California State Trademarks and Their Protection

Overview of California State Trademarks

In California, trademarks can be registered at the state level through the Secretary of State's office. This registration provides legal protection for marks used in commerce within California. State trademark registration is typically used by businesses that operate primarily within a single state and do not engage in interstate commerce, which would necessitate federal trademark protection.

Protection Offered by California State Trademarks

Registering a trademark in California helps to establish the right to use that mark in commerce within the state's borders. It primarily:

• Deters others: It can act as a deterrent against others using similar marks in the state.
• Legal enforcement: Provides a basis for legal action against counterfeiters or infringers within California.
• Public record: Establishes a public record of the trademark owner’s claim to the mark.

Application Process

The process involves submitting an application that includes the trademark, the goods or services with which the trademark is used, and a specimen showing the trademark's use. The California Secretary of State's office reviews the application to ensure compliance with state requirements, including not being misleading or confusingly similar to existing marks.

Legal Basis for California State Trademarks

California's Model State Trademark Law provides a claim for trademark infringement for registered trademarks or service marks. The statutory cause of action is not available to holders of unregistered marks; however, unregistered mark owners may assert a claim for common law trademark infringement. A person shall be liable in a civil action for trademark infringement when a person uses, without the consent of the registrant, any reproduction, counterfeit, copy, or colorable imitation of a mark registered under this chapter in connection with the sale, distribution, offering for sale, or advertising of goods or services on or in connection with which the use is likely to cause confusion or mistake, or to deceive as to the source of origin of the goods or services.

Article 2 of California's Model State Trademark Law covers registration of both trademarks and service marks. Trademarks and service marks must be in use at the time of registration. A trademark or service mark is not eligible for registration under the Model State Trademark Law if the mark consists of or comprises any of the following: immoral, deceptive, or scandalous matter; matter that may disparage or falsely suggest a connection with persons living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute; the flag or coat of arms or other insignia of the United States of America, of any state or municipality, or of any foreign nation, or any simulation thereof; the name, signature, or a portrait identifying a particular living individual, except by the individual's written consent; a mark that is any of the following: when used on or in connection with the goods or services of the applicant, is merely descriptive or deceptively misdescriptive of them; when used on or in connection with the goods or services of the applicant, is primarily geographically descriptive or deceptively misdescriptive of them; is primarily merely a surname, provided, however, that nothing in this paragraph shall prevent the registration of a mark used by the applicant that has become distinctive of the applicant's goods or services; a mark that so resembles a mark registered in this state or a mark or trade name previously used by another and not abandoned, as to be likely, when used on or in connection with the goods or services of the applicant, to cause confusion or mistake, or to deceive.

California law defines “trademark” as any word, name, symbol, or device, or any combination thereof, used by a person to identify and distinguish the goods of that person, including a unique product, from those manufactured or sold by others, and to indicate the source of the goods, even if that source is unknown. The California Business and Professions Code defines “service mark” as a mark used in the sale or advertising of services to identify the services of one person and to distinguish them from the services of others. The California Business and Professions Code defines “trade name” as any name used by a person to identify a business or vocation of that person.

California’s former Trademark Law was superseded, effective January 1, 2008, by the Model State Trademark Law. The intent of the Model State Trademark Law is to provide a system of state trademark registration and protection substantially consistent with the federal system of trademark registration and protection under the federal Lanham Act. The Model State Trademark Law is administered by the Trademarks and Service Marks Unit in the Secretary of State’s office.

Differences Between California State Trademarks and Federal Trademarks in the U.S.

Scope of Protection

• State Trademarks: Provide protection only within the state where the trademark is registered. They are suitable for businesses that operate on a local scale and do not engage in interstate or international commerce.
• Federal Trademarks: Registered with the United States Patent and Trademark Office (USPTO), federal trademarks offer protection across the entire United States and its territories. This is crucial for businesses that operate nationally or are involved in interstate commerce.

Basis for Registration

• State Trademarks: Can often be registered based on the intent to use a mark in commerce, not necessarily requiring actual use as a prerequisite.
• Federal Trademarks: Require the applicant to either have already used the trademark in interstate commerce or to have a bona fide intention to use the mark in interstate commerce, substantiated by eventual actual use.

Enforcement

• State Trademarks: Enforcement is generally limited to the state court system within the state of registration.
• Federal Trademarks: Federal registration provides the ability to bring a lawsuit concerning the trademark in federal court. It also offers additional protections against importation of goods bearing infringing marks.

Additional Benefits of Federal Registration

• Public Notice: Federal registration serves as a national public notice of the owner’s claim to the mark.
• Presumed Ownership: Provides a legal presumption of the registrant’s ownership of the mark and exclusive right to use the mark nationwide in connection with the goods/services listed in the registration.
• Incontestability: After five years, federal registrations can become "incontestable," a legal status that provides conclusive evidence of the validity of the registered mark and the registrant’s exclusive right to use the mark.
• International Protection: Federal registrants can seek registration in foreign countries based on their U.S. registration, which is facilitated by treaties such as the Madrid Protocol.

While California state trademarks offer valuable protections for businesses operating within California, federal trademarks provide broader protection that is crucial for businesses operating across state lines or internationally. The choice between state and federal registration will largely depend on the scale of the business and its operational needs. For those operating within a local market, state trademarks might suffice, but for those with broader aspirations or who engage in interstate commerce, federal protection is advisable.