An Administrator's Guide to California Private School Law Compendium

C HAPTER 20 – I NTELLECTUAL P ROPERTY D OCUMENT 20.A C HECKLISTS F OR P ROTECTING C OPYRIGHTS , T RADEMARKS , A ND T RADE S ECRETS 1. Trademarks Acquiring Trademark Rights  Identify school names, logos, symbols, and slogans used by the school that identify its services and goods. The first person or entity to use the service mark in commerce, or the first to file an intent-to-use application with the Unites States Patent and Trademark Office has the right to use and register the mark.  While it is not necessary, we recommend that the school seek registration of the mark as it provides the school with greater protections including a legal presumption of ownership of the mark. Consult legal counsel experienced in intellectual property matters for information as to what information is needed for the registration process. Applications are accepted electronically via the Trademark Electronic Application System available at http://www.uspto.gov/teas/index.html .  Provide notice to the public of the school’s registered marks by using the ® symbol, and ensure that the symbol is only used for goods and/or services covered by the registration.  Provide notice to the public of the school’s unregistered marks by using the ™ symbol.  Work with legal counsel to ensure timely filings and renewals of trademarks. (Remember that trademarks must be renewed every ten (10) years.)  To the extent the school wishes to permit outside third parties to use one of its trademarks, enter into written licensing agreements with those parties. Consult with legal counsel to ensure the school’s rights are protected in those agreements. Preventing Trademark Infringement  Law firms that can assist the school with registration also generally provide services for monitoring unauthorized use of the mark. There are other monitoring services available. The school can also police its mark by monitoring competitors’ activities and Web sites and/or using third-party services, such as signing up for search engine alerts on your key marks (e.g., www.google.com/alerts ).

An Administrator’s Guide to California Private School Law - Compendium ©2019 Liebert Cassidy Whitmore 259