Trademark

Trademarks are words, phrases, designs or symbols (or a combination thereof) that are used to identify and distinguish one source of goods from another. Trademarks make it easier for consumers to quickly identify who has produced a given product. In order to qualify for trademark protection, a word, phrase, design or symbol not only must be used in commerce by the person/entity to identify goods, but also must be distinctive. Exclusive trademark rights are granted to the first person/entity to use it in commerce, which typically means that a product has been sold with the trademark affixed to it. Distinctiveness encompasses four classes of marks with varying requirements and degrees of protection: arbitrary/fanciful marks, suggestive marks, descriptive marks, and generic marks.

In some cases, trademark protection extends to trade dress aspects, such as unique shapes or colors. Trade dress protection is limited, however, to those features that consumers will associate solely with the specific manufacturer/entity and not the product in general. Trade dressprotection generally is not available for features that provide a functional competitive advantage. Where a given mark qualifies for protection, trademark rights typically are obtained by being the first person/entity to use the trademark in commerce or by registering the mark with the U.S. Patent and Trademark Office.

The first person/entity to sell a product to the public with the trademark attached to it usually will have priority to use the trademark in the geographic area in which the sales took place, as well as in geographic areas in which the business would be expected to expand.

Registering a trademark with the U.S. Patent and Trademark Office with the bona fide intention of using it in commerce also allows a person/entity to acquire priority in that trademark. Registration provides a legal presumption of ownership of the mark and priority to use registered trademark around the country; however, the registered trademark cannot be used in those limited geographic areas in which the trademark previously has been used in commerce by others.

Because trademark rights can be lost, it is imperative that trademark owners vigilantly protect their rights. Among others, trademarks can be lost through abandonment (i.e., failure to use three consecutive years with no intent to resume use) or through improper licensing or assignment(s). Working alongside our co-counsel, the Law Offices of Craig Hubble helps our clients safeguard their goodwill and brand recognition by obtaining trademark protection, by protecting their established trademarks and trade dress rights via infringement actions and by defending unwarranted claims of trademark infringement pursued against them. Although based in Los Angeles, we are skilled in prosecuting and defending trademark infringement actions throughout the federal district courts in California.

Whether you seek to establish trademark rights in your distinctive words, phrases, designs or symbols, you need to protect your established trademarks, or you are the target of a trademark infringement claim, contact us today for a free consultation as to your potential rights, remedies and defenses.