Below are a few of the many and varied case case that Parks & Associates, P.C. has successfully handled.
PACKAGING TECHNOLOGIES DEVELOPMENT
An inventor brought his invention of a commercial flexible packaging shipping container to Parks and Associates so we could file a patent application. During Parks and Associates’ prosecution of the application, the inventor obtained an investor who wanted to acquire the patent rights, but we were concerned about the investor funding the acquisition of inventor’s patent application. Thus, we recommended and drafted an option agreement for the potential buyer that included an employment contract for the inventor. This allowed the buying company a year to work with the inventor’s invention and have the right to convert its option to ownership of the patent by assignment if they were so inclined to acquire the patent application. The option also provided funding for the invention development and the payment of a lump sum fee to the inventor, as well as a royalty going forward if the company exercised its option. The option agreement also included an employment contract for the inventor to work with the company during the one year to help develop the product in the marketplace.
INDEPENDENT GAS RETAILER improved market position
The owner of a group of independent gas stations that included a high-quality European style bar and grill had developed a unique trademark and logo for the gas stations and restaurants and brought them to Parks and Associates for protection. Parks and Associates filed the trademark and logo applications, and then proceeded to get trademark protection on both the names and the logos used with his gas station and bar and grill to allow the owner to move forward with his expansion plans to different location through out the U.S.
NEWSPAPER INCEASED market share
The president and other officers of a Spanish language newspaper had some previously filed trademarks, but did not feel like they had full coverage of the company’s intellectual property. He came to Parks and Associates for a full evaluation of their intellectual protection needs. Parks and Associates recommended additional filings of copyrights on some of their graphic characters, and additional trademark filings to protect their syndicated columns, which had become very popular in and of themselves. Parks and Associates proceeded to file and obtain trademarks on all those items to provide them full protection of their intellectual property.
OIL TOOL ENGINEER SELLS invention to major oil company
A drilling engineer developed several ideas associated with lateral drilling and wanted to see if these ideas were patentable. After doing novelty searches, Parks and Associates determined that the ideas were likely patentable and proceeded to file several patent applications on the ideas. After the patent applications were filed, the engineer approached a major oil company about the possibility of buying his pending patent applications and hiring him as a consultant to help develop his technology into commercial products. He succeeded in selling the patent applications for in excess of eight figures. Parks and Associates helped in the negotiations and final assignment of the patent applications.
An owner of a Mexican restaurant, which had been in operation for several years, was approached by an investor who wanted to buy his restaurant’s name and create a franchise. The Mexican restaurant owner came to Parks and Associates about protection of his name and other intellectual property. Parks and Associates recommended that the Mexican restaurant file for trademark protection and copyrights on its creative menus. In the first office action on the trademark, however, protection was denied by the trademark examiner because the investor, “trademark pirate” had already filed an “Intent to Use” trademark application before the date of the client coming to see us. We devised three strategies of possible responses. One was to file a lawsuit and obtained possession of the trademark from the investor trademark pirate through court action. Another one was to file an appeal to the Trademark Trials and Appeals Board and obtain the rights to the trademark. The third was to wait for the 30-month period, required for conversion of the trademark pirate’s “Intent to Use” trademark to “Use”, to run its course. Eighteen months had already gone by, so to defeat the investor pirate, the client would have to wait 12 months and see if he filed an affidavit of “Use” and supporting specimen in order to convert his application to a “Use” application before the expiration of 30 months. Parks and Associates recommended the approach of waiting out the trademark investor pirate, and the client obtained the trademark in this most cost-effective way, by the dismissal of the Trademark Pirate’s application by the Trademark Office.
An avocado grower developed a special process for grafting avocados so that they could be planted in the southern climates of the United States and survive the winters. He began selling these plants under trademark names. Other growers picked up the trademark names and begin selling avocado trees under the trademark names, but they were not following his proprietary process and were selling substandard plants. Parks and Associates recommended filing for trademark protection and did so and obtained trademark registrations. Parks and Associates then recommended sending cease-and-desist letters to wholesale growers who were infringing on the newly registered trademarks because they were selling defective plants under his trademarks, which was disparaging the trademarks and reputation of the avocados trees sold under the trademarks. Parks and Associates stopped all the infringers and drafted licensing agreements with producers to produce the trademark products under license agreement for the avocado grower and for him to receive a royalty on the sale of each avocado tree they produced and sold and an annual minimum royalty each year to keep the license agreement in effect.
A company that builds computer telephone dialing and storage systems and had developed a lot of technology, but did not know how to proceed to protect and capitalize on the technology or which technology was subject to being protected approached Parks and Associates for help. Parks and Associates helped them sort out the patentable technology from the non-protectable technology and recommended the filing for patent protection on several of their technologies and for protection on their trademarks. Furthermore, Parks and Associates recommended the company file foreign patent applications to protect its technology throughout the world. Some of the patent applications issued into patents and others were still in prosecution when the company was sold. All the patents and trademarks and patent applications made the company significantly more valuable because they were treated as additional recognizable assets in addition to the core business and sales, which was sold.
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