An Administrator's Guide to California Private School Law

Chapter 20 - Intellectual Property

2. T RADEMARK R EGISTRATION The USPTO processes all trademark registrations. While an entity does not need to hire a lawyer to file a trademark application with the USPTO, many entities find legal assistance helpful due to the various procedures and rules involved in the application and registration process. Applications are accepted electronically via the Trademark Electronic Application System available at http://www.uspto.gov/teas/index.html. Applicants are expected to complete and fulfill all legal requirements of the application and registration process. 3. L ICENSING Once a school owns a registered trademark, it can enter into licensing agreements to allow others to use the trademark. The owner of a trademark can license, or authorize, others to use the marks. Licensing means the owner provides permission for the licensee to use the intellectual property rights. A license is used when the owner of the intellectual property wants to retain the right of ownership, but is willing to allow another party to use its intellectual property under certain conditions. The license should be issued for a specific use or time period. Schools can enter into multiple licensing agreements or choose to license to one party exclusively. 2561 Licenses can be a source of revenue for schools; however, schools may also opt to provide licenses free of charge. Because a licensing arrangement alters the parties’ legal rights and obligations, it should always be set forth in a written agreement. 4. P REVENTING T RADEMARK I NFRINGEMENT The owner of a trademark may sue another entity or person who uses the mark without permission for trademark infringement. 2562 To support a trademark infringement claim in court, the owner must prove that it owns a valid mark, that it has priority in the use of the marks, and that the infringer’s mark is likely to cause confusion to consumers. 2563 A school seeking to enforce its trademark rights needs to show that another entity is using its mark in a manner that could lead to a “likelihood of confusion” among consumers. 2564 In other words, the school would need to show that the unauthorized use of its mark constitutes infringement because it is likely to cause consumer confusion as to the source of those goods or services. For example, if a school has a trademark of its school name, and a different school operates with a similar name or logo, the first school to use the name can argue that there is confusion in the marketplace because students or parents may believe the second school is associated with the first. In determining whether consumers are likely to be confused when related goods or services use the same mark, courts will typically look to several factors, including: (1) the similarity of the marks;(2) the strength of the marks; (3) the relatedness or proximity of the goods; (4) marketing channels; (5) the degree of care that is likely to be exercised by the consumer; (6) the intent in selecting the mark; (7) evidence of actual confusion; and (8) the likelihood of expansion of the parties’ product lines. 2565 These eight factors are not necessarily given the same weight and their importance varies in each case. 2566 Courts may also consider additional factors. 2567

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