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California Trademark Questions & Answers
2 Answers | Asked in Business Law and Trademark for California on
Q: Our trademark with my former company i need transfer ownership to my new company name. Renew trademark too

name: uptempo tv

Serial# 858222486

Reg# 4461249

Evelyn Suero
Evelyn Suero answered on Jul 2, 2020

You should work with a trademark attorney to assist you with the formal assignment of the trademark and renewal.

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2 Answers | Asked in Business Formation and Trademark for California on
Q: If I found a trademark that was requested after I created my LLC, would I get affected? Do I have a right to my LLC name
William Scott Goldman
William Scott Goldman answered on Jul 1, 2020

LLC names are simply business entities being formed within a specific state. Trademark rights are much more expansive. So there typically isn't much overlap involved, unless an other party successfully claims that you're using the name as a trademark. But even then, the relevant... Read more »

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2 Answers | Asked in Trademark for California on
Q: What if I made a logo then someone else trademarks a similar logo. Do I have to stop using it or am I grandfathered in?

I’m working at a non-profit, not selling anything. Another person is selling something, doesn’t have a trademark, and asked us to stop using it. I’m sure she’s going to get a trademark. What would be our best course of action?

William Scott Goldman
William Scott Goldman answered on Jul 1, 2020

Trademark rights are acquired through use, so if you're selling goods or services in connection with that logo, you may be able to claim common law priority within certain geographic areas should someone later attempt to federally register a similar logo for related goods or services. However,... Read more »

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2 Answers | Asked in Trademark for California on
Q: If a trademark is "Status: 602" would I be able to buy the trademark? There is no products, website, or store.

An old friend tried to trademark our brand for us but we have not been able to contact him for a long time now. So I wanted to take ownership of the trademark.

William Scott Goldman
William Scott Goldman answered on Jun 25, 2020

If the trademark is currently listed as 'abandoned' in the USPTO database, you should confirm whether this is due to a failure to respond to Office Action, and if so, whether your application may encounter similar issues with the TM Office. However, if it's not being used then common... Read more »

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1 Answer | Asked in Business Formation, Business Law and Trademark for California on
Q: I have a question about a company name

Someone else has the company name I want but, they haven't been active since 2014 I believe. They don't have it trademarked i looked them up on the government trademark site and other sites they don't come up. Is it possible i can trademark the name and use it for my company?

Barbara Berschler
Barbara Berschler answered on Jun 6, 2020

Trademark rights are not merely created by someone registering the mark, whether with the USPTO or under a state's law. Under the common law, if you use a mark as a mark, you can acquire trademark rights in that mark. You would need to investigate further about whether the other person has... Read more »

2 Answers | Asked in Trademark for California on
Q: Am I allowed to trademark a part of a phrase that has an unofficial trademark?

If a vitamin company has a trademark for the phrase "Good Riddance™" , would I be allowed to trademark product names with that phrase, but add a word before that so that the entire phrase for an example product would will be "Acne Good Riddance ™" for my vitamins?

Tania Maria Williams
Tania Maria Williams answered on Jun 2, 2020

If they are using the TM, they do not have a registered mark. However, trademark is based on use so they may still have common law rights in the mark. Also, adding the word acne likely won't solve the likelihood of confusion issue if you're both selling the same class of goods. Feel... Read more »

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1 Answer | Asked in Copyright and Trademark for California on
Q: Can I put the text in my product, which is it is inspired by Joseph Campbell's hero's journey?

The product is an interactive story app that used the hero's journey template.

Barbara Berschler
Barbara Berschler answered on May 22, 2020

From your description as to what you want to do, it sounds like you would be creating a derivative work based on the copyright protected work. To do so without being liable for infringement, you would need a license from whomever now owns the rights in Mr. Campbell's works. That is not to... Read more »

1 Answer | Asked in Copyright, Entertainment / Sports, Intellectual Property and Trademark for California on
Q: Semi-famous relative passed away.

While family was occupied with final arrangements/grieving, a third party filed for licensing to the name and image my relative went to extreme lengths to protect in life. So now essentially this person owns my relative. The family does not have the financial resources for a court battle. We simply... Read more »

Barbara Berschler
Barbara Berschler answered on May 18, 2020

My understanding is that California has strong laws that protect the Right of Publicity (right to exploit one's fame for famous people) and Right to Privacy. It would be good to get advise from a California attorney familiar with these 2 torts. The laws may allow you to collect... Read more »

2 Answers | Asked in Trademark for California on
Q: can i reopen a trademark that has been abandoned by myself years back?

i have a trademark that has been abandoned, i think because i filed it under the wrong code. i just wanna get my marks status to good

Barbara Berschler
Barbara Berschler answered on May 17, 2020

You will need to refile. When you prepare the application, look under the section dealing with "miscellaneous" and provide the serial number of the earlier application. Good luck.

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2 Answers | Asked in Copyright, Intellectual Property and Trademark for California on
Q: Trademarking a name that is already trademarked. Same industry or not?

I'm looking to trademark a business name (call it "FishExample"). FishExample is currently trademarked for "furniture to store fishing supplies and goods". My FishExample business will be an online community/resource for fishermen (unrelated to furniture, but tied into... Read more »

Barbara Berschler
Barbara Berschler answered on May 15, 2020

As usual with so much in the law, the answer is, "It depends." A trademark owner acquires rights in their mark, whether for goods or service, by using it in ways that convey to consumers that there is a particular source offering the goods/services. From what you write, it is not clear... Read more »

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2 Answers | Asked in Intellectual Property and Trademark for California on
Q: Hello

Can a foreign artist file for a trademark in USPTO , if he is not a citizen of the US?

Evelyn Suero
Evelyn Suero answered on May 11, 2020

You should register your trademark when you begin using the trademark. A foreign domiciled applicant may file for trademark registration but he/she must be represented by a US-licensed trademark attorney. You will need to hire a US trademark attorney to proceed.

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1 Answer | Asked in Intellectual Property, Patents (Intellectual Property) and Trademark for California on
Q: Would it be possible to produce, sell and protect a "fake" product, not registered which was featured on an SNL Parody?

While watching a popular late night show, they featured a sketch of an infomercial for a fake product which does not appear to be in production, on sale anywhere and does not show up in a Copyright search, Trademark Search or Patent Search. Prior to obtaining formal legal counsel I would like to... Read more »

Bill Hulsey
Bill Hulsey answered on May 5, 2020

It is possible, but likely that you would need to obtain NBC legal approval. I recall that "Land Shark" halloween costumes have been made. That image and art is an NBC property.

With the right incentive, a deal could be crafted.

1 Answer | Asked in Trademark for California on
Q: Trademark registration in AZ

I own a two-word domain name as an example, "GuideExample.com," I purchased this domain many years ago due to the name "GuideExample" it was first used by the previous company in 2002 to sell digital products and services till May 2008.

When using basic word mark search... Read more »

Tania Maria Williams
Tania Maria Williams answered on Apr 30, 2020

When you say "first used by the previous company" did you purchase the business and the goodwill that went along with it? If not, the use date is based on your first use of the mark in commerce. You can't stack your use on the use of someone else if they are not a predecessor in... Read more »

3 Answers | Asked in Trademark for California on
Q: How do I apply to buy a trademark that’s been abandoned?
Barbara Berschler
Barbara Berschler answered on Apr 25, 2020

You really need to be sure that the mark has been truly "abandoned," meaning the owner isn't still using it but just let the USPTO filings fall out of time and therefore the federal registration application or actual registration are now considered by the USPTO to be abandoned.... Read more »

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2 Answers | Asked in Copyright and Trademark for California on
Q: Hello My friends and I are making a Star Wars products review video would it be considered under fair use? Thank you

We’re worried that because Disney is so strict with their brand that they’ll take down our videos if their logo is showing anywhere on the screen. This is for YouTube we are only reviewing our personally owned products.

Tania Maria Williams
Tania Maria Williams answered on Apr 21, 2020

Keep in mind that "fair use" is a defense to infringement. And yes, you're correct that Disney is very litigious, but reviews and commentary are protected under the statute.

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1 Answer | Asked in Trademark for California on
Q: Business name trademarked in the cannabis space, now a scam website has appeared using our name in the hemp CBD space.

My employer has trademarked her business name federally and in California in the recreational cannabis industry. Recently a "free CBD" scam website has appeared using our name. Some of their victims are finding our FB page and leaving angry comments and reviews. I understand that the... Read more »

Marcos Garciaacosta
Marcos Garciaacosta answered on Apr 19, 2020

I find it surprising that you say you have a federal trademark for cannabis.

It is very unlikely that happened as cannabis is illegal in the federal level.

That leaves you with less protection and arguments to go after this infringer.

If he is using social media you can take...
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1 Answer | Asked in Copyright and Trademark for California on
Q: Will there be any conflict with me using the name "Lord Farquaad" for my Twitch channel?

I will be using this name to represent myself in front of an audience and may create logos with this name tied along. I will not be using the actual Dreamworks character in the branding. Thank you for answering.

Marcos Garciaacosta
Marcos Garciaacosta answered on Apr 16, 2020

Very possible.

It will be up to the owner of the character to do anything about it.

You should consult with an attorney.

2 Answers | Asked in Trademark for California on
Q: How would I be able to acquire an abandoned trademark name what els is required to own this name?

In specific trademark Serial Number: 86829892

Tania Maria Williams
Tania Maria Williams answered on Apr 15, 2020

Just because a mark is abandoned, doesn't mean it's not in use. I would suggest reaching out to a trademark attorney who can help you to do a comprehensive search and assist you in better protecting your brand.

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1 Answer | Asked in Copyright, Business Law, Intellectual Property and Trademark for California on
Q: If one starts a website that lists doctors, can you use a headshot & bio from the doctors website without permission?

This would be just a directory of doctors and their business information found on their website.

Marcos Garciaacosta
Marcos Garciaacosta answered on Apr 14, 2020

You are in risky territory

Besides having a consultation with an attorney, you should consider having an engagement plan with the doctors so you can remove them and change information.

www.legalbizglobal.com

2 Answers | Asked in Intellectual Property and Trademark for California on
Q: Can I open a wine bar and call it Betamax?
Tania Maria Williams
Tania Maria Williams answered on Feb 26, 2020

I don't believe that Sony is in the wine bar industry but I would need to do a comprehensive sarch to be able to say for sure. Also, just because they're not currently in the business of wine bars does not guarantee that they would not still send a cease and desist letter. I would... Read more »

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