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Am I violating a federally registered trademark?

San Francisco, CA |

Thank you in advance.
My company's name is "Daily Zen Bento," and we operate in San Francisco, California.
I have recently received a cease and desist letter to discontinue the usage of this name
by ZB Incorporated (Zen Bento), an Idaho corporation that does not operate in California.

I have read Daniel Ballard's comment in the page:

http://www.avvo.com/legal-answers/am-i-violating-a-federally-registered-trademark--164051.html

which states:

The federal registration does NOT confer on the registrant the right to prevent all others from using the mark in geographic areas where the registrant is not using the mark (and, therefore, where the registrant owns no trademark rights).

I'd like to know if Daniel Ballard is correct in this matter.

Additional info: Zen Bento is registered to be used for fast food and restaurant service. Our company offers a catering service. They also want us to discontinue our domain name, www.dailyzenbento.com. If I am correct, they would need to buy the domain from us, is this correct?

Attorney Answers 3

Posted

Assuming the registration is valid (and there are various reasons why it might be invalid, which cannot be explained fully here -- especially in the abstract), it accomplishes various things, including the following:

1) It grants the owner/registrant nationwide rights in the mark, AS IF the owner were using the mark throughout the 50 states -- even if s/he is not. This principle is sometimes referred to as "constructive nationwide use."

2) The registration "freezes" any EXISTING remote geographical uses in connection with similar goods and services to the region and scope of use that pre-dates the registration. In other words, the registration does not suddenly make the previously existing business a trademark infringer, BUT it does prevent that business from expanding.

3) The registration *does not* prevent others from using a similar mark in connection with goods or services where no "likelihood of confusion" would result; for example, if someone registered "XYZ" in connection with dairy products, someone else could probably go ahead and start a new business using "XYZ" in connection with accounting services. HOWEVER, once a mark becomes "famous," this no longer holds true. For example, one probably can't start a business selling "Cadillac milk" because the "Cadillac" mark is famous enough to quality for federal protection against so-called trademark "dilution." There are also state causes of action for dilution, which don't always require that a mark be famous, but these tend not to carry the day in trademark disputes.

On a final note, I should add that there seems to be a misconception that trademark registrations are gospel. They are not. They can be challenged on a variety of bases, even after they are issued. To illustrate, Yves Saint Laurent is currently seeking to cancel Christian Louboutin's long-registered trademark in its signature "red soles" on various bases, including fraud on the Trademark Office and "functionality": http://lawoffashion.com/blog/story/07/14/2011/71 . It is true, as the previous answer indicates, that after five years after registration and substantially exclusive use, one can no longer challenge a registrant's mark on the ground of "mere descriptiveness," but a challenge for "genericism," for example -- along with many other bases for challenge -- remains.

I hope this has been helpful.

This answer does not constitute legal advice, and should not be relied on in place of a consultation with an attorney. No attorney-client, contractual, or fiduciary relationship has been formed as a result of this post or anyone's use of it. The only manner in which an attorney-client relationship can be formed with Charles Colman Law, PLLC, is via a countersigned letter of engagement on CCL letterhead. Charles Colman is only admitted to practice law in New York State, and before New York federal district courts. Although he endeavors to answer all Avvo questions knowledgeably, he cannot and does not provide any guarantees as to the thoroughness or accuracy of his responses.

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1 comment

Asker

Posted

Thank you very much Mr. Colman.

Posted

The attorney's post you are referring to makes some good technical points, but confounds the issue a bit. A federal trademark registration creates a presumption of trademark rights and places the burden on the accused infringer to prove that the mark is not entitled to trademark infringement.

The trademark I believe you are referring to can be found at the following address:

http://tess2.uspto.gov/bin/showfield?f=doc&state=4004:1dupu6.2.1

This mark is younger than 5 years old, so is not entitled to the presumptions of a 5-year old mark (assuming it made the proper filings at that time).

As for your specific concerns regarding the cease and desist letter, you should not address the specific infringement issues online. Such discussions are not private and could prejudice your arguments with the other side. You should contact an attorney to discuss this.

Please see my guide regarding responding to cease and desist letters at the following link:

http://www.avvo.com/legal-guides/ugc/cease-and-desist-letters--dont-burry-your-head-or-panic

Many attorneys offer a free consultation. You should make sure that your attorney responds to the cease and desist letter in a timely fashion so as to avoid an infringement lawsuit.

Joshua Burt
The Law Office of Joshua A. Burt
BurtLegal.com

The above answer should not be considered and does not constitute legal advice. You should not rely on any of this advice because each case is fact specific and could be subject to different local, state, and federal laws. No attorney-client relationship exists based on this response.

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2 comments

Asker

Posted

Thank you very much Mr. Burt for your input. It was very insightful. May I ask what the significance of a "5-year old mark" is? If a certain trademark is less than 5-year old, does that imply something that is favorable to my situation? I appreciate it.

Joshua Alan Burt

Joshua Alan Burt

Posted

The 5-year rule I refer to is the Section 15 filing that a trademark registrant can make after 5 years of continued use of the mark following registration. Upon filing of the SEction 15 Declaration of Incontestability, the mark is considered incontestable and cannot be challenged as being descriptive (and, therefore, invalid), among other things. It creates a heavier burden on the potential infringer/defendant. Since this mark has not reached that milestone yet, you have more options in defending your use of your mark

Posted

Ok, I'll chime in.

While a federal registration confers on the registrant the presumption that the registrant owns exclusive nation-wide rights to use a mark [15 U.S.C. § 057(c)], there can be no likelihood of confusion [and therefore no infringement -- or injunction against a junior user] until the registrant evidences, with objective evidence, that it will soon use the mark in the geographic area where the alleged infringer does business. See, e.g., What-A-Burger of Virginia, Inc. v. Whataburger, Inc., 357 F.3d 441 (4th Cir. 2004) ("[T]he injunctive remedy does not ripen until the registrant shows a likelihood of entry into the territory in question.") and 4 McCarthy at § 26:33.

So ... for example, a business that owns a federal registration for XYZ to brand squirt guns sold only in stores on the west coast has no trademark infringement cause of action against someone who subsequently brands its squirt guns XYZ and sells those products only on the east coast.

Except for the intent to use and international bases for registration [not applicable in your situation], a federal registration of trademark rights is simply recognition of EXISTING rights created under state common law. There are enforcement benefits to federal registration but such a registration CANNOT expand the geographic scope of a trademark owner's rights -- those can ONLY be created by use in commerce in whatever area the mark is, or will very soon be, used in commerce.

So, with respect, I did not conflate anything. And you need to speak with a trademark attorney who knows his stuff. Good luck.

The above is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.

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2 comments

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

15 U.S.C. § 1057(c)

Asker

Posted

Hi Mr. Ballard, Thank you so much for the response. It was very insightful.