San Luis Obispo Trademark Lawyer 

Trademark Services we provide to the San Luis Obispo area

Sierra IP Law, PC is a full service intellectual property law firm. Our trademark attorneys are can provide assistance with respect to all facets of trademark law, including US and foreign trademark filings, prosecutions, appeals, and inter partes proceedings at the United States Patent and Trademark Office (USPTO), trademark licensing, and trademark disputes, litigation, and enforcement. We will help you acquire and enforce your trademark rights to protect your business against infringement and knock-offs that can attack your bottom line and damage your brand in the eyes of the consumer.

Trademarks vs. other IP Rights

Trademarks are source-identifiers ("marks") utilized by companies for the purposes of distinguishing their goods and services. Marks that are used in connection with services are referred to as service marks, but both service and trademarks are commonly referred to as trademarks collectively. Logos, graphics, company names, product names, and slogans are examples of trademarks. Trademark rights provide exclusivity to the trademark owner with respect to the use of the trademark in connection with the owner's goods and services, and also prevents third party use of confusing similar trademark use. Trademark rights are distinct from other forms of intellectual property. Patents provide exclusive rights to make, use, or sell the invention covered by the patent. Copyrights provide exclusivity in the transfer, publication, and use of works of creative expression, such as written works (books, poems, etc.), musical works, audiovisual works, and other creative works. The attorneys at Sierra IP Law, PC have expertise in all areas of IP and can assist you with trademarks, as well as the other areas of intellectual property law.

What Kinds of Marks Can Be Registered? 

Not all business names are eligible for trademark registration. The USPTO will only register businesses if they are distinctive and are not likely to be confused with an existing trademark. The more distinctive the name is, the easier it is to trademark. Here are some of the things that will make it easier to register with the USPTO:

• A novel, invented, or coined name are the easiest to register as a trademark, as they not descriptive of the goods or services and they are unique. A good example is NVIDIA for use on computer chips. This is a novel and unique name that was successfully registered without refusal by the USPTO. Novel terms also provide the strongest protection.

• Names that suggest a product without describing it can also be trademarked. A good example of this are the Greyhound Bus. 

• Descriptive names are problematic. These include personal names, location names, and names of that describe the product or service. The USPTO will not register a trademark for descriptive name unless you can also show that the name has acquired distinctiveness in the eyes of consumers such that they associate the mark with your product or service.

Why Is Formal Trademark Registration Necessary?

Trademark rights can be established by using a trademark in commerce, which essentially means that you are selling your goods or services in connection with the trademark. Trademark owners acquire unregistered trademark rights through such economic activity. However, those rights are limited to the geographic area in which the transactions occur and they do not prevent third parties from using the trademark outside of that area. Trademark registrations provide trademark owners with a suite of rights that are much more effective in providing legal protection against infringing parties, including a legal presumption that your trademark registration certificate gives you exclusive nationwide rights in your trademark.

Advantages of Registering a Mark 

A trademark registration allows for several advantages. Some of the most important advantages are:

• When you register, there is a legal presumption that you own the trademark and can use it for the goods and services listed on your trademark application

• You can file a lawsuit in federal court to enforce your trademark rights with a presumption that you have valid rights

• Your trademark registration is placed in the USPTO database creating a public record of your trademark ownership

• Your trademark will come up in a trademark search, making it less likely for people to use it

• US registration allows you to register your trademarks with Customs and Border Patrol and prevent the importation of infringing or counterfeit goods

• Registration gives you the right to use the registered trademark symbol ® and the use of the ® symbol provides nationwide constructive notice of your legal rights prevent use of your trademark

• Trademarks that are registered are more amenable transactions such as licensing, transfers, and securing financing. The registration provides the affirmation by the USPTO that the trademark has validity and value, thereby enabling such transactions

• Trademark registrations also facilitate internet commerce and enable the enforcement of rights in internet commerce and social media context. Many internet platforms have policies that allow for the takedown of products, advertisements, or social media posts that feature someone else's mark upon request by a trademark registrant

With the numerous advantages of a trademark registration, the importance registering your mark with the USPTO is evident.

Trademark Application Process

The trademark registration process is initiated by filing a trademark application with the USPTO. Trademark applications go through a formal registration process with an examiner. The examiner performs a trademark search of the USPTO database of registered trademarks for similar marks. The mark in the trademark application is then compared to the trademark search results to determine whether the applied-for mark is confusingly similar to any trademarks that were previously filed with the USPTO. If the examiner finds that there is a confusingly similar trademarks or previously filed trademark applications for similar marks, the examiner may refuse the trademark application due a likelihood of confusion under Section 2(d) of the Lanham Act, which is the primary source of federal trademark law.

Prosecuting Trademark Applications

Handling trademark applications before the USPTO requires deep knowledge of trademark law. It is not uncommon for trademarks to be refused on various bases, including previously filed trademarks, descriptiveness, and other legal issues. A trademark attorney needs experience and skill in crafting strategy and arguments to effectively overcome refusals by the USPTO. The information and arguments The trademark attorneys at Sierra IP Law, PC have decades of experience in handling trademark filings before the USPTO. Our attorneys are also skilled in evaluating trademarks prior to filing an application.

Performing a Search Prior to Submitting Trademarks to the USPTO

Prior to filing an application, a comprehensive search of the USPTO database for previously filed trademarks and trademarks that are in use in commerce, but are unregistered. Our legal services include a comprehensive search of previously established trademarks in order to determine whether (1) your trademark is registerable, and (2) whether your use of your mark will potentially result in trademark infringement and a lawsuit. The pre-filing search is a critical step that indicates whether you have chosen a viable trademark that will allow you to build a strong brand, rather than a mark that will not protect your brand and may result in an expensive infringement suit.

What to Do After a Trademark is Registered?

After you have registered your trademark, there are several steps that you should take in order to get the full benefit of the trademark registration. These steps are outlined below.

• Begin using the ® Symbol. As soon as the registration is issued, you should begin applying the registered symbol ® to your relevant goods and the related advertising. This puts the entire US on constructive notice of your rights and anyone who uses a confusingly similar mark is liable for their infringement, regardless of whether they knew of your registration;

  • ® is reserved for trademarks that are registered with the USPTO. It is a violation of federal trademark law to use the ® symbol prior to registration. The TM and SM symbols can be lawfully used with unregistered marks. The TM stands for trademark is for use on goods. The SM symbol stands for service mark and is used in connection with advertising services, such as legal services.

• You should monitor the USPTO database and the marketplace for potential third party use of confusingly similar marks infringement. Trademark law requires owners to police the marketplace to address infringements in order to maintain the strength of their trademark protection. Failure to police third party use of confusingly similar marks results can weaken your rights because your have allowed the brand to be undermined in the eyes of the consumer do to multiple businesses using the same or similar trademarks. For example, the term "green" is commonly used by energy companies to signify that the companies practices are environmentally friendly. The term "green" carries virtually no trademark value in the energy industry because it is used by many companies.

• You should renew your trademark registration. In order to maintain the trademark protection provided by your registration, you must file a declaration of use after five years of registration and you must file trademark renewals every 10 years from the original registration date. If you fail to file the required declaration of sue and renewals, the trademark registration will become abandoned and you will lose the benefits that the registration provides. You can only regain the benefits of registration through a new trademark filing with the USPTO.

Skilled Trademark Lawyers in San Luis Obispo

If you have an established brand or you are building a brand, you should consider potential rights in your brand. Trademarks are critical to the value of your business and essential for many business practices, such as franchises, internet businesses, and operations in highly competitive industries. Your trademarks are symbols of your reputation to the world.

The experienced trademark attorneys at Sierra IP Law, PC can advise you of how to best protect your trademarks and maximize their value. Contact our San Luis Obispo office to connect with one of our experienced trademark attorneys. We are here to assist you in protecting the reputation and brand that you have built.