Trademarks & Servicemarks

A trademark is a word, name, symbol, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms "trademark" and "mark" are commonly used to refer to both trademarks and servicemarks.

Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks which are used in interstate or foreign commerce may be registered with the USPTO. The registration procedure for trademarks and general information concerning trademarks is described at "Basic Facts about Trademarks".

 

Registering a Mark

First, understand that registration is not need to establish a trademark. One owns a trademark by virtue of use, so one can prevent another from using a mark simply if one has prior use (and the other's use causes confusion). Registration has the advantage of putting the mark in a database that serves to put others on notice that you claim the mark, and it also gives you a rebuttable presumption of ownership, but it does not confer ownership and it is not a prerequisite to suing for trademark infringement. Also, registration is not permanent; it's only for ten years. In the sixth year, an affidavit of continued use must be filed, and this will involve some more attorneys' fees; then the mark will have to be renewed at the 10 year anniversary, which is additional money.

Trademark registrations must be done through specialized outside counsel, and typically cost two thousand dollars on up. To start a registration, the department chair, dean, or vice chancellor (as appropriate) should send a letter to Mary MacDonald in the Office of General Counsel, copying UC Davis InnovationAccess, briefly describing the mark and what it is used for; authorizing the retention of outside counsel for purposes of registering the mark and acknowledging that both government fees and attorney fees will be involved in the registration of a mark. The letter should also specify the name, position, address, phone, and email of the person who will serve as the knowledgeable contact. The outside attorney will be talking with the person about the use of the mark, gathering evidence of use and other specific information. UC Davis InnovationAccess will act as a general liaison between the department and the outside counsel.

 

UC and UC Davis Trademarks

Some marks are controlled by the Office of the President (the UC marks) and others are controlled by the campus (the UC Davis marks). The UC Appropriate Use of University's Trademarks, UC Graphic Identity Guide and Resources, UC Davis P&PM section 310-65, and UC Davis Publications Guide can get you started on the process.

To apply for a commercial license to use the UC Davis campus marks, visit http://www.clc.com.