Trademark – Any word, name, symbol, or device, or any combination thereof, used by a person to identify and distinguish the goods of that person, including a unique product, from those manufactured or sold by others, and to indicate the source of the goods, even if that source is unknown. (California Business and Professions Code section 14202(a).)
Service Mark – Any word, name, symbol, or device, or any combination thereof, used by a person to identify and distinguish the services of that person, including a unique service, from the services of others, and to indicate the source of the services, even if that source is unknown. Titles, character names used by a person, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor. (California Business and Professions Code section 14202(b).)
Trade Name – Any name used by a person to identify a business or vocation of that person. (California Business and Professions Code section 14202(d).)
California statute does not provide for the filing of trade names or fictitious business names at the state level. A trade name or fictitious business name should be filed with the clerk of the county in which the company has its principal place of business. (California Business and Professions Code section 17915.)
A specimen demonstrates how the mark is being presented to the public. Specimens can be in a wide variety of forms.
For a trademark , the specimen can be a label of the product sold or a photograph of the mark on the product itself, if the product is too big or bulky to send through the mail. For example, if the mark is printed on the front of t–shirts, three photographs of the mark on the t–shirt could be sent rather than sending three t–shirts.
For a service mark, the specimen can be a sample of how the services are being advertised. A “yellow page” advertisement, a flyer, a business card, or a photograph of a billboard advertising the services could be submitted. The specimen for a service mark must demonstrate the nature of the services rendered. The specimen must be something that could be handed to any average member of the public and that person would immediately know what services are being provided by the company using the mark.
Photocopies, computer printouts, or camera ready layouts are not accepted as specimens. The company must have gone into production and have released the product or service into the market prior to registration of the trademark or service mark with the Secretary of State.
You must either be advertising your services and provide us with the advertisement, or you must have tags, labels, or photographs of your products bearing the mark you wish to register. You cannot register a trademark or service mark until you have provided your services or sold your product with the mark you wish to register. In order to register your mark with this office, you must have specimens. We use the specimens to make sure the mark is being used in commerce and to make sure the word or phrase that is being registered functions properly as a trademark or service mark. If you do not have specimens, you must wait until you have proper specimens before you may register the mark.
The registration is active for five years. At the end of five years, the mark may be renewed for another five years. The mark may be renewed every five years as long as the mark is in continual use.
Trademarks and service marks must be filed on separate applications. They require separate fees and submittal of separate specimens. The fee for filing a trademark or a service mark is $70.00 per classification per mark. An application may be downloaded or requested via telephone or written request to the Trademark Unit of the Secretary of State. Please see contact information for the correct address and telephone number.
If a name and design are used together and constitute one complete mark, they may be filed on the same application. If a name and design are used separately, as two separate marks, then two separate applications with separate fees and two sets of specimens must be submitted.
To ensure that all issues are considered and addressed appropriately, you should consult with private legal counsel.
No, however it is recommended that the mark be registered at the state level as well to have a record of the mark.
Registration in and of itself does not guarantee exclusive ownership of a mark. To ensure that all issues are considered and addressed appropriately, you should consult with private legal counsel.
Commissioner For Trademarks
P.O. Box 1451
Alexandria, VA 22313–1451
The list can be found through the United States Patent and Trademark Office website or at 37 Code of Federal Regulations, part 6, section 6.1.
