Trademarks

Experienced Sacramento Trademark Attorney

In an increasingly competitive world, establishing and maintaining a strong brand identity is more important than ever. Often times a company’s most valuable asset is the brand it has built and the goodwill associated with that brand, or name.  Our experienced trademark intellectual property lawyers provide guidance to both start-ups existing businesses and inventors.  We help them establish and protect their vital brand and trademark assets.  We have experience in trademark law and protection of important marks, routinely providing strategic trademark, branding and protection counseling for our clients across numerous industries.

What is a Trademark or Service Mark?

A trademark is a distinctive word, phrase, logo, domain name, graphic symbol, slogan, or other device that is used to identify the source of a product and to distinguish a manufacturer’s or merchant’s products from others. Some examples are Apple for computer products and the iPhone, Lazy Boy for furniture and arm chairs, Coca Cola for beverages, etc.

A service mark does the same thing as a trademark, but while trademarks promote products, service marks promote services and events. Some familiar service marks are: Kinko’s (photocopying service), Blockbuster (video rental service), and the FedEx logo (delivery services).

In order to be eligible for trademark protection, a word or phrase must be “distinctive” — unique enough to help customers recognize a particular product in the marketplace — rather than generic, like “The Coffee House.”

It is possible to register certain types of trademarks and service marks with the U.S. Patent and Trademark Office (PTO). Federal registration puts the rest of the country on notice that the trademark is already taken, and makes it easier to protect a mark against would-be copiers.

How Does a Mark Qualify for Federal Registration?

To register a trademark with the PTO, the mark’s owner first must put it into use “in commerce that Congress may regulate.” This means the mark must be used on a product or service that crosses state, national or territorial lines or that affects commerce crossing such lines–for example, a catalog business or a restaurant or motel that caters to interstate or international customers. Even if the owner files an intent-to-use (ITU) trademark application (ITU applications are discussed in the previous set of questions), the mark will not actually be registered until it is used in commerce.

Once the PTO receives a trademark registration application, the office must research and answer the following questions:

• Is the trademark the same as or similar to an existing mark used on similar or related goods or services?
• Is the trademark on the list of prohibited or reserved names?
• Is the trademark generic–that is, does the mark describe the product itself rather than its source?
• Is the trademark too descriptive (not distinctive enough) to qualify for protection?

If the answer to each question is ” no,” the trademark is eligible for registration and the PTO will continue to process the application.

I know the PTO won’t register a mark if it’s not distinctive or already in use. But are there other types of marks that are ineligible for federal registration?

Yes. The PTO won’t register any marks that contain:

• names of living persons without their consent
• the U.S. flag
• other federal and local governmental insignia’s
• the name or likeness of a deceased U.S. President without his widow’s consent
• words or symbols that disparage living or deceased persons, institutions, beliefs or national symbols, or
• marks that are judged immoral, deceptive or scandalous.

As a general rule the PTO takes a liberal view of the terms immoral and scandalous and will rarely refuse to register a mark on those grounds.

If the PTO decides that a mark is eligible for federal registration, what happens next?

Next, the PTO publishes the trademark in the Official Gazette (a publication of the U.S. Patent and Trademark Office). The Gazette states that the mark is a candidate for registration; this provides existing trademark owners with an opportunity to object to the registration. If someone objects, the PTO will schedule a hearing to resolve the dispute.

Is it possible to federally register a mark made up of common or ordinary words?

Yes, if the combination of the words is distinctive. But even if the entire mark is judged to lack sufficient distinctiveness, it can be placed on a list called the supplemental register whereas marks that are considered distinctive (either inherently or because they have become well known) are placed on a list called the principal register. Marks on the supplemental register receive far less protection than do those on the principal register. The benefits granted by each type of registration are discussed in more detail in the next question.

What are the benefits of federal trademark registration?

It depends on which register carries the mark. Probably the most important benefit of placing a mark on the principal register is that anybody who later initiates use of the same or a confusingly similar trademark may be presumed by the courts to be a ” willful infringer” and therefore liable for large money damages.

Placing a trademark on the supplemental register produces significantly fewer benefits, but still provides notice of ownership. This notice makes it far less likely that someone will use that identical mark; the fear of being sued for damages should keep potential infringers away. Also, if the trademark remains on the supplemental register for five years–meaning that the registration isn’t canceled for some reason–and the mark remains in use during that time, it may be moved to the principal register under the secondary meaning rule (secondary meaning will be presumed).

Even if a mark is not registered, it is still possible for the owner to sue the infringer under a federal statute which forbids use of a ” false designation of origin” (Title 15 U.S.C. Section 1125). It is usually much easier to prove the case and collection large damages, however, if the mark has been registered.

How long does federal registration last?

Once a trademark or service mark is placed on the principal register, the owner receives a certificate of registration good for an initial term of ten years. The registration may lapse before the ten year period expires, however, unless the owner files a form within six years of the registration date (called the Sections 8 and 15 Affidavit) stating that the mark is either still in use in commerce or that the mark is not in use for legitimate reasons.

The original registration may be renewed indefinitely for additional ten-year periods if the owner files the required renewal applications (called a Section 9 Affidavit) with the U.S. Patent and Trademark Office. Failure to renew a registration does not void all rights to the mark, but if the owner fails to re-register, the special benefits of federal registration will be lost.

Can a Business Register its Mark at the State Level?

It is possible to register a mark with the state trademark agency, although the state registration does not offer the same level of protection provided by federal law. The main benefit of state registration is that it notifies anyone who checks the list that the mark is owned by the registrant. This fact will lead most would-be users of the same mark to choose another one rather than risk a legal dispute with the registered mark’s owner. If the mark is also federally registered, this notice is presumed and the state registration isn’t necessary. If, however, the mark is used only within the state and doesn’t qualify for federal registration, state registration is a good idea.  In addition a lot of people only check the federal database.

How Does A Trademark Differ From Copyright?

Copyright protects original works of expression, such as novels, fine and graphic arts, music, photography, software, video, cinema, and choreography by preventing people from copying or commercially exploiting them without the copyright owner’s permission. But the copyright laws specifically do not protect names, titles, or short phrases. That’s where trademark law comes in. Trademark protects distinctive words, phrases, logos, symbols, slogans, and any other devices used to identify and distinguish products or services in the marketplace. There are, however, areas where both trademark and copyright law may be used to protect different aspects of the same product. For example, copyright laws may protect the artistic aspects of a graphic or logo used by a business to identify its goods or services, while trademark may protect the graphic or logo from use by others in a confusing manner in the marketplace. Similarly, trademark laws are often used along with copyright laws to protect advertising copy. The trademark laws protect the product or service name and any slogans used in the advertising, while the copyright laws protect the additional creative written expression contained in the ad.

What’s the Difference Between Patent and Trademark?

Patents allow the creator of certain kinds of inventions that contain new ideas to keep others from making commercial use of those ideas without the creator’s permission. For example, Tom invents a new type of hammer that makes it difficult to miss the nail. Not only can Tom keep others from making, selling, or using the precise type of hammer he invented, but he may also be able to apply his patent monopoly rights to prevent people from making commercial use of any similar type of hammer during the time the patent is in effect (20 years from the date the patent application is filed).

Generally, patent and trademark laws do not overlap. When it comes to a product design, however — say, jewelry or a distinctively shaped musical instrument — it may be possible to obtain a patent on a design aspect of the device while invoking trademark law to protect the design as a product identifier. For instance, an auto manufacturer might receive a design patent for the stylistic fins that are part of a car’s rear fenders. Then, if the fins were intended to be — and actually are — used to distinguish that particular car in the marketplace, trademark law may kick in to protect the appearance of the fins.

Contact Our Sacramento Trademark Attorneys

We are experienced Sacramento Trademark Attorneys. We have helped many individuals and companies with their intellectual property law issues including licensing, trademarks, copyrights and intellectual property contracts.  Our Sacramento trademark attorneys can help you protect your most important assets and give you the great legal advice and strategy needed to get you the results you want.  Contact us today to schedule your complimentary attorney consultation by clicking HERE or by calling 916-999-1376. We look forward to helping you with all of your Sacramento trademark law needs.