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 California intellectual property issues such as those relating to trademarks‚ copyrights‚ and patents.
Trademark Registration in California
Trademark registration is the best way to protect your trademarks. A Trademark Registration is issued by the United States Patent and Trademark Office and allows the holder to bring a federal action under the Lanham Act for trademark infringement. Though trademark registration is not required to use a trademark in commerce‚ registration puts others on notice of your trademark and deters potential infringement. Once a trademark has been registered for five years‚ it may become incontestable. Once a trademark is incontestable‚ another party is unable to claim that the trademark was improperly registered.
To register a trademark‚ the user must file a trademark application with the USPTO. If a trademark is both distinctive and has been used in commerce in connection with goods and services‚ it may qualify for registration.
A trademark can be either inherently distinctive or otherwise acquire distinctiveness. Distinctiveness refers to the level of creativity or originality employed to create the trademark. A distinctive trademark is one that primarily identifies the source of the goods or services rather than simply describes the product. A trademark that is generic or descriptive is not inherently distinctive. Descriptive trademarks must acquire distinctiveness through use in commerce. If such a trademark has become associated with the particular business or source of goods rather than the type of product offered‚ it has acquired distinctiveness. On the other hand‚ trademarks that are not simply descriptive‚ but are arbitrary‚ fanciful‚ or suggestive are inherently distinctive and do not require a showing of acquired distinctiveness for registration.
A trademark must also be used in commerce to be eligible for registration. This requires users to continuously offer goods and services bearing the trademark in interstate commerce in the United States. However‚ if you have not yet used a trademark in commerce‚ you may still reserve the trademark by filing an intent to use application. An intent to use application requires a bona fide intent to use the trademark in commerce and can help to establish priority over the trademark. Once the trademark is continuously used in commerce‚ the trademark becomes eligible for registration.
California Trademark Infringement Lawyer
Trademark infringement occurs when someone other than the trademark holder uses an identical or confusingly similar trademark in commerce. If use of that confusingly similar trademark is likely to lead to customer confusion as to the source of the goods or services‚ the defendant will be held liable for trademark infringement. Trademark infringement is covered under the Lanham Act and federal courts have subject matter jurisdiction over trademark infringement actions.
Trademark infringement may lead to trademark litigation. However‚ in many cases‚ demanding that the infringing party cease and desist use of the infringing trademark may be sufficient. It is important to combat trademark infringement as it arises to ensure that your trademarks are continuously protected. Inaction or “sleeping” on your trademark rights can lead to a loss of trademark protection.
Trademark Litigation in California
Trademark litigation can come in a variety of forms. Federal trademark infringement actions are common remedies for trademark infringement. In a trademark infringement action‚ the plaintiff claims that defendant has used a confusingly similar trademark and has created a likelihood of customer confusion. The federal court will examine the strength of plaintiff’s trademark‚ the similarities between plaintiff’s and defendant’s trademarks‚ and whether the plaintiff has established priority over the trademark. Common remedies include damages‚ an injunction‚ or attorney’s fees.
Other than trademark infringement actions‚ a party may oppose the registration of a trademark by the USPTO or file a petition to cancel a trademark that was wrongfully registered.
A Trademark Opposition action occurs when a trademark applicant attempts to register a trademark with the USPTO and another party formally opposes the registration. Often times‚ the opposing party alleges that they have priority over the mark or that the mark is not distinctive. The Opposition proceeding is heard by the Trademark Trial and Appeal Board also known as the TTAB. Decisions of the TTAB may be appealed to the United States Court of Appeals for the Federal Circuit‚ an appellate court with special jurisdiction over trademark and patent cases.
A Petition to Cancel involves a currently registered trademark. The petitioning party will file a petition to cancel registration with the TTAB alleging that the trademark was not properly registered. Often‚ the petitioning party claims that the trademark was not distinctive or that the registrant did not have priority over the trademark.
If you have been sued for trademark infringement‚ it is important that you contact an attorney immediately. The Federal Rules of Civil Procedure require you to file an answer within 21 days of receiving the complaint.
Contact California Trademark Attorneys
If you have a trademark infringement issue in California, our experienced trademark attorneys can help ensure that your rights are protected. To speak with an experienced trademark attorney‚ please contact us.