While you don’t necessarily have to register your trademark with the government in order to exercise your right to the mark, registration is a good idea.
Legitimate use of a trademark in the course of business can establish your right to the mark, but having the mark on file with the U.S. Patent and Trademark Office can quickly clarify matters in the event that someone else uses your mark or a similar one in a way that creates confusion as to the source of a product or service.
Let’s consider these matters with regard to a recent trademark lawsuit filed in San Diego.
TerriKelly LLC is a company that sells flip-flops online and at festivals, trade shows and specialty boutiques. The business is named after its owner, who said her situation feels like “David fighting Goliath.” She is suing international footwear retailer Skechers U.S.A. Inc., which she says has illegally used her “Yoga Pants for Your Feet” trademark, even after receiving a cease and desist letter.
According to the suit, which was filed in federal court in San Diego, TerriKelly started using the trademark in January 2014, and Skechers started using the mark in January 2015. TerriKelly reportedly became aware of Skechers’ use of the slogan after seeing the company’s television and online ads promoting its Stretch-Fit Glider shoe.
The suit states that in March 2015 a cease and desist letter was sent to Skechers, but the slogan continues to be used by the company.
TerriKelly points out that the “Yoga Pants for Your Feet” mark is registered with the U.S. Patent and Trademark Office.
Skechers has “categorically” denied TerriKelly’s allegations.
California business owners with trademark or servicemark concerns may want to follow up on this case to see its outcome.
For more on trademark registration, please see Shulman, Hodges & Bastian LLP’s previous post, “What are my trademark rights in California?”