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Help, my AZ business is being threatened with trademark litigation

Posted by Steve Vondran | Nov 03, 2014 | 0 Comments

Arizona Trademark Lawyer - From Trademark Registration and Brand Protection, to UDRP Domain Name Disputes and Federal Trademark Litigation.


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What do you do when you have a state registered trademark but get sued for violating another companies federal trademark?  First thing you do is retain trademark counsel.

Does Arizona have a state trademark law?

Yes.  If you plan to operate only in Arizona (which is probably rare given the use of the internet and websites that seek to do global eCommerce), you can apply solely for state trademark rights.

BUSINESS LAW TIP:  In most cases, you already get “common law rights” in your business name (common law rights are rights based on use of the name in commerce), so state trademark law is good and inexpensive to get, but it is ALWAYS BETTER TO GET A FEDERAL TRADEMARK AS OPPOSED TO A STATE TRADEMARK.  Federal trademarks allow many benefits, including the right to use the “R” symbol, the right to file federal trademark actions, and the right to seek to stop the importation of infringing goods with U.S. Customs.

How to register an Arizona trademark?

Here are the steps to register a trademark or service mark in Arizona:

1.  Conduct a preliminary name search so you pick a name likely to be approved and which will not infringe on other tradenames or trademarks ()

2.  Fill out the form provided below (#1 on our resource list)

3.  Describe your mark, logo or service (attach three samples)

4.  Pay the $15 filing fee

5.  You will receive a certificate once the mark is registered

Note that the form to get a TRADENAME registration are separate from the form to apply for a trademark.  The fees are similar.

What are the Arizona trademark classifications

A.R.S. 44-1449 sets forth the various trademark classifications in Arizona.

How long does a Arizona trademark last?

Trademarks in AZ are good for 10 years.  Trade names are good for 5 years.  Renewal rights exist.

What is the difference between a trade name and a trademark?

A tradename is basically a “doing business as” or a fictitious business name.  A tradename can be used to give your business a professional image especially where you are a sole proprietor (ex. Joe Jones Software doesn't sound as professional as “Dynasty Software Company”).

A trademark is a name, symbol, logo, or other mark that designates the source of goods (trademark) or services (service mark).  A trademark protects your brand name and allows you to invest in promoting your brand.  See more information on trademarks.

What is the difference between getting state trademark rights and federal trademark rights?

A state trademark is good to establish local rights to a name or trademark.  But a federally registered trademark through the USPTO (United States Patent and Trademark Office) is the holy grail and what every business should shoot for.  A federal trademark gives constructive notice nationwide and is effective to help build your brand.

What are my rights if I am sent a cease and desist letter from a holder of a federally registered trademark when I have state trademark rights?

 This can be a complicated legal issue.  If you were operating or conducting business before the holder of the federal trademark, it might be possible that the federal trademark should not have issued.  In such a case, you might be able to file a trademark cancellation proceeding urging priority / prior use in front of the TTAB (Trademark Trial and Appeal Board).  In other cases, the federal trademark owner may have pre-dated your business giving the federal trademark holder greater rights.  This can raise issues of trademark and business litigation which we can help you with as either a Plaintiff or Defendant, or in a mediation or arbitration setting.

If someone is infringing my trademark should I use a cease and desist template I find online?

No.  We can draft a cease and desist letter for a low flat rate fee through our ZipCounsel service.  Why use something that looks unprofessional cease and desist template and does not come from a law firm?  You want your letter to be taken serious, and using a boilerplate template you find online is not going to pack as much punch as a trademark infringement or copyright infringement letter sent from your IP counsel.  We make having intellectual property affordable and accessible to businesses of all sizes.  Contact us at the number below to discuss our trademark and business law services.

How to get trademark help to protect your brand and your business from a trademark bully?

 In the 2 billion channel universe, your brand is everything.  It's a digital jungle out there and the law has proven to follow slowly behind the fast pace of emerging technology.  Sorting out trademark, tradename and brand rights issues can be very complex.  You need an intellectual property firm that is:

1.  Smart

2.  Affordable

3.  Willing to turn over every stone in their fight for your business and your brand

Our law firm is a civil litigation and business law firm.  Attorney Steve Vondran is chief intellectual property counsel at the firm. He graduated law school with a certificate in intellectual property studies, and has worked for major brands such as Experian and Chevrolet.  Mr. Vondran has started his own companies and understands your corporate branding issues.  He was former elected executive counsel member for the Arizona State Bar intellectual property section, and a member of the International Trademark Association and American Intellectual Property Lawyer's Association (AIPLA).  We can help you whether you are a potential Plaintiff or potential Defendant in a civil lawsuit, state or federal court, or in an intellectual property arbitration or mediation.  Contact us at the number below for more information.

What is the legal test for infringement of a trademark?

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PODCAST:  Click on the image above to watch this podcast that discuss the nine factors federal courts will look at in the 9th Circuit (per the Sleekcraft case) to determine whether or not there has been infringement.

Can a Defendant recover attorney fees when their alleged misconduct resulted in a finding of fair use?

Yes.  The Lanham Act allows for an award of attorney's fees in "exceptional cases." 15 U.S.C. § 1117(a). See also McClaran v. Plastic Indus., Inc., 97 F.3d 347, 364 (9th Cir. 1996). Fees under the Lanham Act are appropriate "when a plaintiff's case is groundless, unreasonable, vexatious, or pursued in bad faith." Stephen W. Boney, Inc. v. Boney Servs., Inc., 127 F.3d 821, 827 (9th Cir. 1997).

Analysis of Mattel's trademark and trade dress infringement claims indicates that Mattel's claims may have been groundless or unreasonable. Forsythe's use constituted nominative fair use and was protected by policy interests in free expression. Given the lack of reasoning provided by the district court, we vacate and remand its denial of attorney's fees and direct it to reassess the propriety of awarding Lanham Act fees to Forsythe.

See Mattel Inc. v. Walking Mt. Prods., 353 F.3d 792, 816 (9th Cir. 2003)

Vondran Legal Arizona Trademark Services

Contact us if your case falls into one of the following areas:

  1.  Trademark registration
  2. Federal trademark infringement lawsuit (often accompanied with unfair competition, copyright infringement, trade dress and other Lanham Act claims)
  3. UDRP domain name disputes (cybersquatting on your company domain name)
  4. Response to USPTO office action letter
  5. IPR Customs and Border Protection Filings (to protect your goods from counterfeits at over 300 points of entry)
  6. Filing with the Trademark Clearinghouse (to protect your brand against cybersquatters)
  7. Arizona trademark registration and disputes

We also have offices in California (Orange County, Los Angeles County and Bay Area - San Francisco, San Jose, Silicon Valley).

Arizona state trademarks resources

1.  Application for Arizona trademark (Arizona Secretary of State).  This is the form to get a trademark or servicemark.  If you want to get a “tradename” registered use the next form.

2.  Arizona Tradename application (note: registration of a trade name is not legally required in Arizona)

3.  Arizona Secretary of State Trademarks and Tradenames guide

4.  What is the difference between a trademark and tradename?

5.  AZ trademarks and tradenames Q & A

Contact an Arizona Trademark Law Firm.

If you need a business lawyer to assist you in forming a corporation or LLC, or helping you in state or federal trademark or tradename litigation contact us at (877) 276-5084 or fill out the contact form below to have one of our trademark attorneys contact you.

About the Author

Steve Vondran

Thank you for viewing our blogs, videos and podcasts. As noted, all information on this website is Attorney Advertising. Decisions to hire an attorney should never be based on advertising alone. Any past results discussed herein do not guarantee or predict any future results. All blogs are written by Steve Vondran, Esq. unless otherwise indicated. Our firm handles a wide variety of intellectual property and entertainment law cases from music and video law, Youtube disputes, DMCA litigation, copyright infringement cases involving software licensing disputes (ex. BSA, SIIA, Siemens, Autodesk, Vero, CNC, VB Conversion and others), torrent internet file-sharing (Strike 3 and Malibu Media), California right of publicity, TV Signal Piracy, and many other types of IP, piracy, technology, and social media disputes. Call us at (877) 276-5084. AZ Bar Lic. #025911 CA. Bar Lic. #232337


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