If you develop a brand around a name or logo, you should consider protecting the brand through trademark registration. The experienced trademark attorneys at Sierra IP Law, PC can assist you with pursuing strong trademark protection. Contact our Tacoma office for a free consultation.
Sierra IP Law provides a full offering of trademark services, including the following:
preparation and filing of trademark applications with United States Patent and Trademark Office (USPTO),
prosecution of trademark applications through the entire trademark registration process,
trademark appeals and proceedings before the Trademark Trial and Appeal Board (TTAB),
litigation in state and federal court, and
trademark licensing and transactions.
The trademark attorneys at Sierra IP Law provide the expertise and skill necessary to procure trademark protection for their client's brands and enforce their clients' trademark rights against infringement and damage to their reputations. The following content is a primer on trademark law, the value of trademarks, the trademark application process, and the enforcement of trademark rights.
A trademark is a word, phrase, symbol, and/or design, or a combination of these that is used in connection with the offering of particular goods and services. Technically a trademark is used in connection with goods and a service mark is used in connection with services. However, the term "trademark" is commonly used to refer to both. Businesses use trademarks to promote their goods and services, establish a brand, and distinguish their offerings from the goods and services of others. Every business owner wants to ensure that other businesses or parties cannot use their business name, brands, or other trademarks without permission.
The purpose of a trademark is to allow the consumer to distinguish between the sources of different goods and services. The trademark is a symbol of the quality and character of the goods and services offered by the source, i.e., the trademark owner. Thus, a trademark serves both the trademark owner and the consumer of their goods and services. To illustrate, consumers know the level of quality to expect from a Mercedes Benz automobile based on the Mercedes Benz trademark. The trademark provides cache and recognition to the company and it allows the consumer to rely on the brand to deliver a quality car. This is the core of trademark law, the trademark provides a symbol to the consumer representing the source of the marked goods or services and the reputation associated with that symbol.
While many business owners give significant thought and consideration in selecting a trademark, they may not realize the importance of choosing a trademark that is both eligible for federal registration and legally defensible. Also, as business owners focus their efforts on creating a business plan, deciding what advertising techniques to use, and building a website, they often forget the importance of looking into trademark issues before establishing a brand name or logo for their businesses. The time and effort spent on marketing your business translates into the recognition and strength of the trademark.
A trademark must be distinctive in nature in order to be eligible for trademark registration. A distinctive trademark is one that is not descriptive of the goods or services and is not generic with respect to the goods. Examples of distinctive trademarks are those that coined or invented words or those that are arbitrary in relation to the goods and services on which they are used. The USPTO considers such trademarks eligible for registration on the principal register.
In contrast, descriptive marks are those that describe a feature, characteristic, or quality of the goods and services on which they are used. For instance, the word "SWEET" is descriptive of desserts and candies. Thus, a trademark like SWEET TREATS would be descriptive with respect to candies and would not be registered on the principal register. A descriptive mark can be registered on the supplemental register, which provides less trademark protection than the principal register. A generic mark is one that essentially names the goods or services on which it is used and cannot be registered. For example, the word "aspirin" is the name used by consumers to refer to a particular analgesic and thus a federal trademark registration cannot be obtained for it.
If a trademark is not vetted, the trademark is vulnerable to third party use and the business could potentially lose trademark rights. If there is another trademark owner using a similar mark, the use of your trademark may constitute an infringement and may not be protectable. Third party use poses a threat to a business and its brand, and thus business owners should consider a trademark search and evaluation and registration in the process of developing the business.
Trademark rights are established when goods and services are offered under a particular trademark. The rights generated by this economic activity are "common law" trademark rights. Common law trademark rights are limited in scope by the geographic area in which the trademark is used in commerce. This means that these rights cannot be enforced against parties using the same or similar mark outside of this geographic area. While common law trademark rights are real and enforceable, they do not provide all of the benefits available under US trademark law. In order to maximize your trademark rights, you should register your trademark with the USPTO. Trademark registrations provide a basket of rights that are far more comprehensive than common law rights. Trademark registrations provide a presumption that you own valid trademark rights and trademark coverage nationwide.
Both state and federal courts recognize a presumption that you hold valid trademark rights when you file a trademark infringement lawsuit;
You can use the ® symbol next to your trademark, which is legally considered to be constructive notice of your trademark rights to everyone - this means that anyone using a confusingly similar mark has engaged in trademark infringement, even if they are unaware of your rights;
A trademark registration certificate can be used in internet commerce in multiple ways, including allowing you to pursue takedowns advertisements and product offerings on online platforms (e.g., Amazon, social media platforms, etc.), and establish your goods on Amazon's brand registry;
A federal trademark registration can be further registered with the US Customs and Border Patrol, allowing you to stop parties from importing goods under your mark or a confusingly similar marks;
An official record of your trademark registration is including in the trademark office database, creating a deterrent against the use of confusingly similar marks - your trademark registration will come up in trademark searches for similar marks; and
Because a registration certificate is a confirmation from the US trademark office that you have valid trademark rights, financial transaction that identify your trademark rights as an asset for collateral or other purposes.
Trademarks should be evaluated by a trademark search and analysis prior to adoption to determine whether it is sufficiently unique to avoid conflict with a trademark or service mark of another business. A comprehensive search of prior trademark use by third parties should be conducted by skilled trademark attorneys and professionals. It is risky to proceed with adopting a trademark without performing a trademark search. There are over two million trademarks registered with the United States Patent and Trademark Office, and there are many more instances of unregistered trademark use. Thus, a trademark search is critical to the process of adopting a trademark.
The USPTO provides a database of all US trademark filings that should be searched for similar marks. A proper and thorough trademark search should also include a search of unregistered trademarks because such unregistered trademark use can impact a later adopter of a similar trademark, even if the later adopter registers the trademark. This kind of comprehensive search requires experienced and skilled trademark attorneys that have the knowledge and resources to search registered and unregistered trademark use.
Once a proper trademark search is conducted, the search results must be analyzed for conflicts with other trademarks. If there are any third party trademarks that would cause confusion as to the source of goods and services between your proposed trademark and any of the marks in the search results, the proposed mark may have a likelihood of confusion problem. In such a case, you should pursue a different trademark. If the trademark is sufficiently unique, you can proceed with a trademark application without risk.
Likelihood of confusion is a concept that applies in both the trademark registration process and the trademark infringement context. In the trademark application context, if an applied-for mark is found to be confusingly similar to a previous trademark filing, the examining attorney will reject the application under Section 2(d) of the Lanham Act. In the trademark infringement context, the use of a confusingly similar trademark constitutes infringement. The analysis in each context is essentially the same: if a third-party mark and the goods and services upon which the mark is used is so closely related to the proposed trademark that an average consumer is likely to be confused or misled between the third party and you, there is a likelihood of confusion problem.
While there are clear cases of trademark confusion, trademark law is not black and white as to what constitutes likelihood of confusion. For example, if a senior trademark owner uses McDonald's in connection with restaurant services and a junior trademark owner uses MacDowell's in connection with packaged foods for sale in a supermarket, it is not clear that there is a likelihood of confusion. The outcome of such a case will depend on other factors and the skill of the trademark attorneys handling the case. If the trademark search does not yield any significant instances of confusion, a trademark application can be filed.
Once evaluated and verified to be unique and protectable, you can proceed with trademark filing to pursue registration. Trademarks can be registered through both federal and state registrations. However, a federal trademark registration obtained from the United States Patent and Trademark Office provide many more benefits than a state trademark registration. A trademark application must identify the trademark and the goods and services on which the trademark will be used. The mark can be standard character mark or design mark that includes graphical elements and optionally words or numbers (e.g., a logo). There are two filing options for federal trademark applications: (1) an application based on the applicant's current use of the trademark in commerce, or (2) the applicant has a bona fide intent to use the mark in commerce.
A bona fide intent means that you have real, concrete business plans to use the mark in commerce. A simple desire to use the mark in commerce without any action plan is not sufficient. Also, trademark law prevents you from reserving trademarks for later use. There must be bona fide intent for a trademark application to be considered valid. If the trademark application is based on current use in commerce, the trademark application must include a specimen of use, which is an example of goods or services as they are offered and sold.
Use in commerce means that (1) the mark is used in the advertising and/or packaging or literature for the goods and services, and (2) the goods and services are actually offered and sold to the public. Also, the transactions must be in interstate commerce. A trademark is used in interstate commerce if the offering and sale of the goods or services affects commerce across state lines in the US, or between the US and a foreign country. Sales to out-of-state customers or clients clearly satisfies the interstate commerce requirement. Additionally, intrastate activities that affect persons or businesses outside of the state may also qualify as interstate commerce. For example, travel agents sell vacation packages that result in economic activity outside of their home state and thus affect interstate commerce.
Once the Trademark Application is filed, the trademark filing is assigned to an examining attorney. The examining attorney will conduct his own trademark search of the USPTO trademark database to determine whether there are any prior trademark filings that confusingly similar to the applicant's mark. The examiner will also review the contents of the trademark application to determine whether all formal application requirements are met. If there are any formal issues or likelihood of confusion issues, the examining attorney will issue an office action. In order to advance the application, a response addressing the issues in the office action must be filed. If all formal requirements are met and there are no confusion issues, the trademark application can be allowed and advanced toward a trademark registration.
The trademark attorneys at Sierra IP Law, PC provide services in all areas related to trademarks and service marks, including trademark search and evaluation, preparation and filing of trademark applications, trademark licensing, and trademark disputes and litigation. Businesses and entrepreneurs need well-rounded trademark and intellectual property counsel who understands all aspects of trademark law and practice, including dealing with US Patent and Trademark Office, trademark licensing and transactions, and enforcing trademark rights against infringement. The attorneys at Sierra IP Law, PC have a wealth of experience in all of these areas, allowing them to provide trademark owners with comprehensive advice and counsel. Businesses in Tacoma and other areas of Washington rely on the exceptional level of service provided by the trademark attorneys at Sierra IP Law to protect their brands and businesses.
All businesses, both large and small, should be aware of trademark issues and how they can result in expensive, lengthy litigation. In order to avoid future legal issues, it is in your company's best interest to have an experienced trademark lawyer complete the search and documentation needed to register your company's trademark. Call Sierra IP Law, PC to discover the full spectrum of trademark, intellectual property, and other legal representation our law firm provides.
The attorneys and professionals at Sierra IP Law, PC are also have expertise and extensive experience with patents, copyrights, trade secrets, and other forms of intellectual property. Please visit our home page to navigate to information on these subjects. Contact our Tacoma office for a free consultation.
"Partnering with Mark Miller at Sierra IP Law is one of the smartest choices I could have made in the world of bringing a new invention to market. He is extremely responsive, knowledgeable, and professional. I could never have conceived of the areas he has advised me on and covered in attempting to write a patent on my own. He and his team have not only insured that my Intellectual Property Rights are well protected, but they have advised and recommended additional protections that I could not have thought of otherwise. I highly recommend Sierra IP Law to anyone looking for a strong and trustworthy legal partner."
Sierra IP Law, PC - Patents, Trademarks & Copyrights
7030 N. Fruit Ave.
Fresno, CA 93711
(559) 436-3800 | phone
1925 G. Street
Bakersfield, CA 93301
(661) 200-7724 | phone
SAN LUIS OBISPO
956 Walnut Street, 2nd Floor
San Luis Obispo, CA 93401
(805) 275-0943 | phone
180 Promenade Circle, Suite 300
Sacramento, CA 95834
(916) 209-8525 | phone
1300 10th St., Suite F.
Modesto, CA 95345
(209) 286-0069 | phone
414 Olive Street
Santa Barbara, CA 93101
(805) 275-0943 | phone
1650 Borel Place, Suite 216
San Mateo, CA, CA 94402
(650) 398-1644. | phone
110 N. San Joaquin St., 2nd Floor
Stockton, CA 95202
(209) 286-0069 | phone
425 NW 10th Ave., Suite 200
Portland, OR 97209
(503) 343-9983 | phone
1201 Pacific Avenue, Suite 600
Tacoma, WA 98402
(253) 345-1545 | phone
1030 N Center Pkwy Suite N196
Kennewick, WA 99336
(509) 255-3442 | phone