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A TRADEMARK is either a word, phrase, symbol or design, or combination of words, phrases, symbols or designs, which identifies and distinguishes the source of the goods or services of one party from those of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. Normally, a mark for goods appears on the product or on its packaging, while a service mark appears in advertising for the services, but the rules for trademarks generally apply to service marks as well. A trademark is different from a copyright or a patent. A copyright protects an original artistic or literary work; a patent protects an invention. Trademark rights arise from either (1) actual use of the mark, or (2) the filing of a proper application to register a mark in the Patent and Trademark Office (PTO) stating that the applicant has a bona fide intention to use the mark in commerce regulated by the U.S. Congress. Federal registration is not required to establish rights in a mark, nor is it required to begin use of a mark. However, federal registration can secure benefits beyond the rights acquired by merely using a mark. For example, the owner of a federal registration is presumed to be the owner of the mark for the goods and services specified in the registration, and to be entitled to use the mark nationwide. There are two related but distinct types of rights in a mark: the right to register and the right to use. Generally, the first party who either uses a mark in commerce or files an application in the PTO has the ultimate right to register that mark. The PTO's authority is limited to determining the right to register. The right to use a mark can be more complicated to determine. This is particularly true when two parties have begun use of the same or similar marks without knowledge of one another and neither has a federal registration. Only a court can render a decision about the right to use, such as issuing an injunction or awarding damages for infringement. It should be noted that a federal registration can provide significant advantages to a party involved in a court proceeding. Unlike copyrights or patents, trademark rights can last indefinitely if the owner continues to use the mark to identify its goods or services. The term of a federal trademark registration is 10 years, with 10-year renewal terms. Unlike Copyrights and Patents, which are now exclusively governed by federal law, trademarks may also be registered in each of the states. A trademark application for federal registration may be obtained in three principal ways. (1) An applicant who has already commenced using a mark in commerce may file based on that use (a "use" application). (2) An applicant who has not yet used the mark may apply based on a bona fide intention to use the mark in commerce (an "intent-to-use" application). For the purpose of obtaining federal registration, commerce means all commerce which may lawfully be regulated by the U.S. Congress, for example, interstate commerce or commerce between the U.S. and another country. The use in commerce must be a bona fide use in the ordinary course of trade, and not made merely to reserve a right in a mark. Use of a mark in promotion or advertising before the product or service is actually provided under the mark on a normal commercial scale does not qualify as use in commerce. Use of a mark in purely local commerce within a state does not qualify as "use in commerce." While a search of marks already in use is not required, it provides several advantages. Obviously of it will save the cost of filing for registration of a mark that is already registered or in use by another. It will also give the applicant an opportunity to choose a mark that is not likely to provoke another user into instituting legal action against him. Perhaps most importantly though it will prevent the expenditure of large amounts of time and money in promoting a mark that ultimately cannot be protected. Legitimate trademark right are sometimes used by unscrupulous firms and lawyers to gain competitive advantage. If you receive a cease and desist demand, consult a lawyer. Exemplar Cases In re Circuit Breaker Litigation, 852 F.Supp. 883 (C.D.Cal. May 17, 1994) (NO. CV 88-03012 RG (GX), 88-6025 RG (GX), 88-6739 RG (GX), 88-6741 RG (GX), 88-6744 RG (GX)) Westinghouse Elec. Corp. v. General Circuit Breaker & Elec. Supply Inc., 106 F.3d 894, 65 USLW 2600, 41 U.S.P.Q.2d 1741, 97 Cal. Daily Op. Serv. 931, 97 Daily Journal D.A.R. 1391 (9th Cir.(Cal.) Feb 10, 1997) (NO. 94-56436, 94-56769, 94-56709, 94-56771, 94-56765), Westinghouse Elec. Corp. v. General Circuit Breaker & Elec. Supply, Inc., 522 U.S. 857, 118 S.Ct. 155, 139 L.Ed.2d 101, 66 USLW 3085, 66 USLW 3251, 66 USLW 3258 (U.S. Oct 06, 1997) In re Circuit Breaker Litigation, 860 F.Supp. 1453, 32 U.S.P.Q.2d 1352 (C.D.Cal. Aug 22, 1994) (NO. CV 88-03012 RG(GX)) eMachines, Inc. v. Ready Access Memory, Inc. 2001 WL 456404 (C.D.Cal.))
Experienced Trademark Litigation Attorney
562-491-1400
Emling Forensis PC
100 Oceangate Boulevard • Suite 1200
Long Beach CA 90802-4312
Fax: 562-491-3400 Emling Forensis, PC serves clients in Long Beach, Torrance, Westwood, Santa Monica, Beverly Hills, West Hollywood, Westminster, Anaheim, Irvine, San Diego, San Bernardino, Riverside, Pasadena, Los Angeles, LA County, Orange County,
and other areas of Southern California
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