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Do Pets Have a Right of Publicity in California?

September 16, 2022/in Intellectual Property /by taulersmith

Is there a right of publicity for animals? More specifically, do pets have a right of publicity in California? These may seem like silly questions at first glance, but the answers could be very important if you have a pet with a social media presence. These days, it is not uncommon for people to create social media accounts on Instagram, Facebook, Twitter, or Pinterest where they post daily photos of their pets. These accounts can be incredibly popular and often gain hundreds or even thousands of followers. Depending on the circumstances, it may be possible to monetize the accounts through online advertisements, merchandising agreements, and/or licensing deals. This is where the right of publicity would theoretically apply to the pet whose photographs, videos, and other images are posted on the internet.

To learn whether you can file a California right of publicity claim for misappropriation of your pet’s image, keep reading this blog.

California Right of Publicity Claims for Pets

There has yet to be an instance of a California court ruling that pets have a right of publicity under the law. This could leave you exposed to misappropriation of your pet’s identity by others who wish to take your photos and use them for their own commercial purposes.

The good news is that there are still ways to protect your rights in these situations. For example, you may be able to obtain copyright protection for photographs of your pet. Additionally, you may consider trademarking your pet’s name if that name is unique. (E.g., Davey the Dog.) With copyright or trademark protection, you would potentially have the option to file a lawsuit for intellectual property infringement if anyone ever used your pet’s image without authorization.

Statutory Protections for an Individual’s Right of Publicity in California

Of course, California’s right of publicity law does apply to humans. Statutory protections for the right of publicity are set forth in the Celebrities Rights Act, which can be found in California Civil Code Section 3344. The law protects individuals against the infringement of their publicity rights, which means that no one can use another person’s identity for commercial purposes unless the IP holder consents to it.

The statute explicitly protects five (5) aspects of your identity against unlawful commercial exploitation:

Name
Photograph or Image
Likeness
Voice
Signature

An experienced right of publicity lawyer can make sure that your image, name, and voice are protected against unlawful use by others. This is extremely important because these aspects of your identity may have significant monetary value. When someone takes your likeness without permission, they are also taking away your ability to receive recognition and compensation that you are entitled to. Worse yet, if someone uses your likeness in the wrong context (e.g., an advertisement for a product or service with a bad public image), it could adversely affect your ability to earn money in the future.

Common Law Right of Publicity Claims

California recognizes both a statutory right of publicity and a common law right of publicity. This means that plaintiffs have options when deciding to file a lawsuit for right of publicity misappropriation.

California’s statutory protections for the right of publicity are limited to a person’s name, signature, voice, photograph, and likeness. This means that when a plaintiff wants to bring a right of publicity lawsuit for misappropriation of some other aspect of their identity, they will need to do so through a common law right of publicity claim. The good news for plaintiffs is that courts in these cases often use a broad definition of the right of publicity so that it includes things that go well beyond a literal photo of the plaintiff. For example, courts have found that the use of a voice that is meant to imitate a celebrity’s voice may constitute an unlawful misappropriation.

California’s Publicity Rights Law Protects Both Celebrities & Non-Celebrities

Although the right of publicity was once thought to be limited to celebrities and their heirs, this has changed in recent years as social media and reality television have exploded to give many more people an interest in their public image. These days, anyone with a Twitter or Instagram account may be considered a “social media influencer” who is able to monetize their persona and generate substantial income through online advertising. This makes it important for these individuals to protect their right of publicity when someone misappropriates it. The good news is that California’s right of publicity law has strong protections for both celebrities and non-celebrities.

Free Consultation with Los Angeles Right of Publicity Lawyers

If someone has used a photo of your dog, cat, or other pet without permission, they may have violated your legal rights. The same is true if someone has used your likeness in an advertisement without first obtaining your consent. Your next step should be to speak with a Los Angeles right of publicity attorney. The lawyers at Tauler Smith LLP understand this area of the law because we regularly represent clients in both state and federal courts on matters involving intellectual property.

Call our legal team today at 310-590-3927 or email us to schedule a consultation.

Damages Available in Right of Publicity Claims

September 14, 2022/in Intellectual Property /by taulersmith

You may have worked very hard on your public image, especially if you use that image to generate revenues through a brand or persona that you publicize online. When someone takes your carefully cultivated image without permission, they are stealing your hard work to make money for themselves. Moreover, their actions could be causing significant harm to your image by associating it with a product or service that you do not want to be associated with. The good news is that California law provides you with legal options in these situations, and there are powerful remedies and substantial damages available in right of publicity cases. Additionally, when the plaintiff is successful at trial, the court may also order the defendant to pay attorney’s fees and legal expenses for both sides.

To learn about your options for pursuing damages with a California right of publicity claim, keep reading this blog.

Statutory Damages Available to Plaintiffs in California Right of Publicity Cases

The right of publicity is explicitly protected by the Celebrities Rights Act, and damages for right of publicity violations are set forth in California Civil Code Sec. 3344(a). The law states that any person who misappropriates someone else’s right of publicity “shall be liable to the injured party or parties in an amount equal to the greater of seven hundred fifty dollars ($750) or the actual damages suffered by him or her as a result of the unauthorized use, and any profits from the unauthorized use that are attributable to the use and are not taken into account in computing the actual damages.” The statute also allows for the awarding of punitive or exemplary damages to the party whose right of publicity was violated when the defendant engaged in oppression, fraud, or malice.

The statutory damages in a right of publicity claim can add up very quickly because the plaintiff can sue for each unlawful use of their likeness or persona. Another very important factor when determining damages in a right of publicity case is the total amount of money that the defendant earned or profited from use of the plaintiff’s likeness.

Determining Actual Damages in a California Right of Publicity Claim

It is not always easy to establish an exact amount for actual damages in a right of publicity claim because the value of a person’s name or likeness isn’t obviously quantifiable. This is one way in which right of publicity differs from other intellectual property rights like copyright, trademark, or patent, which commonly involve commercial products or services and reportable revenues.

Some factors that the court may consider when determining damages in a right of publicity lawsuit include the following:

The plaintiff’s level of fame.
How much money the plaintiff has earned from their likeness in the past.
Previous contracts and licenses that include royalties.
Whether the plaintiff’s publicity rights have already been licensed. (Unlicensed rights might have more value.)
How much money the defendant made from their use of the plaintiff’s likeness.

Punitive Damages in Right of Publicity Cases

The punitive damages question comes after the court has already decided that the defendant misappropriated the plaintiff’s publicity rights. At this point in the case, the court is now left to determine exactly how much money to award the plaintiff. The key issue for the court is whether the defendant committed malice, oppression, or fraud. California law defines these terms as follows:

Malice: There are two (2) ways that a defendant can be found to have acted with malice. The first definition of “malice” is any conduct which the defendant intended to cause injury to the plaintiff. The second definition is any despicable conduct which the defendant engaged in with conscious disregard of the rights or safety of other people.
Oppression: The statute defines “oppression” as despicable conduct that consciously disregards another person’s rights and that causes cruel and unjust hardship for that person.
Fraud: An individual commits fraud when they use an intentional misrepresentation, deceit, or concealment of a material fact for the purpose of depriving someone else of property or legal rights, or for the purpose of causing injury.

The basis for punitive damages awards in publicity law cases actually comes from another statute: California Civil Code 3294. That law stipulates that in any case not involving a contract breach, the plaintiff may be eligible for punitive damages in addition to actual damages. Cal. Civ. Code 3294(a) states that when the defendant has been guilty of oppression, fraud, or malice, the plaintiff “may recover damages for the sake of example and by way of punishing the defendant.” The idea behind punitive damages is that the defendant’s conduct has been so egregious that they deserve to be punished in some way that goes beyond the actual injury or harm caused. Moreover, punitive damages awards have a deterrent effect in that they serve as a reminder to other people that they should not violate the law in the future.

Exception to Punitive Damages

There are strong defenses that can be raised in right of publicity cases, including an exception for punitive damages that may be available to some employers. That’s because Cal. Civ. Code Sec. 3294(b) stipulates that when a right of publicity misappropriation was committed by an employee of the defendant, the defendant-employer will not be liable unless the plaintiff can show that the employer had certain advance knowledge. For instance, the plaintiff must prove to the satisfaction of the court that the employer knew that the employee who would later go on to violate the plaintiff’s right of publicity was, in fact, unfit for the position. For corporate employers, the plaintiff must show that the advance knowledge was possessed by an officer, director, or managing agent of the corporation. Additionally, an employer can still be liable for punitive damages if they were personally guilty of oppression, fraud, or malice, as those terms are defined in the statute.

Other Remedies Available in Right of Publicity Claims

Plaintiffs with possible right of publicity claims may also be able to pursue remedies through different statutes. California Civil Code Section 3344(g) explicitly states that these remedies are cumulative “and shall be in addition to any others provided for by law.” This opens the door for plaintiffs to bring other civil suits in addition to the right of publicity lawsuit.

Additionally, one important consideration for plaintiffs in a right of publicity case is whether the defendant has insurance coverage. That’s because a lot of publicity rights claims involve defendants with insurance companies that will ultimately pay out any settlement or damages award issued by the court.

Contact the Los Angeles Right of Publicity Attorneys at Tauler Smith LLP

Your identity could have significant monetary value in the internet era, especially if you are an influencer on social media platforms like Instagram, Facebook, Twitter, Pinterest, YouTube, or Vimeo. You never know when your image or likeness might be sought for online advertisements. If someone has used your identity without permission, the experienced Los Angeles right of publicity lawyers at Tauler Smith LLP can help you take legal action.

Call 310-590-3927 or email us to schedule a free consultation.

What Is a Trade Secret?

August 2, 2022/in Intellectual Property /by taulersmith

It is vital for any business owner to know the answer to this question: “What is a trade secret?” Sometimes, a company’s intellectual property assets are valuable precisely because information about those assets is not generally known to the public. These are considered “trade secrets,” and both California and federal law afford businesses with legal protections for their trade secrets. These laws recognize that when a company loses its proprietary information due to theft or infringement, the results can be disastrous. The company may see its advantage over competitors in the marketplace disappear, leading to critical revenue losses. Worse yet, the company may lose its core technologies that help the business to survive. An experienced California intellectual property lawyer can protect you against this fate and help you take appropriate legal action in state or federal court.

To learn more about how trade secrets are defined under California law, keep reading.

How Does California Law Define a “Trade Secret”?

A trade secret has three main components:

It gains value from not being generally known by the general public. This value can be actually realized, or it may be potential value.
It has particular value to others who cannot acquire the information. (E.g., competing businesses.)
Its secrecy has been maintained through reasonable efforts.

These aspects of a trade secret can make it a valuable intellectual property asset for many businesses. Where trade secrets differ from other types of intellectual property like patents, copyrights, and trademarks is that trade secrets are never formally registered with the government for protection. Another difference between trade secrets and other kinds of intellectual property is that trade secrets are, by definition, not publicly recognized.

CUTSA Definition of “Trade Secrets”

The U.S. Patent and Trademark Office (USPTO) defines a “trade secret” as a type of intellectual property. Federal lawmakers recognized the importance of protecting trade secrets in 2016 when they passed the Defend Trade Secrets Act (DTSA) and gave businesses and individuals a right to file a civil suit when their trade secrets are misappropriated. Under the DTSA, any information that derives independent economic value from the fact that it cannot be easily ascertained by others may qualify for protection as a trade secret.

The California Uniform Trade Secrets Act (CUTSA) defines a “trade secret” even more broadly as any information that is not generally known to others who might find it valuable. This means that there is no substantial limit to the types of information that may be protected under California’s trade secret law. Common examples of trade secrets include client lists, company financial data, internal forecasts and projections, advertising plans, designs and other technical plans, formulas, manufacturing techniques, and computer source code. One of the most famous examples of a trade secret is the formula for Coca-Cola.

Basically, if the information is the sort that a competitor would need to spend money or time to discover, then it probably qualifies as a trade secret. But if even one person outside the business already knows the information without it having been disclosed, then it might not be a trade secret.

Proving Trade Secret Misappropriation in California

Winning a trade secret claim requires the plaintiff to first establish that the confidential information at issue does, in fact, qualify as a trade secret. Next, the plaintiff will have to prove that the defendant misappropriated the data.

As set forth by California law, trade secret misappropriation can include any of the following acts involving confidential information:

Wrongful acquisition.
Wrongful use.
Wrongful disclosure.

A person or entity is deemed to have “misappropriated” a trade secret when they use illegal or improper means to acquire it. This can include theft, bribery, espionage, a misrepresentation, or a breach of duty to maintain the secret. In addition to prohibiting the illegal acquisition of a trade secret, the CUTSA also explicitly bars anyone from disclosing a trade secret without consent of the rightful owner, as well as prohibiting anyone from using a trade secret that was illegally acquired. This means that both the person who took or disclosed the trade secret and the person or company who later used the information may be liable under California trade secret law.

Contact the Los Angeles Trade Secret Lawyers at Tauler Smith LLP

If you are a business owner whose proprietary information was stolen by an ex-employee, disclosed to a competitor, or used by another company, then you may have a valid claim for trade secret misappropriation. Your best move now is to speak with a Los Angeles trade secret lawyer who has experience bringing these claims in California courts. The legal team at Tauler Smith LLP understands the nuances of both federal and state laws addressing trade secrets, and we know how to win trade secret litigation.

What Is the Defend Trade Secrets Act?

July 25, 2022/in Intellectual Property /by taulersmith

Trade secrets protect the things that make a business unique, and trade secrets themselves are protected by both federal and state laws. California trade secret lawyers are often asked, “What is the Defend Trade Secrets Act?” The Defend Trade Secrets Act is a federal law that applies to any trade secrets related to products or services used in interstate commerce. The statute also applies to trade secrets used internationally. It is an important tool for anyone who needs to take legal action to protect their confidential or proprietary information.

To learn more about the Defend Trade Secrets Act, keep reading this blog.

Federal Law Protects Businesses Against Trade Secret Misappropriation

The federal Defend Trade Secrets Act was passed by the United States Congress and codified into law in 2016. The statute is an important tool in intellectual property claims, particularly for business owners who believe that an ex-employee or business competitor has used their trade secrets without authorization or permission. The idea behind the Defend Trade Secrets Act is that trade secret owners should have a way to safeguard their trade secrets against theft or misappropriation. For example, the Defend Trade Secrets Act makes it unlawful for an ex-employee to solicit their former employer’s customers.

Importantly, the Defend Trade Secrets Act does not preempt state laws. For example, a victim of trade secret theft in California may choose to file a lawsuit under the Uniform Trade Secrets Act (CUTSA). An experienced intellectual property lawyer can help you decide which statute and venue will be most favorable to your case.

What Is the Definition of “Trade Secret Misappropriation”?

The United States Patent and Trademark Office (USPTO) defines a “trade secret” as any information that has independent economic value because it is not generally known, has value to others who do not have access to the information, and is subject to efforts to maintain its secrecy.

Under the Defend Trade Secrets Act, protected information can include “all forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations, program devices, formulas, designs, prototypes, methods, techniques, processes, procedures, programs, or codes, whether tangible or intangible, and whether or how stored, compiled, or memorialized physically, electronically, graphically, photographically, or in writing.” The DTSA’s broad definition of “trade secret” gives businesses wide latitude when seeking legal protection for their proprietary information. For California business owners, it can sometimes be advantageous to file suit in federal court under the DTSA instead of suing in state court under the California Uniform Trade Secrets Act (CUTSA).

How Do You Establish a Violation of the Defend Trade Secrets Act?

Certain acts can give rise to a legal claim under the Defend Trade Secrets Act. These acts of misappropriation include the following:

Acquisition of a trade secret through improper means.
Disclosure of a trade secret by someone who used improper means to acquire the information.
Disclosure of a trade secret by someone who had reason to know that the information was acquired improperly.
Disclosure of a trade secret by someone who knew that the information had been acquired by accident or mistake.

If you believe that someone is using your trade secrets without authorization, the experienced Los Angeles trade secret attorneys at Tauler Smith LLP can assist you. Our California intellectual property team will evaluate the facts of your case and help you determine whether your legal claim should be filed under federal law or state law.

What Remedies Are Available to Plaintiffs in DTSA Cases?

One unique remedy available to plaintiffs in DTSA cases is civil seizure. This allows the court to order the seizure of property to prevent the dissemination of the trade secret at issue in the case. Moreover, this order may be issued prior to a resolution in the case, which means that courts can act quickly to stop a potential infringement of trade secrets while the matter is still being adjudicated. Civil seizure is only supposed to be an option for plaintiffs in “extraordinary circumstances.”

Additionally, the most common trade secret remedies available to plaintiffs in DTSA cases include the following:

Actual damages to compensate the plaintiff for trade secret misappropriation that has already occurred.
Exemplary or punitive damages if the trade secret was “willfully and maliciously misappropriated.”
An injunction to protect the trade secret.
Payment of a royalty to the plaintiff when future use of the trade secret is inevitable.
Attorney’s fees.

Trademark & Patent Claims

Additionally, trade secret claims filed under the Defend Trade Secrets Act may be accompanied by trademark infringement claims and patent infringement claims on related matters and/or IP assets. These other legal claims can provide plaintiffs in trade secret cases with additional remedies.

The Economic Espionage Act of 1996

The Defend Trade Secrets Act is a companion to the Economic Espionage Act, which imposes criminal penalties against individuals who reveal trade secrets to foreign entities, such as a foreign government, business, or agent. When someone commits trade secret theft in violation of the Economic Espionage Act, they may be prosecuted by the U.S. Department of Justice.

DTSA Exception for Whistleblowers

Congress made sure to carve out an exception for certain whistleblowers who reveal trade secrets to the government. That’s why the Defend Trade Secrets Act provides corporate whistleblowers with legal protection in the form of legal immunity from criminal prosecution. Whistleblowers are also immune from civil liability under either federal or state laws, if they meet certain conditions such as disclosing the trade secret to a government official.

Importantly, the Defend Trade Secrets Act also requires companies to let their employees know about these whistleblower immunity provisions. If a company fails to inform employees through employment manuals, policies, or contracts, then the company may no longer be eligible to pursue punitive damages and attorney’s fees if there is a DTSA lawsuit at a later date.

Contact the California Trade Secret Lawyers at Tauler Smith LLP

Tauler Smith LLP is a California law firm that helps business owners and individuals protect their intellectual property rights, including trade secrets. Our Los Angeles trade secret lawyers routinely represent both plaintiffs and defendants in U.S. District Court, and we know what it takes to win these cases. Contact us today by calling 310-590-3927 or sending an email.

The Benefits of Trademark Registration

January 12, 2022/in Intellectual Property /by taulersmith

Trademark protection is extremely important because it ensures that a company’s brand doesn’t get tarnished by misuse, and that customers don’t get outright stolen by a competitor due to unauthorized use. While common law trademark rights afford a certain level of protection since ownership of a mark is established the moment that mark is used, the best way to ensure that your trademark is truly protected in both the short term and the long term is to register it with the U.S. Patent and Trademark Office (USPTO). The benefits of trademark registration are wide-ranging, including the ability to take legal action if someone ever violates your intellectual property rights. Simply put, making sure that your trademark is officially registered can have a significant impact on your company’s bottom line.

To learn more about the advantages of trademark registration, keep reading this blog.

Why Should You Register Your Trademark with the USPTO?

Although you have common law trademark rights the moment you begin using your product or service, there are a number of exclusive rights that come when you formally register your trademark with the USPTO. Some of the most significant benefits of trademark registration include the following:

You get trademark rights in every state and U.S. territory. Regardless of how limited your use may be, official recognition of your mark by the USPTO will give you trademark protection in all 50 states. This could be especially important if a competitor ever infringes on your trademark in a state or region where you don’t normally do business.
You can use the trademark registration symbol. You are not allowed to use the trademark registration symbol ® on your product packaging or any other product-related materials (e.g., a website, advertisements, etc.) until your trademark is registered with the USPTO. When people see this symbol, it can offer immediate credibility because they will know that you have obtained an official trademark. Moreover, the ® symbol can also have the effect of discouraging others from possibly trying to infringe on your trademark because they know that doing so will expose them to liability.
Your trademark will be entered in the USPTO database. The USPTO maintains an online database of all trademarks that have been officially registered in the United States. The database includes information about the trademark, whether the trademark is registered for a good or service, and the date on which the trademark registered. The federal trademark register serves as notice to anyone who might think about violating your trademark, whether the infringement is intentional or unintentional. The USPTO will be able to quickly identify your trademark in the database if anyone ever attempts to register a similar trademark. Additionally, since all marks listed in the database are enforceable, your competitors will know that you can sue them in federal court if they violate your trademark.
You can file a trademark lawsuit in federal court. One of the most important benefits of trademark registration is that you will be able to enforce your trademark with legal action. Although common law trademark rights exist, only a registered trademark holder can file a Lanham Act claim in U.S. district court, which is how you pursue damages when someone violates your trademark. Beyond that, if your case does reach trial, the fact that you have a trademark registration certificate may be sufficient as proof that you own the trademark.
You will have trademark licensing rights. Intellectual property rights can be incredibly valuable, and not just because they are enforceable as a way to ensure brand integrity and maintain your share of the market. When your trademark is registered with the USPTO, it will open up another potential revenue stream by allowing you to sell, license, or otherwise transfer your trademark rights in the future.

Contact the Los Angeles Trademark Lawyers at Tauler Smith LLP

The L.A. trademark attorneys at Tauler Smith LLP have a comprehensive understanding of intellectual property laws, and they are ready to protect your interests in both California state court and federal court. Call us anytime at 310-590-3927 to discuss your trademark case. You can also fill out the online contact form to schedule an initial consultation.

How to Register a Trademark

January 5, 2022/in Intellectual Property /by taulersmith

It isn’t technically necessary to register a trademark in order to get trademark protection because common law trademark rights exist as soon as you create and use a trademarkable feature of your brand. However, many companies still decide to register their trademarks with the U.S. Patent and Trademark Office (USPTO) because doing so comes with several advantages, including the ability to file a lawsuit in federal court if you discover a competitor infringing on your trademark rights.

To learn how to register a trademark and protect your intellectual property rights, keep reading this blog.

What Is the Trademark Registration Process?

Registering a trademark is not a simple matter. For starters, you should expect the trademark filing process to take at least eight (8) months even in the best cases, and up to 18 months if there are delays or legal issues with your application.

There are several stages to the trademark registration process, including the following:

Trademark Clearance Search
Prepare & Submit the Application
Monitor Your Trademark Application Status
Review of the Trademark Application
Publication of Your Trademark
Registration Certificate Issued

Stage #1: Trademark Clearance Search

You must first select a name, design, or other type of mark to be trademarked, and the success or failure of your application for formal trademark recognition will hinge on whether another company already has an existing trademark for a similar name or design. So, before submitting your trademark application to the USPTO, either you or an attorney should perform what is known as a trademark clearance search. By looking through the USPTO trademark database, you can make sure that no one else has already registered a similar trademark before you file your application. The federal trademark register provides information about when a trademark was initially registered, its design, and its product application.

In the event that a trademark already exists for a similar product, the USPTO will likely reject your application. If your application is successful despite the existence of a similar product name or design, you could later find yourself exposed to liability when the other company files a trademark infringement claim against you.

Stage #2: Prepare & Submit the Trademark Application

The USPTO has made it easier to register a trademark by allowing individuals to file their trademark applications online. You can set up a USPTO.gov account on the Trademark Electronic Application System (TEAS). Once your online account has been created, you will be able to file your trademark application. There is a non-refundable application/processing fee of up to $350, as well as additional fees if you need to request more time to show your intent to use the mark. (Assuming your trademark application is ultimately successful, you will then need to pay a filing fee for declaration of use after 5 years, and then a renewal fee every 10 years.)

Stage #3: Monitor Your Trademark Application Status

After submitting your trademark application, it will be your responsibility to keep track of its progress. You’ll be able to do this by using the Trademark Status and Document Retrieval (TSDR) system, which provides easy access to your application and registration information, including the status of any documents that you sent to the USPTO, messages about deadlines for submitting additional documents, and the progress of your application. The system can be accessed 24 hours a day, and logging in requires you to enter either the trademark serial number or the trademark registration number.

You are expected to log in and check your trademark application status at least once every six (6) months, and you should continue checking the status until you’ve received notice that your trademark application was successful. You should also make sure that all personal contact information is correct, including your mailing address and your email address.

Stage #4: Review of the Trademark Application

After you file your trademark application, a review will be assigned to a USPTO examining attorney. The examining attorney will first make sure that your application is compliant with all laws and regulations, and then conduct a thorough search for any conflicting trademarks. At the conclusion of the review, the examining attorney will either accept your trademark or refuse to register your trademark.

If your trademark is rejected, the examining attorney will issue an “office action” via official letter. The office action will provide grounds for the refusal by listing any legal issues that exist with the trademark. If these are minor issues that can be easily remedied, you may be allowed to fix them and still get your trademark approved. You or your attorney will need to respond to the USPTO within six (6) months of receiving the office action. Failure to respond in a timely manner will result in your application being considered “abandoned.”

Stage #5: Publication of Your Trademark

If your trademark application is approved with no objections, the mark will be published in the Trademark Official Gazette (TMOG). This is the official journal of the USPTO, and it is published every week on Tuesday. The publication serves as notice to the public of the existence of your trademark. Once the mark is published in the Trademark Official Gazette, other parties will have just 30 days to take action if they wish to oppose your trademark registration. If an opposition is filed by someone who believes that you are attempting to register a trademark that they already own, the case will go before the USPTO Trademark Trial and Appeal Board (TTAB).

Stage #6: Registration Certificate Issued

After 30 days have passed without objection to your trademark since its publication in the Official Gazette, the registration process will enter the final stage. The issuance of a trademark registration certificate won’t happen quickly, so it is imperative that you continue to monitor your application status online. In many cases, it takes another three (3) months before the USPTO officially registers the mark and sends you a registration certificate. You will then need to file all required maintenance documents (e.g., Declaration of Use, Declaration of Incontestability, etc.) in order to ensure that your registration remains active. This can be done through the online system.

What Happens If Your Trademark Application Is Successful?

At the conclusion of the trademark registration process, the USPTO will issue a decision and either accept or reject your trademark application. If the agency accepts your application and grants your trademark, and there is no subsequent opposition to the trademark after notice is published, you will be able to use the trademark registration symbol ® on your product’s packaging and other materials, which is a good way to deter any possible competitors from attempting to use your trademark.

Once your trademark has been officially registered, the USPTO will enter it in an online database. This will serve as legal notice to everyone in the United States and throughout the world that your trademark is enforceable. If anyone ever violates your trademark rights, you will be able to file a lawsuit in U.S. district court.

Contact the L.A. Trademark Attorneys at Tauler Smith LLP Today

The legal team at Tauler Smith LLP includes Los Angeles intellectual property lawyers who have extensive experience representing both plaintiffs and defendants in trademark disputes. If you received a trademark violation letter, or if you need help protecting your trademark against infringement, we can assist you. Call us today at 310-590-3927 or submit the online contact form to schedule a consultation.

When Can You Use Trademark Symbols?

December 29, 2021/in Intellectual Property /by taulersmith

There are three main symbols to indicate trademark rights: TM, SM, and ®. These symbols often appear as subscript or superscript in a product or service’s marketing materials. If you use one of these symbols, it will indicate that you are claiming trademark ownership. This doesn’t automatically establish your trademark rights since the claim may still need to be litigated in the event of a dispute, but placing a trademark symbol near the relevant word, phrase, logo, or design can still serve as a strong deterrent to any competitors who might want to violate your trademark. The key question is: Exactly when can you use trademark symbols? And what are the differences between the trademark symbols?

To find out when you can use the various trademark symbols on your product packaging, advertising materials, etc., keep reading this blog.

The Benefits of a Trademark Symbol

A trademark symbol can let people know that you are claiming ownership of the trademark. In other words, the trademark symbol is a visual cue to anyone who might be looking at your product, putting them on notice that you hold the trademark. For consumers, the symbol indicates that this particular product is associated with your brand, which can put the consumer at ease that what they are about to purchase is the right product. For competitors, the symbol tells them that this product is off limits if they are thinking about copying it and trying to pass it off as their own, an infringement that not only threatens to take away your customers but can also do serious damage to your brand integrity.

What Do the Trademark Symbols TM, SM, and ® Mean?

There are three different trademark symbols that are commonly used:

TM – This is short for “Trademark,” and it is typically used for goods.
SM – This is short for “Service Mark,” and it applies to services.
® – The R inside a circle signifies that a trademark has been federally registered.

Since you have common law trademark rights the moment you begin using your trademark, you also have a legal right to use the “TM” or “SM” symbols on your product packaging and in ads, depending on whether you want to indicate a trademark (TM) for goods or a service mark (SM) for services. It is only through official registration of your trademark, however, that you can legally use the trademark registration symbol ®.

Restrictions on Use of the Trademark Registration Symbol

It is important to understand that there are certain restrictions on use of the ® symbol, including the following:

The trademark registration symbol can only be used by an officially recognized trademark holder, which means that the mark must be registered with the U.S. Patent and Trademark Office (USPTO). If your trademark application is still pending, you are not allowed to use the registration symbol.
The trademark registration symbol cannot be used for aspects of your brand that are not listed in the federal trademark register. In other words, the particular good or service must, in fact, be officially trademarked and viewable in the USPTO online database.
The trademark registration symbol must be placed near or around the word, slogan, logo, or design that is actually trademarked. It should be clear to the consumer which good or service has been registered.

Contact the California Trademark Attorneys at Tauler Smith LLP

If someone has infringed on your IP rights and you need to enforce a trademark or copyright, having an experienced California intellectual property lawyer on your side can make all the difference. The Los Angeles trademark lawyers at Tauler Smith LLP are here to help you. Call us anytime at 310-590-3927 or submit the contact form to schedule a consultation.

What Is Trade Dress?

December 22, 2021/in Intellectual Property /by taulersmith

If you are a business owner, you may know about the various options you have for protecting your intellectual property rights, such as trademark, copyright, and patent rights. Depending on the nature of your business, another IP right that you might possess is trade dress. What is trade dress? In the broadest terms, trade dress refers to the visual appearance of a product or service, or its packaging, that lets consumers know the product’s source.

To learn more about trade dress, including how it differs from trademark, keep reading this blog.

What Kind of Intellectual Property Right Is Trade Dress?

Trade dress is an intellectual property right that specifically applies to the promotional aspects of a product or service. For example, trade dress would protect the packaging of your product against infringement by a competitor, as long as your packaging is unique and can be clearly distinguished from other kinds of packaging. In addition to product packaging, examples of trade dress for a product might include a product display, or even the design of the product itself. For a service, trade dress can apply to the décor or interior design of a business location or space. (E.g., the look, feel, and ambience of a restaurant chain or theme park.)

Just as with trademark rights, trade dress that has been registered with the U.S. Patent and Trademark Office (USPTO) can be protected in court by having an experienced California trade dress attorney file a Lanham Act claim. Trade dress is also similar to trademark in that there are common law trade dress rights: the use of a particular packaging design or logo is what creates trade dress, regardless of whether it is listed in the federal trademark register. If a competitor violates your trade dress by using packaging or other design aspects that might confuse consumers when it comes to the origin of the product, you may need to take legal action.

When Can Trade Dress Be Protected?

While trademark rights can be both common law and statutory, trade dress is typically a common law IP right. That’s because there are significant restrictions on the types of trade dress that may be recognized by the USPTO, and it can be extremely difficult to get your trade dress listed in the federal trademark register. One of the major advantages of receiving official trademark recognition from the USPTO is that the trademark will be enforceable in U.S. district court if you ever need to file a lawsuit against an infringing competitor, and the same is true for trade dress. That’s why, despite the potential difficulties in receiving approval, it may still be worth it to file a trade dress application with the USPTO.

In order to register your trade dress, certain conditions must be met:

The trade dress must be inherently distinctive, or it must have a secondary meaning.
The trade dress must be non-functional.

What Does “Inherently Distinctive” Mean?

An “inherently distinctive” trade dress is generally one that is novel, unusual, and largely inseparable from the product or service itself. In cases involving trade dress infringements, courts tend to issue more favorable rulings for plaintiffs looking to protect trade dress for services as opposed to products. The United States Supreme Court has ruled that the décor of a restaurant can be inherently distinctive in certain circumstances, whereas product designs alone cannot be inherently distinctive without having acquired uniqueness through advertising and consumer reaction.

If a product’s packaging is found to be similar to the packaging for other products on the market, this doesn’t necessarily doom a trade dress claim to failure. That’s because the plaintiff would still have an opportunity to show that, despite the similar packaging used by other brands, this particular brand’s packaging has acquired a “secondary meaning” among consumers who tend to associate the packaging, design, etc. exclusively with the one brand. For example, the design of the Coca-Cola bottle is shaped in a way that has come to be associated with the Coca-Cola brand. Even if other sodas or beverages use a similarly shaped bottle, consumers instantly connect this particular bottle’s shape to Coca-Cola. This is why Coca-Cola would have a viable claim if a competitor infringed on their trade dress.

Functional vs. Non-Functional Trade Dress

Since trade dress tends to focus more on a product’s packaging than on the actual product, courts have held that trade dress can only be protected legally when it involves visual qualities that are used to market a product or service. Although the Coca-Cola bottle is technically functional in that it contains the beverage being sold to consumers, that’s not the source of the company’s trade dress rights. Since a bottle with a different design and shape could serve the same function, it’s clear that the Coca-Cola bottle was designed primarily for advertising and promotional purposes. This non-functional aspect of the bottle’s design is why it can be afforded trade dress protection.

Contact the Los Angeles Trade Dress Attorneys at Tauler Smith LLP

Whether you’ve received a letter alleging a trade dress violation, or you’ve become aware that someone might be infringing on your trade dress, it is imperative that you speak with a knowledgeable intellectual property attorney as soon as possible. The Los Angeles trade dress lawyers at Tauler Smith LLP represent both plaintiffs and defendants in IP cases, and we are prepared to help you resolve your trade dress case.

To get started, call the Tauler Smith legal team at 310-590-3927 or fill out the online contact form.

Best Defenses to Trademark Infringement Claims

December 15, 2021/in Intellectual Property /by taulersmith

A trademark is supposed to provide protection against infringement by a company that misleadingly uses another company’s slogan, logo, or design to confuse consumers about a product’s origin. But it is sometimes the case that a trademark infringement claim is brought in bad faith by a plaintiff who either misunderstands the law or who is trying to make a quick buck. When this happens, it may be necessary to secure the services of an experienced California intellectual property lawyer who understands IP law and who can offer the best defenses to trademark infringement claims.

To learn more about strong defenses that may be raised in your trademark infringement case, keep reading this blog.

What Defenses Are Available in a Trademark Dispute?

A trademark dispute often arises when one company is accused of interfering with another company’s branding and marketing strategies. If you received notice that your company has infringed on someone else’s trademark, a knowledgeable Los Angeles trademark lawyer can help you explore your best options for contesting the claim.

Some of the most common trademark defenses include the following:

Non-Infringement: When a person or company sells or markets a product, good, or service that has a similar name, logo, or design to another product in the marketplace, it may constitute a violation of the other party’s exclusive trademark rights. If the other party has a registered trademark with the U.S. Patent and Trademark Office (USPTO), that party may then seek to bring an end to the unauthorized use of the trademark by filing a lawsuit. But if the goods or services in dispute are not similar in such a way that they are likely to confuse the average consumer, then you may be able to defend yourself against a trademark infringement claim by asserting that there was no infringement at all.
Fair Use: If a competitor’s use of the mark is likely to cause confusion among consumers, then it could constitute trademark infringement. But there are still limits on exactly what kind of words or designs can be trademarked, and the trademark fair use defense establishes one of those limits. The more generalized or broad a particular use is, the less likely a court is to enforce the trademark. For example, a fruit company with a symbol or design incorporating a red apple may not be able to enforce its trademark, whereas a computer company logo incorporating a multi-colored apple with a piece missing from the side might constitute a violation of Apple’s trademark rights because it is likely to cause confusion between the brands. In other words, any use of a word or symbol that matches that word or symbol’s plain meaning may constitute a fair use, while other uses may not constitute a fair use.
Prior Use: “Prior use” is exactly what it sounds like. Basically, if you can show that you were using the trademark before the other party, then any subsequent use by them would be an infringement on your trademark rights. Since trademark rights are established by actual use, it won’t necessarily matter whether the other party had already registered their trademark.
Different Markets: Even if a particular product is only sold in one state, the product’s trademark is protected in every state across the country. If the products are sold exclusively in certain markets, however, then brand confusion may be unlikely, and the company might find it difficult to enforce the trademark in the other market.
Abandonment: Sometimes, the fact that a trademark was registered isn’t enough to protect it against use by another company. For example, if the trademark registrant has failed to use the trademark for a period of at least three (3) years, this may be considered “abandonment” of the trademark rights. That’s because trademark rights can only be enforced when the trademark is being actively used, and it won’t matter if the abandonment was unintentional. Additionally, a trademark registrant must also vigorously enforce their trademark or risk losing their trademark rights. (Along those same lines, if you are a trademark owner and you wish to protect your rights, you may need to file a trademark renewal application with the USPTO every 10 years.)

Contact the Los Angeles Trademark Lawyers at Tauler Smith LLP

If you’ve been served notice of a trademark violation lawsuit, the skilled Los Angeles trademark attorneys at Tauler Smith LLP can help you raise effective defenses against the infringement claim. Depending on the circumstances, it may be possible to avoid costly legal action by getting the case dismissed early in your favor, or by reaching an agreement with the plaintiff to drop their claim.

Call us today at 310-590-3927 or fill out the firm’s contact form.

Copyright vs. Trademark vs. Patent

October 4, 2021/in Intellectual Property /by taulersmith

“Intellectual property” covers a wide range of business assets, such as books, screenplays, photos, movies, computer software code, inventions, and formulas. Copyrights, trademarks, and patents are the main types of intellectual property. Federal law provides strong protections for the creators of original works, inventors, and licensors of IP rights, but the law is complex. In fact, people often confuse copyright, trademark, and patent because each kind of intellectual property protects creators or licensors against unauthorized use or infringement by others, but they do so in different ways. If you are involved in an intellectual property dispute, you need to have a solid understanding of what the law says with respect to copyright vs. trademark vs. patent.

To learn more about the differences between copyright law, trademark law, and patent law, keep reading this blog.

What’s the Difference Between Copyrights, Trademarks, and Patents?

Intellectual property can be an extremely valuable business asset. That’s why it is important that only the rightful owner of the asset’s IP rights be allowed to exploit the intellectual property for profit, whether that involves selling it or licensing it. The three most common tools used to protect the intellectual property rights of certain types of assets are:

Copyrights

As set forth in the Copyright Act of 1976, copyright protects original creative works like novels, songs, paintings, videos, photographs, drawings, clothing, jewelry, and even websites. Only the copyright holder may copy, sell, perform, or display the work for profit, or license the work to someone else for commercial reproduction, distribution, performance, or display.

When it comes to securing copyright ownership, the original creator of a work technically doesn’t need to do anything to acquire the copyright of that work. But there are a number of benefits only available to those who actually register their copyright with the U.S. Copyright Office. For example, if someone does infringe on your copyright, you will first need to file for copyright registration before you can bring a lawsuit in federal court to enforce your copyright. Additionally, copyright registration will probably make it easier for you to back up your case in court because there will be a public record of the copyright claim: all officially copyrighted works published after 1978 are deposited with the Copyright Office and entered into an online database.

Trademarks

While copyright applies to original works of authorship, a trademark covers unique words, phrases, slogans, symbols, and designs that can be used to identify a good, product, or service. A requirement for a company trademark is that the name or logo being trademarked should distinguish the product or service from any other products or services. For example, the product name for Coca-Cola is trademarked because it stands out from all other soft drinks on the market, and everyone who hears the name knows exactly what it refers to.

Just as with copyright law, a trademark does not actually have to be registered in order to get trademark ownership. Even without registering the trademark, you can still use common law to protect against trademark infringement by competitors who attempt to copy the look of your product and pass it off as their own. Just as with copyright law, however, official registration of your trademark comes with certain advantages, including the ability to file a lawsuit in federal court to enforce your trademark against unauthorized use.

To get trademark protection solely within your home state, or in the state where you conduct business, you must register with that particular state. To get federal trademark protection that crosses state boundaries, you must file a trademark registration application with the United States Patent and Trademark Office (USPTO). Once you’ve registered your trademark, you will be allowed to use the registered trademark symbol (®). Otherwise, you are limited to the common law trademark symbol (™).

Patents

Generally speaking, patent law protects inventors by giving them the exclusive right to make, use, copy, or sell their inventions or discoveries, or to license their inventions to another person or entity. Obtaining a patent can be extremely difficult, and it often requires the assistance of an experienced intellectual property lawyer.

Unlike with copyrights and trademarks, the only way to avail yourself of patent protection is to apply for and be granted a patent by the U.S. Patent and Trademark Office (USPTO), the same agency that handles trademark applications. Absent patent registration, the formula or process used in the invention may be considered a “trade secret.” The main advantage to obtaining a patent is that you can then sue anyone who infringes the patent by using or selling your invention without consent. But patent registration does come with a significant downside: you must publicly disclose the unique process or composition of your product. For certain companies that wish to maintain trade secrecy (e.g., pharmaceutical drug manufacturers), this can present a dilemma.

Contact the California Intellectual Property Lawyers at Tauler Smith LLP

If someone has infringed on your exclusive intellectual property rights, or if you have been accused of violating someone else’s intellectual property rights, your best move is to speak with a knowledgeable IP lawyer immediately. The California intellectual property attorneys at Tauler Smith LLP, with a main office in Los Angeles, are prepared to help you bolster your IP claim or build a strong defense against an accusation of copyright or trademark infringement. Call us now at 310-590-3927 or fill out the online contact form.