Patentable **"Google" is Not a Generic Trademark... **Urban Outfitters Willfully Infringed Copyrighted Fabric Design See more

Our May 2017 Newsletter - http://www.shimokaji.com/clie/newsletters/2017_05_May_2.pdf **Federal Circuit Confirms that Takeda's Prevacid Not Infringed by Sun Pharma's Generic Version **ThermoLife and Stanford University Ordered to Pay $1.3M in Attorney's Fees **What Does "Connected" Mean in a MedTech Patent?... **Jury Hits Kimberly-Clark for $454M On Its Surgical Gowns See more

QUESTION: What do I need to know about registering a trademark? I want to start up a clothing/bait and tackle shop in my home town. We haven't made the products with our preferred name yet or sold anything because we fear the name might be rejected or something might some up. We want to get all our ducks on a row before we invest too much. I got the name and place and ideas for products. Where do I start. Do I register for a trademark first? ANSWER: You should be first conce...rned about whether your preferred name might infringe another's trademark and then whether you can register your preferred name. For infringement, you can not only Google your preferred name to see who else might be using the same/similar name, but also check the US trademark office website - https://www.uspto.gov/trademarks-/search-trademark-database For registration, if your business is confined to the state in which you are located, you can obtain a state trademark registration. If your business goes outside of your state, you can obtain federal registration - https://www.uspto.gov/trademarks-application-/filing-online

May 2017 Newsletter - http://shimokaji.com/client_info/newsletters/2017_05_May.pdf **Automakers Win at Federal Circuit on Non-Patentable Subject Matter **US Government Loses at Federal Circuit on Patentable Subject Matter **First Lady Melania Trump's Trademark Enforcement... **Abbott and Costello's "Who's on First" Comedy May Be Reviewed by the US Supreme Court See more