Practice

Trademarks, Servicemarks, Trade Dress, False Advertising & Unfair Competition

® SM TM

Experienced Trademark Attorneys

The attorneys of are experienced in the realms of trademark law. The firm is fluent with registration procedures with the U.S. Patent & Trademark Office and maintains specialized software not only for the prosecution of trademark applications, but also for maintaining client trademark portfolios, keeping maintenance fees up to date, as well as policing and enforcing trademarks. If international trademark protections are sought, we can guide your businesses through the nuances of securing international protections. We are well versed with opposition and cancellation proceedings before the Trademark Trial & Appeal Board, as well as litigation in federal court of trademark matters. Our firm has handled litigation of trademark matters across the country. Moreover, we maintain the latest software and docketing programs available to efficiently manage and streamline the size and scope of typical trademark infringement litigation.

Infringement Opinions

Trademark infringement is something that any growing business should consider both from a defensive and offensive standpoint. Trademarks are not only important in terms of guarding business assets, but also should be given due consideration in the process of adopting product names, business names, and introducing new products. can help you pick a business or product name least likely to infringe the rights of others, and can also render legal opinions regarding the likelihood that existing uses of a particular name are likely to be accused of infringement. Because trademark rights can be worldwide in scope, you should consult with an attorney specializing in patents and trademarks before applying logos to products, letterhead and signs. Prevention is key and the cost of a legal opinion pales in comparison to the potential costs of advertising/product recall or defending a trademark infringement lawsuit.

Infringement Watch

can help your business police trademarks with advance warnings for potentially infringing activities. We have flexible programs available for periodic market scans to identify such activity and help you stop it before it gets out of control.

International Trademarks

can assist your business to obtain worldwide protection for your intellectual property rights, including under the Madrid Protocol. Most international protection is accomplished country by country. There is some strategy in choosing those countries in which protection is sought. will work to orchestrate efforts with associate law firms throughout the world to obtain such rights.

Trademark Basics

A trademark or a service mark is any word or logo that indicates to consumers the source of those products or services. Trademarks are the cornerstone of branding in most businesses. While not all trademarks are federally registered, it is worthwhile to register trademarks with the Patent & Trademark Office for a variety of reasons, including:

  • Enhanced rights to prevent others from using a similar name or logo on similar goods or services
  • Nationwide protection
  • A basis for securing international protections
  • Enhanced chances of collecting attorney fees from infringers
  • Advanced protections through the U.S. Customs Service to identify and stop or seize imports bearing counterfeit marks
  • Enhanced value to an intellectual property portfolio.

Trade Dress

Trade Dress is the overall look and appearance of a product. Trade dress is an important subset of trademark law. It is possible to register trade dress and enforce many trade dress rights under federal and state laws. has considerable experience enforcing trade dress rights.

Trademark Litigation & Unfair Competition

If two parties are using a similar name or logo in business, there may be an infringement issue. The primary issue in infringement litigation is whether there is a "likelihood of confusion" among prospective consumers. Factors considered by courts typically include:

  • Similarity of the marks
  • Similarity of goods and services
  • Strength of the trademark
  • Type of consumers and the degree of care used by consumers
  • Similarity of advertising mediums
  • Intent
  • Any proof of customers being actually confused. Other factors consider seniority of use and if common law marks are at issue, geographic expansion and market penetration. These factors vary according to appellate jurisdictions.

Trademark Infringement Remedies

In trademark litigation, Plaintiffs typically seek to stop infringing use of the trademark, stop imports bearing the trademarks, or they seek monetary damages for lost sales, profits, or attorney fees. If any business or individual is using your trademark or logo, or alleging that you are infringing their trademark, it is important to consult with attorneys familiar and experienced with trademark litigation. has the expertise and experience you need in dealing with all issues of a claim of trademark infringement or unfair competition. Based in San Diego, California and with offices in Houston, Texas, is well equipped to handle your trademark infringement case. If you need an experienced trademark attorney, do not hesitate to call our offices.

Statutory Basis for Trademark Infringement

A trademark owner will typically assert claims for trademark infringement under 15 U.S.C. 1114 or unfair competition claims under the Lanham Act, 15 U.S.C. 1125 (false designation of origin). Counterfeiting is a particularly egregious form of trademark infringement which may be addressed under 15 U.S.C. 1117. Also, state claims for "palming off", "deceptive trade practices", "false advertising" or unfair competition are frequently tied to any federal allegations. Famous trademarks may involve claims for "trademark dilution" (blurring or tarnishment) or false advertising. A separate realm of trademark and U.S. Customs laws may be involved where "grey goods" are being imported. Grey goods are trademarked goods sold outside of authorized distribution channels and can also be considered trademark infringement or license violation.

Contact

La Jolla, California

875 Prospect, Suite 305
La Jolla, California 92037

Tel: 858-459-9111
Fax:858-459-9120

Los Angeles, CA

2029 Century Park East
Suite 400N
Los Angeles, CA 90067

Tel: 310-593-4193

Houston, Texas

1201 Shepherd Drive
Houston, Texas 77007

Tel: 713-589-2214
Fax:713-583-9644