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Tomasz Roman Barczyk

Tomasz Roman Barczyk

Tailored IP Solutions
  • Entertainment & Sports Law, Intellectual Property, Trademarks ...
  • California, Illinois
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Practice Areas
Entertainment & Sports Law
Intellectual Property
Trademarks
Trademark Litigation, Trademark Registration
Business Law
Business Contracts, Business Dissolution, Business Finance, Business Formation, Business Litigation, Franchising, Mergers & Acquisitions, Partnership & Shareholder Disputes
Appeals & Appellate
Civil Appeals, Federal Appeals
Communications & Internet Law
Internet Law, Media & Advertising, Telecommunications Law
Securities Law
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Jurisdictions Admitted to Practice
California
State Bar of California
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Illinois
Supreme Court of Illinois
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9th Circuit
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Languages
  • English: Spoken, Written
  • French: Written
  • Polish: Spoken, Written
  • Spanish: Written
Professional Experience
Principal Attorney
Tailored IP Solutions
- Current
Education
University of California, Berkeley School of Law
J.D. (2016)
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Northwestern University
B.A. (2011) | Psychology (Neuroscience) and Political Science (International Political Economy)
Honors: Dean’s List; Greek Emerging Leader; Kaplan Humanities Scholar; S.A.E. True Gentleman of the Year
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Certifications
Illinois Law License
Supreme Court of Illinois
California Law License
Supreme Court of California
Specialization Certification in Law & Technology
University of California, Berkeley, School of Law
Websites & Blogs
Website
Tailored IP Solutions
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Tailored IP Solutions
Legal Answers
2 Questions Answered
Q. Can "Written in the Stars" be used for a NJ astrology business? Legal aspects?
A: Hello,

As a general matter, there is nothing that would inherently prohibit the use of the mark. In fact, at first glance, it seems to be a suggestive mark which is a good indicator that it is distinctive and therefore eligible for trademark protection. and as it consists of a short phrase, it would not be subject to copyright protection. Though, if you want to be extra careful, you could always search for the phrase on the U.S. Copyright Office website just to make sure.

Your mom has the absolute right idea in checking whether the phrase has been registered as a trademark or is otherwise used by another business. Although she is planning on using it only in New Jersey, keep in mind that a previously registered trademark on either the New Jersey state level or the federal level utilizing that name could lead to potential infringement allegations. Additionally, if the same or confusingly similar mark is used by a business providing the same or similar services, that business would have common law protection and therefore would have grounds to dispute your mom's use of the mark. A general search of common law usage would also be advisable.

It's also worth noting that it not only matters whether the exact phrase "Written in the Stars" is in use or registered as a service mark for astrology services, but also there could be grounds for an infringement dispute if a similar mark is used in conjunction with similar services (e.g. "Written in the Heavens" for tarot services)--in other words, it doesn't have to be an exact match in order for there to be a risk. How close of a previously used or previously registered mark has to be to the one that your mom wishes to use, however, is determined on a case-by-case basis and difficult to say in the abstract where that line exists without a full analysis conducted by an attorney with experience in both the law and practice. While engaging an attorney to make this assessment is not an absolute requirement, it can prevent potential complications and save money related to such complications in the future.

Finally, although your mom is not seeking to register the service mark, it might be worth doing so at least on a state level. Registering the mark as a service mark in New Jersey would be much less expensive and much more straightforward than doing so on a federal level, and would alert any others who wish to use the same or similar mark in connection with the same or similar services that your mom has prior rights to it in the state of New Jersey.

Best of luck! ... Read More
Q. RE: Kinkassage trademark Serial Number 86140601Registration Number4583533
A: Actually, the previous answer is mostly correct except that it does not account for the fee for filing the Declaration of Continued Use. A Combined Section 8 Declaration of Continued Use and Section 9 Renewal filing (both of which are needed for the registration to continue) is $525.00 if filed by 8/12/2024 or $725.00 if filed during the grace period ending on 2/12/2025.
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