Sacramento Trademark Lawyer 

Experienced Trademark Professionals to assist Sacramento area businesses

Successful businesses have brands, reputations, goodwill that are worth protecting.  These assets set your company apart from the competition and can be a key factor in determining success or failure.  These assets can be fortified by registering the trademark(s) associated with these assets.  Trademark registration establishes nationwide rights preventing third parties from using your valuable name or brand.  The trademark registration process is complicated, and if handled incorrectly can result in a failure to register the trademark, an invalid trademark registration, or other undesired outcomes.  A skilled and competent trademark lawyer can handle the trademark registration process smoothly and efficiently, securing your trademark rights in an optimal manner that provides the maximum protection to your reputation and goodwill.  Contact our Sacramento office to connect with an experienced trademark lawyer.

What our Trademark Lawyers Do

The trademark lawyers at Sierra IP Law have handled the trademark application process thousands of times for our clients. Our skilled trademark attorneys ensure that everything is done correctly.  We provide a full suite of trademark services to our clients, including:

• We advise our clients when adopting new brands or lines of business to ensure that newly adopted trademarks are unique and protectable and to avoid infringing third-party trademarks. 

• Filing trademark applications and handling the trademark application process for our clients' marks.

• Handling trademark proceedings before the Trademark Trial and Appeal Board, including trademark appeals, oppositions, cancellations, and concurrent use proceedings.

• Our trademark attorneys are also adept at analyzing possible trademark infringement whether by the client or third parties.

• Trademark litigation in federal and state courts.

• Trademark due diligence and transactions, including transfers and licenses.

If you want to register a trademark or need assistance other trademark related matters, contact our Sacramento office to discuss your concerns with one of our trademark attorneys.

Some information Regarding Trademarks and Trademark Registration:

What is a trademark?

A trademark can be a word, phrase, symbol, design, sound (think of the NBC chime), or color (think of John Deere green) that identifies and distinguishes the source of the goods or services. It can also be a combination of these elements. Trademarks are source identifiers that allows a consumer to recognize that a good comes form a particular source and that they can assume a certain level of quality.  For example, the Nike trademark tells the consumer that a pair of shoes has a certain level of comfort and that they have a level of quality that allows for rigorous use of the shoes for a long period.  In the context of services, the Hilton service mark indicates that a hotel will be clean, comfortable, and will have a certain level of amenities for the guest.  Proper trademarks and service marks like these provide a wealth of information to the potential customer instantly.  This is why establishing and registering a trademark for your business is so important.  It is a symbol of the quality that a consumer can expect from your business.

Other Intellectual Property Rights

Trademarks are source identifiers to provide notice to consumers as to the quality of the goods or services on which the trademark is applied. Other forms of intellectual property include patents, copyrights, and trade secrets. Patents provide exclusive rights with respect to making, using, and offering to sell novel designs and inventions. Copyrights protect and provide exclusivity as to creative works, including written works, audiovisual arts, musical works, and other forms of art and creative works.

If you are a business owner with a reputation worth protecting, you should consult with a skilled trademark attorney.  You are welcome to contact our Sacramento office to speak with competent trademark professionals. 

How to Choose a Trademark

An effective trademark must meet certain criteria to be an effective source identifier. The criteria include the following:

• The trademark should be arbitrary or fanciful, meaning that the mark is not descriptive of the goods or services offered under the trademark.

• The trademark must be unique compared to other trademark usages. If a trademark would create consumer confusion with another mark, the mark may result in a trademark infringement issue.

Arbitrary and Fanciful Trademarks vs. Descriptive and Generic Trademarks

Arbitrary or fanciful trademarks are those that have no apparent meaning with respect to the goods or services on which they are used. In other words, they don't describe or suggest the goods or services. For example, the meaning of the word "oracle" has no apparent connection to the software and data services offered by the Oracle corporation. It is an arbitrary trademark with respect to the company's offerings under the mark. Fanciful and arbitrary trademarks are considered "inherently distinctive" under US trademark law and are thus accepted for registration by the United States Patent and Trademark Office (USPTO).

Suggestive Trademarks can be Registered

Suggestive trademarks are also considered to be inherently distinctive and can be registered, but cut closer to being descriptive. COPPERTONE and JAGUAR are well-known examples of suggestive trademarks that suggest qualities of the goods on which they are used. Coppertone suggests the tanned skin that the product provides to the user of their tanning oils. Jaguar suggests the sleekness and speed of the vehicles on which the mark is used. These famous trademarks are only mildly suggestive of the associated goods. A closer case is the trademark AIRBUS for use on airplanes. A bus is a terrestrial public transport vehicle, but the combination of the word "bus" with "air" describes a bus in the sky. This is very close to describing an airplane. However, the better interpretation is that the mark simply suggests an airplane, rather than describing an airplane or qualities or features of an airplane.

Descriptive Trademarks

A descriptive trademark is one that describes a quality, characteristic, or feature of the goods or services on which it is used. A descriptive trademark cannot be registered on the principal trademark register, unless the trademark applicant can show that the mark has acquired distinctiveness in the eyes of the consumer. There are various ways for showing acquired distinctiveness that can be crafted by an experienced trademark attorney. However, if acquired distinctiveness cannot be demonstrated, the trademark owner has the option of registering the mark on the supplemental register, which does not carry the same trademark rights as a registration certificate for the principal register. The difference in trademark rights between a registration on the principal register and the supplemental is that supplemental register does not carry a presumption of trademark rights and some of the other benefits of registration discussed below.

Generic Trademarks Cannot be Registered with the USPTO

A generic mark is one that is the name by which consumers refer to the goods or services offered under the mark. For example, the trademark office will not issue a registration certificate for THE SUPERMARKET for use in connection with grocery store services. This is a name by which people commonly refer to grocery stores, and US trademark law does not allow for a trademark registration on such a mark. Generic marks can never be registered with the USPTO regardless of how long they have been used in commerce or any demonstrable consumer recognition of the mark with the source of the goods or services.

Why File a Trademark Application with the United States Patent and Trademark Office?

The use in commerce of a trademark in connection with goods or services (e.g., sales) builds trademark rights. The trademark rights arise ipso facto from such economic activity. Such trademark rights are referred to as common law trademark rights. While common law rights are enforceable in cases of trademark infringement, they have limitations. Common law trademark rights are limited to the geographic area in which the trademark is used. So, if the trademark is only used in one city, third parties outside of the city can use the same or similar mark without risk of liability for trademark infringement. A federal trademark registration greatly strengthens the rights of the trademark owner.

Benefits of a Trademark Registration

A registered trademark carries a bundle of rights that provide greater legal protection against would-be infringers than common law trademark rights. The registration certificate provides the owner with a presumption of valid trademark rights in state and federal courts, and nationwide rights in the registered trademark. Additional rights provided by a trademark registration are as follows:

• A trademark registration certificate allows you to lawfully use the ® symbol next to your trademark in connection with your goods and services. The ® symbol provides constructive notice of your trademark rights to everyone engaging in commerce in the United States. This means that everyone is deemed to have notice of your trademark rights and anyone using the same mark or a confusingly similar mark is liable for any trademark infringement, regardless of whether they have actual knowledge of your trademark.

• A trademark registration provides a legal presumption of the validity of your trademark rights and your exclusive ownership of the registered trademark. This means that you can file a trademark infringement lawsuit in state or federal court and the court will presume that you are the rightful owner of the registered trademark.

• You can record your trademark registration with the US Customs and Boarder Patrol, which allows you to enforce your trademark against importers of infringer goods by blocking the entry of the goods into the US market.

• Your trademark registration will be included in the USPTO trademark database, which publicly available and searchable. The trademark registration will be found in a trademark search for the same mark or a similar mark, thereby creating a deterrent against the use of infringing trademarks.

• A trademark registration is essential to protecting your brand in internet commerce, and provides a potent tool for shutting down trademark infringement on online platforms. Internet platforms (e.g., social media platforms, ecommerce platforms, etc.) have takedown processes for removing posts, product pages, and advertisements that infringe registered trademarks. Your trademark registration allows you to utilize these takedown procedures.

• A registered trademark indicates that the United States Patent and Trademark Office recognizes your trademark rights. This gives your trademark rights credibility as a business asset and facilitates the use of your trademark rights in licensing agreements and as collateral for bank transactions.

The foregoing benefits are not available without a trademark registration. Thus, you should consult with a trademark attorney about protecting your brand and trademark rights. Contact our Sacramento office for a free consultation.

First Step - A Trademark Search

Before adopting a trademark or filing a trademark application, a comprehensive trademark search should be performed by an experienced trademark attorney. The adoption of a trademark or a trademark filing made without the vetting of the trademark and without information regarding third party use of related trademarks is a mistake that may cost you dearly. As mentioned above, you do not need to be aware of someone else's trademark registration to be liable for trademark infringement. So if you begin using a trademark without a trademark search, you may find that you receive a cease and desist letter from an early user of the same or similar mark. Similarly, if you file a trademark application without first conducting a trademark search, your application may be denied by the trademark office because the same mark or a similar mark was previously registered. These situations can be avoided by engaging a trademark attorney to conduct a comprehensive trademark search before adopting a trademark or filing a trademark application.

Proper Trademark Search Process

An effective trademark search should include a comprehensive search of the trademark filing database provided by the United States Patent and Trademark Office. It is a searchable database that includes all federal trademark application filings. However, trademark applications and registrations filed in the USPTO are not the only sources of potential issues when adopting a new trademark. As explained above, third party common law trademark rights can result from unregistered trademark use. Adopting a trademark that is confusingly similar to an established common law trademark can result in a lawsuit and liability for your or your company. Thus, a trademark search that takes unregistered trademark use into account is important.

The trademark attorneys and professionals at Sierra IP Law search the USPTO trademark database, as well as unregistered trademark use to provide our clients with a complete assessment of potential issues with adopting and/or filing a trademark application for a new mark. Our skilled trademark attorneys analyze the search results and advise the client as to the existence of any risks with the respect to the chosen trademark.

Trademark Registration Process

Proper trademarks can be registered with the United States Patent and Trademark Office through a formal trademark application and examination process. If a mark is fanciful, arbitrary, or suggestive, and there are no confusingly similar trademarks in the USPTO trademark database, the trademark may be registered. A formal trademark application that identifies the correct applicant(s), accurately depicts the trademark, and accurately identifies the goods and services to be provided under the mark can be submitted for examination. There are two types of trademark applications that can be filed: (1) an application for a trademark that is currently in use in commerce, or (2) an application for a trademark for which the applicant has a bona fide intent to use the trademark in commerce.

What Constitutes Use in Commerce?

A trademark is used in commerce if (a) the mark is used in advertising (e.g., print ads, online and television ads, etc.) and/or packaging for the goods or items used in providing a services and (b) the goods or services are sold to the public. Use in commerce must be in interstate commerce. This means that the sale of the goods or services must affect commerce between states or between a state and a foreign country. A sale that occurs across state lines under the trademark satisfies this requirement. However, the interstate commerce requirement may be met in other ways. The sale of goods and services can affect interstate commerce under US trademark law if the sale occurs within a state, but still impacts another state. For example, hotels cater to out-of-state customers (travelers) and thus engage in interstate commerce.

Trademark Application based on Current Use in Commerce

A current use trademark application is governed by section 1(a) of the Lanham Act (federal trademark law). The current use application requires the submission of specimen of use. A specimen of trademark use is evidence of how you are using the mark in commerce. The of specimen required depends on the type of goods and services that you are offering under the trademark. If you are offering goods an appropriate specimen may be an image of the packaged goods as they are sold with the trademark prominently featured on the goods. If you are offering services, an appropriate specimen may be a website describing your services and providing contact information with the service mark prominently featured in the banner of the website. Other specimens may be appropriate as long as they show the use of the trademark on the goods or services in a way that demonstrates that the goods or services are being offered in commerce.

Intent to Use Trademark Application - What is a Bona Fide Intent to Use a Trademark?

A trademark application may be filed under section 1(b) of the Lanham Act where the applicant attests to having a bona fide intent to use a trademark in commerce. A bona fide intent to use a trademark in commerce must be real plans to begin using the mark in commerce, which may be demonstrated by communications (e.g., emails) with potential business partners or vendors, a formal business plan, market research, applications for permits, licenses, or other required formalities to pursue the sale of your goods or services. If the intent-to-use trademark application is approved. A statement of use establishing that you have begun using the mark in commerce must be filed within six months of the approval of the trademark application by notice of allowance. Extensions of time are available that can extend the time to file the trademark statement of use for an additional two and a half years.

Trademark Use Must be Lawful

Regardless of whether a trademark application is submitted under section 1(a) or 1(b) of the Lanham Act, the applied-for trademark use must be lawful. A trademark registration will not be issued for any mark that is used in connection with goods and services that violate any applicable federal law. A common contemporary example of unlawful use is cannabis products. Although many states, including California, have legalized marijuana use, cannabis is still a controlled substance and products that contain cannabis or derivatives of cannabis violate the Controlled Substances Act (CSA) and the Food, Drug, and Cosmetic Act. Thus, trademark applications that list cannabis products are unregistrable.

Trademark Filing and Trademark Application Process

The trademark registration process begins with filing an application with the trademark office. The application then gets routed to a particular law office within the trademark office that handles the particular kind of goods or services that are included in the application. The trademark application will sit in a queue for several months before examination begins. The trademark office is backlogged, resulting in delays in the examination of each application filed with the USPTO. However, as soon as the trademark application is filed the applicant has established their priority date, and their registered trademark rights date back to the priority date, if a trademark registration is issued.

Substantive Trademark Examination

Once a trademark examiner begins the examination process, they will review the trademark application to determine whether the formal application requirements have been met (e.g., a specimen of use, a proper declaration of trademark ownership and use, etc.). The trademark itself is then examined to determine whether it is a proper trademark. The examiner will determine whether mark falls in a category of disallowed marks, such as a descriptive mark, a generic mark, a surname, and some other categories. The examiner will then conduct their own search of the USPTO trademark database to determine whether there are any earlier filed, confusingly similar trademarks. The trademark examiner applies a likelihood of confusion analysis to any related prior trademark filings to determine whether your trademark is confusingly similar to previous trademark filings and should thus be refused.

Likelihood of Confusion Analysis

A trademark is not registrable if a likelihood of confusion is found between it and a previously filed trademark application or registration. The likelihood of confusion analysis under section 2(d) of the Lanham Act includes several factors that are applied to guide the analysis of whether two marks are confusingly similar, including whether the marks are similar in sight, sound, or meaning and whether the goods and services are closely related. There are other factors considered in the likelihood of confusion analysis, but the foregoing factors are the most important.

Responding to a Trademark Office Action

If a trademark application is rejected based on formal requirements or a likelihood of confusion rejection, a response to the office action must be filed in order to advance the trademark application. If no response to an office action is filed by the response deadline, the trademark application will go abandoned, the application priority will be lost, and no trademark registration will be issued. A response to a trademark office action may include amendments to the goods or services (e.g., to more specifically identify the goods or services), evidence of distinctions between the applied-for mark and any mark cited in a likelihood of confusion refusal, and legal arguments. Due to the complicated nature of trademark law, it is highly recommended that you seek the assistance of an experienced trademark attorney to handle the trademark filing and examination process. There are many ways to overcome trademark office actions rejections, but it takes a trademark attorney with deep knowledge of trademark law to identify and craft the arguments needed to overcome the rejections.

Trademark Application Approval and Publication

If the examiner is convinced that the trademark is registerable, a notice of allowance will be mailed indicating that the trademark is approved by the examiner. However, this is not the last step in the trademark registration process. The trademark application will be published in the Official Gazette of the United States Patent and Trademark Office. The trademark is published in the Gazette to give third parties notice of the prospective registration of the applied-for trademark. The application is published for 30 days. Any party that has a good faith belief that they will be harmed by the registration of the published trademark may file an opposition proceeding with Trademark Trial and Appeal Board (TTAB). This initiates a proceeding before the administrative judges of the TTAB to determine whether the opposing party has a legitimate basis for preventing the registration of the published trademark. A legitimate basis would be that the opposing party established use of a confusingly similar mark prior to the applicant's first use of the published trademark. If no opposition is filed, the trademark application may proceed to a registration certificate.

Trademark Appeals

In some cases, there may be a good case that a trademark application should be allowed and that the trademark is deserving of a registration certificate, but the examiner has refused to approve the trademark and will not change their mind. In such scenarios, it may be necessary to remove the application from the examination process and appeal the trademark application to the Trademark Trial and Appeal Board. The TTAB is made up of administrative trademark judges who assess the trademark application, the examination history, and the arguments of the trademark applicant and the examiner. A trademark appeal is an administrative process that shifts the decision on whether a trademark can be registered from the examiner to the TTAB. The potential need to appeal a trademark application makes clear the importance that a trademark owner seeks the assistance of an experienced trademark attorney. An experienced trademark attorney understands how to handle the trademark application process and properly prepare for an appeal to the TTAB.

A trademark attorney must practice trademark law for several years to build the skill and experience to properly handle the trademark registration process successfully. The trademark attorneys and professionals at Sierra IP Law are proficient in handling trademark applications. Contact our Sacramento office to discuss our trademark services and your trademark matters.

Steps to Take After Trademark Registration

A trademark owner should be pro-active after being granted a trademark registration in order to take full advantage of their trademark rights. The following step should be taken:

• When the trademark registration is granted, the registration should be used next to the trademark on the registered goods and advertising for them. The use of the ® symbol creates constructive notice of your rights to everyone engaging in commerce in the US. Anyone who uses a confusingly similar mark will be liable for trademark infringement, even if they had no knowledge of the trademark registration;

  • Note that it is a violation of US trademark law to use the ® symbol without a US trademark registration. The TM and SM symbols should be used until a registration is issued.

• The trademark office's trademark database and unregistered trademark use should be monitored for confusingly similar trademark usage. Trademark owners are required to enforce their marks when appropriate in order to maintain their trademark protection. Failure to enforce trademark rights against trademark infringement can result in a loss of trademark rights. The trademark may become undermined due to the use of confusingly similar trademarks by multiple actors in the marketplace. For example, at one point Anheuser-Busch had failed to enforce the "BUDWEISER" trademark against a competitor (Du Bios Brewing) using the same mark for so long that the Third Circuit appellate court found that Anheuser-Busch could not prevent DuBois from using the BUDWEISER mark.

• Schedule the renewals of your trademark registration. A trademark registration must be maintained with period renewal fees and submissions to the USPTO to confirm continued use of the trademark. A declaration of use must be filed 5 years after the trademark registration issues. Trademark renewals must be filed every 10 years after the registration issued. Failure to submit these maintenance filings will result in the lapse of the trademark registration. If this occurs, a new trademark application would have to be filed to regain registration with the USPTO.

Connect with Experienced Trademark Lawyers Serving the Sacramento Area

At Sierra IP Law, PC, we pride ourselves on providing sound legal advice and guidance to our clients in the area of intellectual property. Trademarks are particularly important to your business as they are the symbol by which your business is recognized. You work hard to build your business, and our trademark attorneys and professionals work hard to secure the value and reputation that you have built.  Contact our Sacramento office to connect with our experienced trademark attorneys.  We are here to help.

Sierra IP Law, PC  -  Sacramento Trademark Lawyer

180 Promenade Circle, Suite 300 Sacramento, CA 95834

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