The Law Office of Robert L. Risley

Office: 626-397-2745


Trademarks are an essential part of Worldwide Commerce. In the United States, trademarks are sanctioned and controlled by the Lanham Act 1 and the Common Law. A trademark designates the source or origin of goods and distinguishes them from those made by others. A Service Mark is like a trademark, except it designates the source of a service, not goods.

A trade or service mark is “any word, name, symbol or device, or any combination thereof used by a person to identify the source of goods or services 2. Famous marks include: Coca-Cola, Pepsi, Jeep, Chevy, Microsoft, Dell, Big Mac, Whopper, and Nike.

Trademarks serve several important functions. They distinguish and identify the source of goods and services to assure consistent quality. They advertise and promote products and services, and protect consumers from confusion. Trademark laws discourage and prevent the use of confusingly similar marks for the benefit of both consumers and mark owners. “Likelihood of confusion” is therefore the hallmark of trademark enforcement law. The law endeavors to protect the trademark owner from (1) diversion of sales, (2) disparagement of the owner’s name, and (3) dilution of the symbol or name.

The law is applied differently, depending on the strength of the mark. The strongest to the weakest types are: “fanciful”, “arbitrary,” “suggestive,” “generic”. A generic name cannot serve as a trademark and is not protectable.

Trademarks are acquired and maintained by use of the mark. The first person to use the mark has priority at Common Law. Common Law protections parallel federal protections under the Lanham Act. However, filing a federal application confers nationwide right of priority. There are a number of treatises, publication documents, and statutes, and other authorities which deal more thoroughly with trademark law. Although citizens apply for trademark protection with the United States Patent and Trademark Office, normally those applications are prepared in advanced by lawyers. Protection of a trademark is always handled by legal counsel in the federal courts whenever the Lanham Act or Common Law is called in to play.3