If you own a business with a valuable brand or you are building a new brand, you should consider protecting the brand through trademark registration. Registering your brand as a trademark provides nationwide exclusive rights and many other benefits discussed below. Sierra IP Law, PC has experienced trademark attorneys that can assist you with registration and trademark protection of your brand and reputation. Contact our Bakersfield office for a free consultation regarding our trademark legal services.
Our firm provides a full suite of trademark services to our clients, including trademark applications, handling the registration process, trademark search and evaluation, trademark litigation and disputes, proceedings before the Trademark Trial and Appeal Board (TTAB), and trademark licensing and transfers. Our comprehensive trademark services place our clients in the best position to secure the brands and businesses that they have built with their creativity, time, energy, and capital. Our trademark attorneys are here to protect you against the risk of damage by infringers, knock-offs, and weakening of your trademark rights due to third party use of confusingly similar marks. Below we provide some general information about trademarks to explain their importance.
A trademark is a word, phrase, graphical image, symbol, sound, color, or combination of things that is a source identifier for your goods and services. Trademarks are distinct from other forms of intellectual property such as copyrights (which protect works of creative expression, such as writings, visual arts, performing arts, music, and other expressive works) and patents (which protect novel inventions and designs). A mark is referred to as a trademark if it is used on goods and a "service mark" if it is used on services. Both can be registered with the United States Patent and Trademark Office, and can be generally referred to as trademarks. A trademark identifies the source of your goods or services for the benefit of consumers, indicating to the consumer that they can expect the level of quality that you provide to your clients or customers. For example, the BMW trademark indicates to the consumer that a vehicle is of high quality. The reputation for quality is the result BMW's track record of providing exceptional cars. Trademarks are core to the branding of a business and they represent the reputation built by the business. A registration protects the value of a trademark and the associated reputation.
A federal registration is available to any entrepreneur or business entity that provides goods or services in interstate commerce under a proper trademark. The registration is issued by the United States Patent and Trademark Office after an application is filed and goes through the trademark registration process. If the trademark application meets the criteria required under trademark law, the application will be allowed and the registration certificate will issue. The trademark will then be placed on the USPTO's official register, which is a public record of all registered trademarks.
A registration provides the trademark owner with a presumption of rights that can be enforced in state or federal court. The owner is authorized to use the ® symbol in connection with the trademark on the a good or service, and marketing materials for the good or service. When properly used, the ® symbol provides nationwide constructive notice to all of your registration rights. This means that if a third party uses a confusingly similar trademark, it does not matter whether they are aware that they are using a confusingly similar trademark, they are liable for trademark infringement. There are a number of other benefits that a registration provides, including protection of your brand in internet commerce and social media, enforcement through US Customs and Border Patrol to prevent importation of counterfeit or knock-off goods, enablement of licensing throughout the US, an intangible asset for securing financing, priority for pursuing foreign rights, and legal remedies that are only available once a registration is issued. Unregistered trademarks do not carry these benefits and are more difficult to enforce. For a more comprehensive explanation of the benefits of registering trademarks, please see the visit our more detailed discussion here.
The trademark law has certain requirements that must be met in order to register a trademark. The trademark must (1) be inherently distinctive or must have acquired distinctiveness in the eye of the consumer, (2) not be confusingly similar to prior-filed trademark application or registered trademark, and (3) must be in use in commerce on the applied-for goods and services.
The distinctiveness requirement means that a trademark registration is not available for generic or descriptive trademarks. Generic trademarks are marks that are the equivalent of the name of the goods. For example, "APPAREL" is generic with respect to any kind of clothing and cannot be registered for use on clothing. However, "apparel" is not generic with respect to other kinds of goods, such as tools or medical devices. Descriptive trademarks are marks that are descriptive of the goods, and thus are not inherently distinctive. For example, "CREAMY" for use dairy products would be considered descriptive because it described a quality of the goods. However, a descriptive trademark is not barred from registration. Descriptive trademarks can "acquire" distinctiveness in the eyes of the consumer over time and become registerable. Thus, the goods are always integral to the evaluation of a trademark application.
The registration prevents third parties from using the same or similar trademarks on the same or similar good or service that is confusingly similar to the registrant's trademark. Likelihood of confusion refers to the probability that an average consumer would be misled or confused into believing that the goods or services represented by one party's trademark are affiliated with, sponsored by, or originate from another party due to the similarities between the parties' respective trademarks. The trademark office evaluates a trademark application to determine whether the trademark is confusingly similar to previous trademark filings. The trademark office will reject the application if it finds a likelihood of confusion.
In order to be registrable, trademarks must be "used in commerce", which means that they are (1) applied to a good or are used in connection with advertising of a good or service and (2) there are transactions (e.g., sales) of such good or service. The use must also be in "interstate commerce", which means it must affect commerce across state lines in the United States or between a US state or territory and a foreign country. Sales across state lines or to out-of-state customers satisfies the interstate commerce requirement. Activities that are intrastate, but affect interstate commerce also qualify, such as hotel businesses that cater to interstate travelers or restaurants that serve interstate travelers. Each situation is unique, and requires the assistance of an experienced trademark attorney with deep skill and knowledge in trademark law to make proper determination regarding use in interstate commerce.
If you have not yet established use of your trademark in commerce, you can still submit a trademark application if you have a bona fide intent to use the trademark in commerce. So, if you are planning to open a business or start a new brand, you can apply to the USPTO before your trademark is used in commerce. This allows you to secure the trademark rights early and avoid being prevented from registering your trademark by an earlier filing.
A trademark search is a critical step in pursuing trademark rights. A comprehensive search of the database of trademark filings and for unregistered uses of other trademarks is necessary to ensure the success of your brand. If there are third party trademarks that confusingly similar and precede your use of your trademark, you may be barred from registration and you may be sued by such third party trademark owners for infringement. The trademark search is due diligence that must be done prior to launching a new brand. It is foolhardy to simply proceed with the adoption of trademarks without this precaution. Searching for third party trademarks effectively requires sophistication and knowledge of trademark law and the right tools. The trademark lawyers at Sierra IP Law, PC have decades of experience in evaluating our clients trademarks. Contact our Bakersfield office for a free consultation.
If you register your trademark in the United States, you may claim priority to your US application in foreign or international registration applications. Most countries are parties to international treaties that enable you to file a foreign application on the grounds that there is a registration or application in the country of origin (e.g., the United States). As your lawyer would suggest, those who have questions about trademarks federally and internationally should get advice based on their specific situation and needs.
Connect with the experienced California legal team at Sierra IP Law, PC today to schedule a risk-free consultation concerning trademarks and/or other intellectual property matters. Once our attorneys and professionals understand your company's unique needs and priorities, we can assist you with registering trademarks and other legal protection in the area of intellectual property. Call today to learn more about our trademark lawyers and professionals serving Bakersfield.
"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
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