Los Angeles Trademark Lawyer
We serve businesses and individuals in Los Angeles with trademark needs from our office in Santa Monica. We are a full service intellectual property law firm, so we can assist with any trademark issues, copyright issues, or patent issues that you may have. If you need a Los Angeles trademark lawyer, please contact us.
Trademark Registration for Los Angeles Businesses
A trademark is typically an identifiable word, logo, design, or combination thereof that allows consumers to identify the source of goods or services. Having a trademark is fundamental to developing your brand. When an organization or individual establishes trademark rights, they are the exclusive owner of the trademark and can take legal steps to prevent others from using a similar trademark that may confuse customers.
Choose a Trademark
The first step in acquiring trademark rights is choosing a trademark. In selecting a trademark, you should select a name that is as unique as possible. This will limit the chances of later running into trademark infringement issues. You want to be able to protect your own business while also not exposing yourself to liability by using an existing business’ trademarked name. Also, if you submit a trademark application to the U.S. Patent and Trademark Office and it determines that your name or logo is too similar to an existing trademark, it will reject your application.
The U.S. Patent and Trademark Office may also reject your application if the name presented is generic or too descriptive of the product or service you are offering. In other words, the trademark office will reject a trademark application for “Furniture Store” for use in relation to the sale of furniture.
Conduct a Trademark Search
A trademark search may be the most important step in acquiring trademark rights. Proper research prior to filing a trademark application can save you potentially years of headaches with trademark infringement issues down the road.
We highly advise that an experienced trademark attorney perform the trademark search which should include searching for alternate spellings, names that sound similar, and words or phrases with a similar commercial impression.
File Your Trademark Application
After doing your due diligence, the trademark application should be filed as soon as possible. Your trademark application will include all of the basic details including the owner name, the trademark and the goods or services at issue.
If a problem arises, you will have the opportunity to address it with the examining trademark attorney. If your application is approved, the soonest it will register is usually about eight months after filing. As soon as your trademark is registered, you should begin using the registered ® symbol on your packaging, website, social media channels, and other locations where the product or service is offered.
Benefits of Registering Your Trademark
The registration of a trademark with the U.S. Patent and Trademark Office is the most effective method to protect your trademark. This process can provide you with the following benefits:
- Presumptive rights throughout the entire country even if your use is more limited.
- You can use the ® symbol, which discourages other businesses that may try to take advantage of the good reputation of your company by attempting to use your trademark.
- Other businesses are put on notice that you have trademark rights when doing trademark searches and the U.S. Patent and Trademark Office may block similar trademark applications.
- There is a presumption of ownership and validity in potential litigation.
- Other companies may help protect your trademark. For example, Google may block ads that infringe on a registered trademark, Apple may deny apps with a name similar to an existing app in its store, and Amazon may block similar products.
- Trademarks can be an important investment. You can later sell or license your trademark or use it to attract investors.
- You can use trademark registration in the United States to form a basis for a foreign trademark in another country.
Remember to Renew Your Trademark
After your trademark registers, you will need to renew it at the following intervals:
- The 5th anniversary of the date of registration
- Every 10th anniversary of the date of registration
International Trademark Protection
If you are using your trademark in other countries, or plan to do so, you should file internationally to protect your trademark in those countries as well. We are able to quickly file international trademark applications using the Madrid Protocol.
Trademark Infringement Lawyers in Los Angeles
When considering if trademark infringement has occurred, the key question under U.S. trademark law is whether an ordinary consumer is likely to be confused between the trademarks in question. If the junior trademark is confusingly similar, the senior trademark owner can ask the subsequent user to stop using it.
The likelihood of confusion determination is made based on several factors, including:
- The strength of the trademark
- The similarity between the goods and services
- The similarity of the trademarks
- Evidence of actual confusion
- The similarity between the marketing channels the businesses use
- The degree of care exercised by the ordinary purchaser
- The defendant’s intent in choosing the trademark; and
- The likelihood of expansion in the product lines.
These 8 factors where outlined in the famous Ninth Circuit case of AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir.1979).
Overview of the Trademark Infringement Process
Trademark infringement generally describes the process of discovering an infringement and notifying the infringer to stop. The trademark infringement process often involves the following steps:
Trademark Infringement is Discovered
In order to effectively protect your trademark, you need to actively monitor it. This requires monitoring existing trademarks and proposed ones. Trademark lawyers can assist with this process by setting up a trademark watch which notifies you of trademarks that are filed that are similar to yours. You should also set up a google alert so you are notified of online infringements.
If you discover that your registered trademark has been violated, you may choose to take action to stop it from happening.
The Cease and Desist Letter
A trademark cease and desist letter is a formal request for someone to stop doing something that the sender believes violates their legal rights. A trademark attorney will use one of these letters to outline how the defendant is infringing on the trademark and will formally request that it stops. This letter may also state the intention to pursue legal action if the infringement continues.
Responding to a Cease and Desist Letter
A business may respond to a cease and desist letter by removing the trademark from its website, products, or marketing materials. Alternatively, if there is some question as to whether a trademark infringement exists, the alleged infringer may have a trademark attorney respond by stating that no infringement exists.
Companies must be vigilant about using their trademarks and actively monitoring for any unpermitted use. Trademark protection can be lost if the owner does not enforce its rights. Trademark lawyers are often able to work out a resolution. However, if the infringement does not stop, trademark litigation may ensue.
Trademark Litigation Attorneys in Los Angeles
Trademark litigation is the legal process of enforcing your trademark rights. It may involve filing a trademark infringement lawsuit against a person or company that is using your trademark without your permission.
Overview of the Trademark Litigation Process
The trademark litigation process often involves the following steps:
- Plaintiff files a complaint
- The Defendant responds to the complaint
- The parties conduct discovery
- The case is resolved or proceeds to trial
Plaintiff Files a Complaint
If the business does not stop its infringing activity, a trademark owner may decide to file a trademark infringement lawsuit. The first action of the litigation process is filing a complaint against the infringer. This complaint sets out the legal and factual basis regarding the claim, including a statement alleging ownership of the trademark at issue and how the defendant is infringing on the trademark.
The complaint may ask the court to impose an injunction that temporarily stops the defendant from using the trademark. It may also request a certain amount of compensation due to the infringement and may request the payment of attorney’s fees and legal costs associated with the case.
The Defendant Responds to the Complaint
The defendant must be served with the complaint in accordance with law. If properly served, the defendant has 21 days to file a response if the case is filed in federal court. This may include an answer in which the defendant responds to each of the allegations, either admitting or denying the claims.
Alternatively, the defendant can file a motion to dismiss in which they ask the court to dismiss the complaint against them. The defendant may make this request if it believes that there is no factual or legal basis for the claim. If successful, this motion can end the entire case.
The Parties Conduct Discovery
During the discovery process, both parties can try to strengthen their case while learning about the other side’s case. This is done by issuing interrogatories, document requests, requests for admission and by serving notices of deposition. Some evidence that may be requested and exchanged during this process includes the following:
- Financial Records – Your trademark attorney is likely to ask for financial records that show how much profit the infringing party received related to the infringement.
- Documents – Opposing counsel may request a copy of your historical documents such as evidence showing whether or not you were actively using your trademark.
- Witness Observations – The trademark attorneys may request the names and contact information for any potential witnesses and expert witnesses. They may also subpoena third party witnesses.
The Case Is Resolved or Proceeds to Trial
After the discovery process, the parties may have a better sense of where they are in the litigation process, as well as the strengths and weaknesses of both sides of the case.
The parties may attempt to resolve the case before trial through one or more of the following methods:
- Motion for Summary Judgment – A motion for summary judgment states that there is no genuine issue of material fact between the parties and asks the court to render a decision based on the evidence produced during the discovery process, or the lack thereof.
- Negotiations – At any point during the case the parties may be able to reach a settlement for a certain amount of money, may enter into a licensing agreement, or may reach some other type of resolution. If this occurs, the parties will ask the court to dismiss the case.
If the parties do not resolve their case, they proceed to trial.
At trial, the plaintiff will have the burden of showing that it owned the trademark at issue and that the defendant infringed on the trademark by causing consumer confusion. The plaintiff must also prove its damages from the infringement. To prove these elements, the plaintiff will present evidence and have witnesses testify. Opposing counsel will then present their own evidence and witnesses, and both sides will cross-examine the other side’s witnesses.
After the trial, the judge or jury will determine whether infringement occurred and if so the amount of damages that the defendant must pay.
In a trademark lawsuit, a Plaintiff may be entitled to the following types of damages:
- An injunction
- The costs of litigation
- Actual damages
- The profits the infringing party received
- Treble damages
- Attorney’s fees
Defending Against Trademark Litigation
If you receive notice that your company is potentially infringing upon a trademark, it is important to understand possible defenses that you may have in trademark litigation. Additionally, a plaintiff must know what defenses the other party may raise. Some common defenses in trademark infringement cases include the following.
A declaratory judgment action seeks to have a court make a judgment that you have done nothing wrong or that the trademark is not valid.
This type of action is normally filed in the defendant’s home jurisdiction and may be filed preemptively to beat a plaintiff to court. Receiving this form of relief may keep the plaintiff from moving forward with litigation in an inconvenient location for the defendant – such as in another state.
Non-infringement asserts that you did not actually infringe on the trademark. This is a common defense to trademark infringement cases and usually alleges that either the trademarks at issue are not confusingly similar or that the goods or services at issue are sufficiently different such that consumer confusion is not likely. Infringement can only occur if the trademark and the goods or services at issue are all similar or related.
Laches is a legal term that means that the plaintiff took too long to bring a claim, so the court should not enforce any action against the defendant. This defense may arise if the defendant would be prejudiced or harmed in some way by the plaintiff’s delay in enforcing its rights.
The plaintiff may have accidentally lost trademark rights either by not counting use or by allowing others to use the trademark without permission or quality control. A trademark lawyer can conduct discovery to determine if the trademark was properly used and was still in use at the time of the alleged infringement.
This legal defense is asserted when the plaintiff has acted in such a way that it should not be awarded the desired result. With this defense, the defendant argues that the plaintiff is not entitled to obtain relief because the plaintiff is acting unethically or in bad faith.
Fair use is another common defense raised in trademark infringement cases. This defense may apply if the alleged infringer used a trademark for a valid purpose and not in a way that confused consumers.
The Trademark Trial and Appeal Board (the TTAB)
Trademark disputes can also arise in the Trademark Trial and Appeal. All U.S. trademark applications are published for opposition which opens a 30 day window for trademark opposition. At any time a trademark registration can be attacked with a trademark cancellation.
Mandour & Associates – Los Angeles Trademark Attorneys
We assist our clients in every step of the trademark process, from evaluating whether a trademark qualifies for protection to conducting trademark searches to handling trademark infringements and litigation. In the event of litigation, we aggressively pursue our client’s rights.
If you or your business have a trademark issue and need assistance, please contact us.