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California Trademark Questions & Answers
2 Answers | Asked in Trademark for California on
Q: We want to see how we can change from supplemental to principal on our trademark.
Michael Gerity
Michael Gerity
answered on Sep 18, 2017

Hello. Assuming that you are talking about federal registrations, unfortunately, there is no way to convert your mark from one to the other. Instead, a new application has to be filed for the mark on the principal register. You will need to make sure that whatever objection got you moved to the... View More

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1 Answer | Asked in Trademark for California on
Q: I would like to create a design studio called "Happiness Factory", but Coca-Cola once made an ad with the same title.

Purposes would be very different. They are such a huge company and i fear risking potential misuse of their trademarks.

Robert P. Cogan
Robert P. Cogan
answered on Sep 17, 2017

How much money are you investing in the studio? How much money would it cost to defend if Coca Cola started a dispute? How much more would it cost if they actually sued you? How many business days would be totally lost if you had to participate in the dispute? How much money will you save if you... View More

2 Answers | Asked in Trademark and Intellectual Property for California on
Q: How do I protect an idea for a musical (play) while I am develop the script and have other's collaborating?

I want to make sure that as I build my team, my idea is protected and not stolen.

Robert P. Cogan
Robert P. Cogan
answered on Aug 30, 2017

This is a copyright and trade secret question. A trademark is a brand name.

Copyrights generally do not protect ideas. The protection is for particular forms of expression. There is a doctrine called "scenes a faire." These are general situations that are not unique in life....
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3 Answers | Asked in Copyright, Intellectual Property and Trademark for California on
Q: What is the best online service to use to trademark my company logo, slogan/process Is it risky for me to do it myself?
Robert P. Cogan
Robert P. Cogan
answered on Aug 21, 2017

I do not know if there is a best online service. It depends on your objective. If you want "cheap", you will find it. If you go to an attorney, you can get advice on strategy for best protecting your market An attorney can help make a selection for protecting combined word and design... View More

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1 Answer | Asked in Copyright and Trademark for California on
Q: I want to print and sell t-shirts with just a simple 8 number print, trademarkable?

If possible, my concern is for the last 3 digits. I want them to be interchangeable, but can't obviously buy all variations any 3 digits/numbers. Could I trademark the first 5, which will be consistent, not changing, and secure the ever-changing last 3 with one trademark? The reason I ask... View More

Robert P. Cogan
Robert P. Cogan
answered on Aug 19, 2017

A trademark functions to identify the source of the goods. It is a brand name. A design of a t-shirt might not be a band name. The Trademark Manual of Examining Procedure states, "Subject matter that is merely a decorative feature does not identify and distinguish the applicant’s goods and,... View More

1 Answer | Asked in Copyright, Intellectual Property and Trademark for California on
Q: How do I file a trademark for a phrase? Is there a cheaper temporary alternative before I do the big trademark?
Andrew Zulieve
Andrew Zulieve
answered on Aug 19, 2017

In the U.S., one acquires the underlying right to a particular trademark by actually using it in commerce on or in connection with the goods or services being sold under that mark. Neither federal nor state registration creates that senior right. So, assuming that you have had an experienced... View More

1 Answer | Asked in Copyright, Intellectual Property and Trademark for California on
Q: How do I research a phrase for trademark? How can I trademark a phrase?
Robert P. Cogan
Robert P. Cogan
answered on Aug 18, 2017

Trademarks are symbols or text that uniquely associated with the source of the goods or services. This is generally referred to as a brand name. If it is just a clever saying, it is not a trademark. A phrase can be a trademark, e.g., "I can't believe it's not butter," because it... View More

1 Answer | Asked in Trademark for California on
Q: Doing an Intent to Use Service Trademark. Must I send specimen for each class (41) description used?

I'm using International class 41 (for a service mark) --- I'm singer and perform live...I also act...and intend to do an online podcast about music in the future. Even though it's all under international class (41) Will listing too many descriptions under that class draw a flag... View More

Robert P. Cogan
Robert P. Cogan
answered on Aug 18, 2017

The examples of singing or a podcast do not seem to service mark specimens. Service marks are generally brand names used in promoting a service. The specimen should demonstrate this promotion. You can see tutorial material at www.uspto.gov. Here, there may be great difficulty in pursuing a service... View More

1 Answer | Asked in Trademark for California on
Q: Can we use "Good To Great Photos" for a photo editor or will this conflict with the "Good to Great" book trademark?

For an online photo editing service, can we use "Good To Great Photos" or will this be breaking copyrights or trademark of the Good To Great Book written by Jim Collins?

Robert P. Cogan
Robert P. Cogan
answered on Aug 14, 2017

More facts are needed to address the question. These include how each party is using the words. The basic standard is whether or not use of your trademark will cause a likelihood of confusion in the marketplace as to the source of the goods or services. The question assumes that "Good To... View More

2 Answers | Asked in Trademark for California on
Q: Hi...I am doing an intent to use trademark application. Are those two separate fee?

Will I be paying one fee for the band's name and another because I upload a logo? Or will it just be one fee because...the band name is in the logo which automatically trademark's the band's name as well?

Thank you

Robert P. Cogan
Robert P. Cogan
answered on Aug 11, 2017

Trademark registration applications require applicants to select whether or not they want to register the name apart from the logo. You would probably need to ask an attorney what difference the selection makes. See tutorial material at www.uspto.gov.

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1 Answer | Asked in Business Formation, Business Law and Trademark for California on
Q: Can I dissolve my LLC Partnership but keep my business name?

I had a DBA name as a sole proprietor for a few years, then reorganized to a CA LLC (partnership) with my husband. We trademarked the business name and one of its products while being an LLC.

We are divorcing and I am moving to another state. We want the business to go back to me as a... View More

Robert P. Cogan
Robert P. Cogan
answered on Aug 9, 2017

Trademarks are "good" if they are uniquely associated with the source of goods and services. The trademark should be owned by the entity that is using it. Trademarks and LLCs are forms of property. A divorce property settlement can determine who will own different pieces of property. An... View More

1 Answer | Asked in Trademark for California on
Q: I need to oppose an trademarks application. How do you do that?
Robert P. Cogan
Robert P. Cogan
answered on Aug 7, 2017

This is generally not done without an attorney. However, there is a good deal of tutorial information at www.uspto.gov.

See disclaimer at the bottom of this page.

1 Answer | Asked in Trademark for California on
Q: Am I able to file a trademark if another exists with the same name, but we're doing different services?
Robert P. Cogan
Robert P. Cogan
answered on Aug 4, 2017

It depends on how different the services are. The standard is whether there will be a likelihood of confusion in the market place as to the source of the services. Even if the services are different, they could be sufficiently related to cause a likelihood of confusion. Do the two services have... View More

1 Answer | Asked in Trademark for California on
Q: Should I bother getting a trademark for a device that does not work, and is totally for fun, like the pet rock was?

This is a product that has no practical value, but presents itself as "serious." It is a spoof only. But still, should I be concerned about copycats, and persons trying to steal the idea and name? Thanks.

Robert P. Cogan
Robert P. Cogan
answered on Aug 1, 2017

A trademark can protect a brand name but not ideas. It a product will be sold, protection should be considered. If the product will not be sold, then some consideration should be given as to why to bother to protect it.

See disclaimer at the bottom of the page.

1 Answer | Asked in Trademark for California on
Q: TM #3,461,149 Ar-15 bolt face logo How different does a design of a common shape need to be to not infringe?

The owners of tm 3,461,149 seem to be claiming any and all representation of the bolt face of the most popular rifle in the US infringes on their graphic logo. That is not my understanding of trademark law. What say you?

Ali Shahrestani,
Ali Shahrestani,
answered on Jul 25, 2017

A challenge to a description of a trademark can be based on vagueness or over-breadth, and a competing design should also seek to differentiate itself in a qualitative and/or quantitative manner, where applicable. More details are necessary to provide a professional analysis of your issue. The best... View More

2 Answers | Asked in Contracts, Copyright, Intellectual Property and Trademark for California on
Q: Can I show screenshots of mobile apps I'm creating for a company I currently work for on LinkedIn?
Ali Shahrestani,
Ali Shahrestani,
answered on Jul 25, 2017

You might be violating IP laws, NDAs, and employment contracts, if you do. More details are necessary to provide a professional analysis of your issue. The best first step is an Initial Consultation with an Attorney such as myself. You can read more about me, my credentials, awards, honors,... View More

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1 Answer | Asked in Copyright and Trademark for California on
Q: Would I need permissions to design/sell alternate book covers for established books, using their title and author name?
Ali Shahrestani,
Ali Shahrestani,
answered on Jul 25, 2017

That sounds like IP infringement. More details are necessary to provide a professional analysis of your issue. The best first step is an Initial Consultation with an Attorney such as myself. You can read more about me, my credentials, awards, honors, testimonials, and media appearances/... View More

2 Answers | Asked in Copyright, Business Formation and Trademark for California on
Q: Can I use the business name Surf Check Driving School if there is another named Surf's Up Driving School?

I am located in Santa Cruz county and Surf's Up Driving school is located in San Luis Obispo county, both in California.

Ali Shahrestani,
Ali Shahrestani,
answered on Jul 14, 2017

They sound sufficiently different, but speak with a lawyer such as myself re: any possible IP infringement, business overlap, and related issues. More details are necessary to provide a professional analysis of your issue. The best first step is an Initial Consultation with an Attorney such as... View More

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3 Answers | Asked in Trademark for California on
Q: I'm a singer I want to apply for a trademark. I put upcoming local gigs on website is that interstate commerce?

Does the performance have to be out of state for it to be interstate commerce?

Mark A. Baker
Mark A. Baker
answered on Jul 11, 2017

Among other things, in order for a 'mark' to be trademark-able (or service mark-able), it must be in current use in interstate commerce. Anything on your website that promotes your 'mark' - whether or not your performances are in another state - is being used in interstate... View More

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1 Answer | Asked in Trademark for California on
Q: a company in California is infringing my trademark for the same IC. They run their biz very well. what should I do?

I run a small business so should I sell them my trademark or sue them? They are pretty big with 20 people and a lot of social media coverage. honestly I do not run my brand that well so I am hoping to see what best option I can have. A split in selling off the trademark is also good to me. My... View More

Ali Shahrestani,
Ali Shahrestani,
answered on Jul 10, 2017

It depends on whether they are actually infringing or not. That should be evaluated prior to discussion potential resolutions. More details are necessary to provide a professional analysis of your issue. The best first step is an Initial Consultation with an Attorney such as myself. You can read... View More

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