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Arizona Trademark

A trademark is a word, design, symbol, etc. used to indicate the goods produced by a particular producer or manufacturer. Similarly, a service mark is any word, design, color, etc. used to denote the services provided by a particular service provider. Despite the difference in terminology, the law applicable to trademarks and service marks is substantially the same. The being said, both Arizona and federal law apply to trademarks and service marks, which makes it a little counterintuitive.

For example, a business can obtain rights in a trademark on its goods here in Arizona simply by using the mark to indicate that the business is the source of those goods, provided that the trademark does not infringe upon the trade- or service mark of another business, which has superior rights, e.g. prior use or federal registration, in another “confusingly similar” mark. These rights obtained by use in Arizona, called common law rights, can permit the business to prohibit another business from using and confusingly similar mark here in Arizona, but what about a business in another state?

Federal Trademark Registration

In Arizona, a trademark or service mark can be federally registered through the United States Patent & Trademark Office. Federal registration confers various exclusive rights upon mark holders, including:

  • The right to use the registered mark nationwide;
  • The right to file for an injunction to stop the unauthorized use of a trademark;
  • The right to file a infringement claim for money damages; and
  • Right to file with notice with U.S. Customs to prohibit the importation of infringing goods.

Not just any trademark or service mark is eligible for registration that confers the aforementioned rights on a mark holder.

There are two types of federal trademark registrations: (a) registration on the Principal Register and (b) registration on the Supplemental Register. 

Registration on the Principal Register confers the aforementioned exclusive rights upon the trademark holder, while registration upon Supplemental Register provides much less significant rights.

In order to be eligible for registration upon the Principal Register, a service or trademark must be “distinctive” and not “merely descriptive” of the goods or services with which it is associated. This is a function of public policy: allowing a business to prohibit other businesses from using words that describe an entire category of goods or services would be tantamount to a government-sanctioned perpetual monopoly, given the fact that trademark rights can be on an indefinite duration.

Distinctiveness

In order for a service or trademark to be registered upon the United States Patent & Trademark Office’s Principal Register, the mark must not be “merely descriptive,” rather; it must be “distinctive.” But what is “distinctive”?

Federal law governing trademarks establishes the following continuum of distinctiveness, ranging from fanciful (such as “Verizon” and “Exxon”) to arbitrary (such as “Apple” for computers or phones and “Chevron” for gas) to suggestive (such as “Mustang” for cars) to descriptive (such as “Windows” for computer software) to generic (such as “salt” for food or “tires” for cars). Because of the analysis standard used to determine whether one trademark infringes upon another, trademarks which are more distinctive as opposed to descriptive are generally provided with the greatest amount of deference.

Arizona Trademark Law

Arizona's statutes provide, pursuant to A.R.S. § 14-1451, the following regarding state law trademark infringement:

  1. Subject to section 44-1452, the owner of a mark registered under this article may proceed by civil action against any person who, without the consent of the registrant:
    1. Uses in this state the registered mark or a mark similar to the registered mark on or in connection with any goods or services or any container for goods in any manner that is likely to cause confusion, cause a mistake or deceive a person as to either:
      1. The affiliation, connection or association of the person with another person.
      2. The origin, sponsorship or approval of the goods, services or commercial activities by the owner of the registered mark.

This brief overview of Arizona and federal trademark law is by no means comprehensive and is not legal advice. Always seek the advice of a competent professional when making important financial and legal decisions.

Mesa, AZ Office

Our Mesa, Arizona office is in the heart of downtown Mesa. It is located one block north of Main and Center Streets on Pepper Place, at 40 N. Center St. #110, Mesa, AZ 85201.

Steve Cook is an Arizona trademark attorney at Cook & Cook. Although his office is located in Mesa, Arizona, he represents clients throughout the Phoenix, Arizona Metropolitan area including the following east valley cities: Scottsdale, Paradise Valley, Tempe, Chandler, & Gilbert.

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