California Trademark Questions & Answers

Q: How exact does the wording in a word mark trademark have to be for infringement in the same class? Synonyms?

2 Answers | Asked in Trademark for California on
Answered on Mar 21, 2019
Ahaji Kirk Amos' answer
Trademark infringement occurs when a consumer is likely to be confused as to the origin of a product such that they assume the product comes from the trademark owner. The standard is a likelihood of confusion. The trademark owner would have a pretty good chance of blocking any synonymous phrases based on the likelihood to confuse standard. I wouldn't do it.

Q: can I use companies trademarked logos on another brand listing that makes money?

2 Answers | Asked in Business Formation, Business Law, Copyright and Trademark for California on
Answered on Feb 18, 2019
Thomas A. Grossman's answer
Only if you want to risk being sued by the other companies for Trademark Infringement.

Q: Can a trademark name be the same but registered in different classes by another company using the same exact trademark?

1 Answer | Asked in Intellectual Property and Trademark for California on
Answered on Jan 25, 2019
John Martin Hilla's answer
Yes. The issue is whether consumers will be likely to be confused by the same name. If they are totally different products sold in totally different geographic regions in totally different channels of trade, there could be no likelihood of confusion, and the separate trademarks might be so registered.

However, this is a very fact-specific consideration, and, if you are planning on using a brand that has already been trademarked, you should consult a trademark attorney to discuss your...

Q: Is is possible to get a trademark without an attorney?

1 Answer | Asked in Trademark for California on
Answered on Jan 21, 2019
John Martin Hilla's answer
It's possible, sure, and the USPTO has a lot of information on its website designed to inform applicants to the process required to do so.

However, as with anything, you always run the risk of getting what you pay for. Everything is easy until it doesn't go well. With a trademark, this means opposition from another registrant, an Office Action from the USPTO examiner assigned to your file, cancellation post-registration because you failed to properly maintain your mark, and a host of...

Q: i need help to protect my trademark Lanai beachwear

1 Answer | Asked in Trademark for California on
Answered on Jan 19, 2019
John Martin Hilla's answer
Contact a trademark attorney to discuss your matter and your needs. Trademark is a Federal practice area, and any attorney barred in any state or the District of Columbia may assist you.

Q: Hello I need to revive my trademark it was a pure oversight I apologize.

1 Answer | Asked in Trademark for California on
Answered on Jan 9, 2019
Jason Brooks' answer
No need to apologize, you posted to a legal question and answer forum, not a law firm, a lawyer in particular, or anyone who is even in charge of overseeing your trademark.

Depending on the circumstances of the abandonment, and the specific “oversight” you’ve mentioned, it may be possible to revive an abandoned application or registration, I suggest securing the services of an IP attorney to assist you. If you email, I’d be happy to look into the matter:...

Q: Want to get the rights to use music from an old TV show in a short film I am making. I believe it's owned by CBS.

1 Answer | Asked in Copyright, Entertainment / Sports, Intellectual Property and Trademark for California on
Answered on Jan 2, 2019
Ali Shahrestani, Esq.'s answer
To use copyrighted material, one would need to find out who owns the copyright and contact them for a license. But you'd also need to determine whether your use qualifies as "fair use". 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/ publications on my law practice website, www.AliEsq.com. I...

Q: how much will it cost me to get a logo trademarked?

1 Answer | Asked in Trademark for California on
Answered on Dec 28, 2018
John Martin Hilla's answer
This will be a question with variable answers depending on which attorney you consult. Fees will vary from attorney to attorney and also depending on what service level you request.

An attorney may charge separately from the actual application preparation, filing, and monitoring for an initial, thorough search of the US Patent & Trademark Office (USPTO) database for current and prior Federal registrations, but also state registrations, internet usages, social media sites, and internet...

Q: I have a design with the word "Fortnite" inside the design but its not the logo of "fortnite". Is this infringement?

1 Answer | Asked in Intellectual Property and Trademark for California on
Answered on Nov 30, 2018
Griffin Klema's answer
Maybe. It depends on whether your goods or services are in the same class as an existing trademark registration, and whether using the mark is or will cause consumer confusion. Even if not registered, common law infringement may also be a problem. I suggest speaking to a trademark lawyer and seek a freedom to operate opinion. Good luck!

Q: How to apply a trademark for AirTrackMats.com?

1 Answer | Asked in Intellectual Property, Trademark and Internet Law for California on
Answered on Sep 1, 2018
Peter D. Mlynek's answer
If you own the domain name, you would apply for it just like any other trademark. You can either do it yourself, or get an intellectual property lawyer to do it for you.

If you do not own the domain name, then it is going to be a bit harder, and you need to talk to a trademark attorney.

Q: Does it violate the copyright if I sell my own solution in an ecommerce platform? The Unofficial title is on the cover

1 Answer | Asked in Copyright, Intellectual Property and Trademark for California on
Answered on Aug 30, 2018
Peter D. Mlynek's answer
If you see somebody launch an e-commerce service, and you say, hey, that's a great idea, I'll think that I'll launch a competing e-commerce, then you are correct to worry about intellectual property.

If you write a code that solves a technical problem in a different way, and the interface is not similar then there likely won't be problems with copyrights. If it solves it in a sufficiently different way, then there should not be a problem with patents either. And if you won't refer to...

Q: Clothing brand, class 025: (example name!) if " GREEN APPLE" is trademarked, could I trademark "GreenApple World"?

1 Answer | Asked in Intellectual Property and Trademark for California on
Answered on Aug 18, 2018
Peter D. Mlynek's answer
Yes, you may be able to fight the registration if you were using your name before they did.

You should talk to a trademark attorney on what steps you need to take to preserve your rights, and possibly invalidate the other person's trademark registration.

Q: Is it ok to trademark the name of my greeting card company with the words greeting card in it.

1 Answer | Asked in Intellectual Property and Trademark for California on
Answered on Aug 17, 2018
Benton R Patterson III's answer
An attorney would need to review the trademark and how you use it in commerce to answer this question. Generally speaking, you cannot register words that are descriptive of the goods or services. If descriptive words are paired with other distinctive words, you may be able to register the mark as a whole, but disclaim the descriptive words. Using your example, you could include "greeting card" within a trademark with other distinctive elements, but you could not exclude other greeting card...

Q: When trademarking a brand name, can a colon or hyphen be incorporated within the name?

1 Answer | Asked in Trademark and Intellectual Property for California on
Answered on Aug 2, 2018
Benton R Patterson III's answer
Yes, special characters can be incorporated into a trademark.

Q: What kind of rights would I need so nobody can duplicate my idea or what I’m want to do.

1 Answer | Asked in Patents (Intellectual Property) and Trademark for California on
Answered on Jul 19, 2018
Peter D. Mlynek's answer
This is going to be a bit tricky since you are in California. The reason is that California has a law about the Right of Publicity (Calif. Civil Code 3344), which prevents a person from appropriating for his/her own advantage another person's name or likeness. This is somewhat unique to California, due to the strong movie and entertainment industry presence in the state.

You will need a California lawyer to help you with this.

Q: What next if specimens for Declaration 8 & 9 are deficient and 10 years are up?

1 Answer | Asked in Trademark for California on
Answered on Jul 11, 2018
Benton R Patterson III's answer
You can submit a new application after your current registration is cancelled. Although, if the USPTO rejected your specimens for the renewal, it will also reject them for the new application. I recommend working with a trademark attorney to ensure you have acceptable specimens.

Q: If I register a trademark and that name is already used in a domain (but not trademarked yet) can I get that domain?

1 Answer | Asked in Copyright, Intellectual Property, Trademark and Internet Law for California on
Answered on Jul 5, 2018
Camille Brooks Ibrahim's answer
It depends if the party in whom has a domain for it has trademarked a name similar or the exact same.

Q: In regards to food, can I use a branded product as a main ingredient for a recipe?

1 Answer | Asked in Business Law, Intellectual Property and Trademark for California on
Answered on Jun 28, 2018
Thomas A. Grossman's answer
I think you can use any product you buy as an ingredient in a food product, especially if it is your own recipe. As to calling the final product the same name, you me get yourself in trouble there, as the name may be trademarked.

Q: If I apply for a cancelled trademark, what rights does that give me to the original concept to which it applied?

1 Answer | Asked in Copyright, Intellectual Property and Trademark for California on
Answered on May 14, 2018
Jason Brooks' answer
None. A trademark is merely an indicator of source, and not an assumption of any underlying intellectual property. So to use Creepy Crawlers as an example, you'd have to demonstrate that you are using the goods in commerce in order to even be able to register the TM.

Justia Ask a Lawyer is a forum for consumers to get answers to basic legal questions. Any information sent through Justia Ask a Lawyer is not secure and is done so on a non-confidential basis only.

The use of this website to ask questions or receive answers does not create an attorney–client relationship between you and Justia, or between you and any attorney who receives your information or responds to your questions, nor is it intended to create such a relationship. Additionally, no responses on this forum constitute legal advice, which must be tailored to the specific circumstances of each case. You should not act upon information provided in Justia Ask a Lawyer without seeking professional counsel from an attorney admitted or authorized to practice in your jurisdiction. Justia assumes no responsibility to any person who relies on information contained on or received through this site and disclaims all liability in respect to such information.

Justia cannot guarantee that the information on this website (including any legal information provided by an attorney through this service) is accurate, complete, or up-to-date. While we intend to make every attempt to keep the information on this site current, the owners of and contributors to this site make no claims, promises or guarantees about the accuracy, completeness or adequacy of the information contained in or linked to from this site.