An Administrator's Guide to California Private School Law

Chapter 20 - Intellectual Property

Schools do not need to register their trademark to establish their protectable rights; “common law” trademark rights can be based on the legitimate use of the mark in commerce. 2554 However, there are many reasons why schools chose to register their names and/or logos with the USPTO. Most schools invest a substantial amount of time, money, and resources into building a reputation around their name and other marks. By owning a federal trademark registration on the Principal Register, schools are able to better protect and promote their rights. Among other things, federal trademark registration provides the following advantages:  A legal presumption of the school’s ownership of the mark;  The exclusive right to use the mark nationwide in connection with the goods/services listed in the registration;  Nationwide public notice of the school’s claim of ownership of the mark;  Listing in the USPTO’s online databases;  The right to use the federal registration symbol “®”; and  The ability to bring an action concerning the mark in federal court. 2555 In California, the Secretary of State maintains trademark registrations. 2556 General state provisions governing trademarks are found in the California Model State Trademark Law. 2557 However, this Guide focuses on federal law and registration because California law is limited in the protection it offers. Specifically, under the California Model State Trademark Law, trademark rights are protected only in the State of California. Due to the internet and other interstate activities, schools should seek trademark registration with the USPTO. 1. A CQUIRING T RADEMARK R IGHTS As discussed above, it is not necessary for a school to register a mark to establish its rights because trademark rights are established by use and not by registration. Generally, the first person or entity to either use a mark in commerce or file an intent-to-use application with the USPTO has the right to the use and register the mark. 2558 However, as discussed above, registration of a trademark is recommended because it provides important benefits including: “constructive notice to the public of the registrant’s claim of ownership of the mark; a legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration; the ability to bring an action concerning the mark in federal court; the use of the U.S registration as a basis to obtain registration in foreign countries; and the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.” 2559 Trademarks must be renewed every 10 years and can be renewed forever as long as they are being used by the entity. 2560

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