A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. In other-words, a trademark is made up of distinct shapes, letters, numbers, sounds, smells and/or colors created for the purpose of promoting a product.

A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. Simply stated, a service mark promotes services. Examples of service marks are: McDonald's (food service), FedEx (delivery service), MTV (television network service).

Trade dress is another type of trademark. Trade dress deals with packaging (Coca-Cola bottle, Netflix envelope), decor, product shape and web pages.

In order to legally protect a trademark, the trademark must be distinctive. A trademark may become distinctive in two ways:

  1. Born distinctive (inherently distinctive)
  2. Achieve distinction through sales and advertising over several years.

Rechsteiner Law handles trademark issues throughout southern California including San Bernardino County and surrounding areas.

Trademark Registration

There are two ways which a trademark may become registered. The first and preferred way is to register your trademak through the United States Patent and Trademark Office (USPTO). A trademark registered though the USPTO is known as a federally registered trademark. Once registered,a federally registered trademark becomes empowered with the protection of constructive notice. Constructive notice is a legal term meaning that persons are presumed to have knowledge of something by virtue of the fact that it is in the public record. This principle means that someone cannot deny knowledge of a fact because they have a duty to inquire. Because knowledge of your ownership interest in the trademark is automatically imparted to the public, the owner of the trademark may recover from an infringer:

  1. Treble damages (3x money damages),
  2. Infringers profits,
  3. Attorney's fees if deliberate infringement

A second way a trademark may become registered is through it's use in the marketplace even though it is not filed at the USPTO. This is known as a common law trademark. Though a common law trademark is not empowered with the protection of constructive notice, it is protected with the principal of first-in-time, first-in-right. Meaning, if you use the trademark in commerce before another uses a same or similar trademark in commerce, your rights may prevail even though the other trademark may be registered at the USPTO.

In sum, it's recommended to federally register your trademark. This also allows you to use the ® symbol with your trademark which gives those who see your mark actual notice that your trademark is federally registered whereas a commonlaw trademark only allows its owner to use the ™ symbol. An owner of a common law trademark who uses the ® symbol subjects themselves to the tort of fraud.

Trademark Infringement

If a party owns the rights to a particular trademark, that party can sue subsequent parties for trademark infringement. The standard is "likelihood of confusion." To be more specific, the use of a trademark in connection with the sale of a good or providing of a service constitutes infringement if it is likely to cause consumer confusion as to the source, sponsorship, or approval of such good or service. In deciding whether consumers are likely to be confused, the courts will typically look to a number of factors, including: (1) the strength of the mark; (2) the proximity of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of marketing channels used; (6) the degree of caution exercised by the typical purchaser; (7) the defendant's intent.

Trademark infringment creates dilution by blurring though the association of a famous mark and a similar mark or trade name that impars the distinctiveness of the famous mark. For example, in the music industry there is a notorious guitar manufacturing company named Fender. If another guitar manufacturing company subsequently named themselves D'fender (Defender), would that impair the distinctiveness of the Fender trademark name? Probably so. On the other end of the spectrum, using the same term on a completely unrelated product will not likely give rise to an infringement claim. Thus, a manufacturer of automotive parts named Fender may be able to peacefully co-exist with Fender the guitar manufacturer since consumers are not likely to confuse the automotive parts being made by Fender Auto are being made by Fender Guitars.

Another manner of infringment is called tarnishment. This occurs when an association arises from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark. For example, what would happen if one sold sex aids called Microsoft? This would dilute the strength of the Microsoft trademark name by tarnishing it's reputation for quality and/or blurring the marks distinctiveness in the public eye. In essence, this would harm the reputation of the famous mark.

For more information about infringements, please contact Rechsteiner Law here.

Trademark Litigation

Trademark litigation traditionally commences by serving an infringing party with a letter to cease and desist. If the infringer continues to use the famous mark, the owner of the famous mark may sue for damages and/or injunctive relief in federal court. This involves filing a complaint and commencing discovery by serving requests for admission, special interrogatories, production of documents, and administering depositions in preparation for trial.


This site and any information contained herein are intended for informational purposes only and should not be construed as legal advice. Seek competent legal counsel for advice on any legal matter.