Legal Question in Intellectual Property in California

Re: Claim Against Servicemark

The answer to your specific question is "probably not" (and it could be "certainly not" with more specific information from you); but the real answer here is that you should take immediate steps to register your service mark with the USPTO. This would have the double effect of giving you better defenses (assuming, of course, that the application for the SM passes initial muster), as well as better tools to defend your use of your service mark against others.

You can probably do the registration yourself on-line; it will cost a few hundred bucks but if your business amounts to anything, it is a worth-while expenditure.

If you are ever actually sued, consult a local IP attorney at once.

Re: Claim Against Servicemark

Whenever you get into an adversarial situation such as this and it is important to your business to protect your use of a term or other rights that are threatened, run, do not walk, to a lawyer with the appropriate expertise. Disclose to him or her (under attorney-client confidentiality) all pertinent facts regarding the timing and duration of your use of the term, and the manner in which you have used it. Seek to ascertain the nature of the opposing party's claim, including the timing and duration of their use of the term, and on what goods or services it has been or is being used, and in what channels of trade.

It is unclear from your posting the pertinent fact of what goods or services your term is used on. Similarly, you don't say what goods or services the opposing party uses its term on, and it is not clear whether their usage is CHEMIST PUBLICATIONS or just CHEMIST for "publications." These fine points can make a difference in what your attorney concludes are your likely rights and obligations.

Do take note that in the USA, a term in active use on a product or service can be protected as a trademark or service mark even if it has not been registered with the federal government or any state government. However, if it is a generic term, it will not be protected against a similar use provided that the defendant hasn't actively fomented confusion among customers.

Re: Claim Against Servicemark

I would recommend that you retain local counsel ASAP, especially since it appears you have bona fide commercial interest in your mark.

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To answer your question, courts oftentimes view the word mark in tandem (if there are two or more words) in determining whether there is an infringement situation. The exact same words need not be used in order for there to be infringement. Instead, there can be other similarly meaning, sounding, etc., words that may create a "likelihood of confusion."

The resolution to your question is very fact-intensive and includes the considerations already cited by the prior replies. I urge you to seek local, reputable counsel to assist you so that s/he can help you understand your rights and render a legal opinion regarding what constitutes infringement (or not) in this matter at hand.