California Trademark Attorney
If you are seeking a trademark attorney in California‚ Mandour & Associates can assist you. We have offices in Los Angeles‚ Orange County‚ and San Diego. We can also assist businesses with all types of intellectual property issues such as those relating to trademarks‚ copyrights‚ and patents. For a free consultation, please contact us.
Trademarks exist to establish a unique brand that differentiates your company from your competitors. As a vital part of your company’s identity, trademarks should be federally registered and actively policed to help prevent trademark infringement.
Filing for a Trademark: Unregistered vs. Registered Trademarks
Unbeknownst to most people, there are different types of trademark rights including unregistered vs. registered trademarks, and state vs. federally registered trademarks.
Unregistered trademarks are denoted by the ™ symbol, and typically only have protections under common law. In this case, it is not necessary to file for a trademark since your rights are established when you use your trademark in commerce. California and U.S. laws use a first use rule for unregistered trademarks, where generally the company who first used the trademark has a superior claim to the rights of that trademark.
With an unregistered trademark, your trademark protection is limited to only the specific geographic area where you are using the trademark. For example, if the name of your business is an unregistered trademark, you may have rights where the business is present – but no rights in other regions where you are not doing business. Additionally, in instances of trademark infringement, you may not have grounds for a trademark lawsuit.
In order to gain nationwide protection for your trademark, it is highly recommended to have it registered.
State vs. Federal Trademark Registration
You can register your trademark at either the state or the federal level. California registered trademarks are protected marginally better than unregistered trademarks. With a state registration in California, your trademark is protected solely within California – giving you the right to legal action if a company in California infringes upon your trademark rights. However, you still have limitations with trademark protection, and you do not have the right to use the federally registered ® symbol.
Conduct a Trademark Search
The first step in securing a trademark is to have your trademark attorney perform a trademark search. This can turn into the most important step in acquiring trademark rights because proper research prior to filing a trademark application can potentially save you significant costs and time in avoiding trademark infringement issues in the future.
The search should include searching names that sound similar, alternate spellings, and words or phrases that have a similar commercial impression.
Trademark Registration for California Businesses
Federally registered trademarks offer the most comprehensive trademark protection. By registering a trademark with the U.S. Patent and Trademark Office, you have a number of significant advantages over unregistered and state-registered trademarks.
- You have exclusive rights to use the trademark nationwide.
- The trademark office will block confusingly similar applications
- You have the right to use the ® symbol.
- You have a presumptive legal ownership of the trademark.
- Your trademark is listed in the USPTO online database which helps to deter infringement
International Trademark Protection
Another benefit of federal registration is that the registration can form the basis of trademark applications in other countries using the Madrid Protocol. With a federal registration, we are able to quickly file foreign applications via the Madrid Protocol. Your U.S. filing date also provides a priority date for filing in countries that are not members of the Madrid Protocol.
Considerations for Registering Your Trademark
After filing your trademark application, it typically takes about 4 months before your trademark application is examined. When filing your trademark federally, the U.S. Patent and Trademark Office carefully examines every application for compliance with federal trademark law. The USPTO may refuse registration if the trademark is:
- Likely to be confused with a prior trademark
- A generic or merely descriptive term
- Geographically descriptive of the origin of the goods or services
- A surname
- An individual’s name or likeness and used without their permission
One of the most important factors to consider when registering a trademark is avoiding a likelihood of consumer confusion with a prior trademark that is already filed or registered. This generally occurs when the trademarks and goods or services are similar. Trademarks may be considered confusingly similar based on appearance, phonetic sounds, and the commercial impression.
Your Registered Trademark Rights Have a Time Limit
After successful registration, your trademark will remain registered nationally for 5 years. If you wish to continue registration of your trademark, you must file a renewal between the 5th and 6th year after the registration date. Failure to file this renewal will result in your registration being cancelled. If your trademark is cancelled, another company or business entity may claim your trademark for their use. Thereafter, to remain active the trademark registration must be renewed at every 10 year interval from the date of registration.
Trademark Infringement Lawyers in California
Trademark infringement occurs when two businesses use confusingly similar trademarks simultaneously. The infringement may be entirely innocent, or it may be an entirely willful and a malicious choice by a business to counterfeit your brand and profit from your reputation and goodwill.
A business may unwittingly use your trademark if it did not know it was registered. According to a recent Compumark report, trademark infringement is on the rise. The report surveyed trademark professionals in the United States, United Kingdom, France, and Germany, and found that over 80% of businesses had experienced trademark infringement within the past year.
In a substantial number of trademark disputes, the problem is resolved after the infringer receives a cease and desist letter. This is especially true when the letter comes from an experienced trademark attorney that litigates. Such a cease and desist letter comes with an implied threat of a trademark infringement lawsuit, so it often has enough weight to convince the infringer to stop using a confusingly similar trademark. With this early intervention, the infringement can be halted, and the problem can be resolved without either party having to resort to trademark litigation. We have significant experience sending cease and desist letters and responding to them resulting in a successful outcome that did not involve taking the next step towards litigation.
The success of a trademark infringement case often depends on one key element: whether the trademark is likely to cause confusion among consumers about the source of the goods and services. A likelihood of confusion is usually proven when the trademark itself and the category of goods and services are both similar. The strength of these claims is crucial in successfully recovering damages in a trademark infringement lawsuit.
In determining whether a likelihood of confusion exists, the Ninth Circuit, which includes California and neighboring states, follows the Sleekcraft test to determine trademark infringement. The 8 Sleekcraft factors to be considered in a trademark infringement analysis are:
(1) The strength of the senior trademark;
(2) The proximity of the goods and services;
(3) The similarity of the trademarks;
(4) Whether there is any evidence of actual confusion;
(5) The marketing channels used;
(6) The degree of care used by the ordinary purchaser;
(7) The defendant’s intent in selecting the trademark;
(8) The likelihood of expansion of the product lines.
See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir.1979).
Legal issues giving rise to trademark infringement are often highly technical. Courts often have significant discretion in determining whether trademarks or goods and services are similar or related. While these 8 factors are considered in reaching a decision on the issue of a whether a likelihood of confusion exists, they are not exclusive and at times one factor can be the primary consideration.
Trademark Litigation Attorneys in California
If both parties are unable to satisfactorily resolve a trademark infringement matter outside of court, trademark litigation may become necessary.
Trademark litigation usually occurs in federal courts. In order to have a successful claim, the plaintiff must prove:
- That it owns a valid trademark preferably one registered with the USPTO
- That its trademark was used in commerce before the alleged infringing trademark.
- That the defendant’s trademark may confuse consumers about the source of its goods or services.
Gathering evidence is often vital to proving claims of trademark infringement. This evidence can address various factors that support the likelihood of confusion claim. The evidence can include:
- The dates of first use and whether use has been maintained
- How and where the infringing party’s goods or services are marketed and sold
- The intended demographic audience for the goods or services
- Actual confusion evidence which is often the most persuasive evidence of infringement
Based upon this evidence, the courts may find that the defendant did indeed commit trademark infringement.
Recovering Damages in Trademark Litigation
If trademark infringement is proven, plaintiffs in trademark litigation cases may seek a number of different damages, including:
- A court injunction to stop use of the infringing trademark
- A court order requiring the infringing company to forfeit or destroy any objects or articles that have the infringing trademark
- A monetary payment that may include defendant’s profits, damages sustained by the plaintiff, and treble damages
- An order that the defendant pay for the costs of the lawsuit and the attorneys’ fees incurred by the plaintiff
If a trademark lawsuit has been filed against you, we are skilled in defending our client’s rights. We will review your case to consider whether a motion to dismiss or counterclaim are available. If a complaint has not yet been filed, we may also consider filing for declaratory relief in a more favorable jurisdiction.
The Trademark Trial and Appeal Board (the TTAB)
When a trademark application is filed it is eventually published for opposition. During this 30 day window, a third party can file a notice of opposition to try to prevent the trademark from registering. Similarly, at any time a plaintiff can file a petition to cancel an existing registration.
If you believe a confusingly similar trademark has been filed with the Trademark Office, or that a confusingly similar trademark has registered, at the earliest opportunity you should have a trademark attorney file a trademark opposition or trademark cancellation. Opposing a confusingly similar trademark at this early stage can prevent a more expensive showdown in court later on.
To see a full list of the more than 250 cases Mandour & Associates has handled in front of TTAB, click here. Our representative successes at the TTAB include:
- Eden Beauty Concepts‚ Inc. v. Botica Comercial Farmaceutica Ltda in the U.S. Trademark Trial and Appeal Board (TTAB) – Representing plaintiff opposer in a trademark matter‚ we forced a billion-dollar Brazilian company to file for summary judgment against itself resulting in all three of its conflicting trademark applications being abandoned.
- Bumble Bee Foods, LLC v. Station Casinos, LLC in the U.S. Trademark Trial and Appeal Board (TTAB) – Representing plaintiff petitioner in a trademark matter, we successfully petitioned to cancel defendant’s HACHI trademark.
For more information on these types of cases and how we can assist, please see our U.S. Trademark Trial and Appeal Board page.
Mandour & Associates – California Trademark Lawyers
Our firm assists with all aspects of the trademark process. We also aggressively assert and enforce our client’s trademark rights. We assist clients with trademark applications, trademark infringement issues, and trademark litigation.
At Mandour & Associates, we are proud of our long history of successful results. Here are a handful of representative cases demonstrating our successes in court:
- BioNeurix v. Nathans Natural in the Southern District of California – In this case we represented plaintiff in a trademark and copyright infringement case. At the conclusion of the case we obtained a Judgment for $1.7 million including an injunction‚ damages, costs‚ and attorneys’ fees.
- SimplyWell v. Elgo in Nebraska District Court – In this case, we represented the defendant in a trademark and patent matter in a foreign jurisdiction. Acting quickly for the defendant, we were able to obtain a dismissal of the case with plaintiff taking nothing.
- BioNeurix v. Avilan Marketing in the Central District of California – In this case we obtained the defendant’s entire business including the trademark‚ the product and inventory‚ the domain name‚ the website‚ and a monetary payment to our client.
If you have a trademark issue in California, we look forward to assisting you. Please contact us today to discuss your case.