Los Angeles Trademark Attorney
A Los Angeles Trademark lawyer can provide you with strategic guidance and professional insight as trademark issues arise, including trademark registration and infringement issues.
Once a trademark is successfully registered with the United States Patent and Trademark Office (the USPTO), the trademark owner is granted a presumption of nationwide protection. Federally registering your trademark is a shrewd business move that will save your company from legal difficulties in the long term.
Step 1: Choosing a Strong Trademark
A trademark is any word, symbol, design, or phrase that is used to identify the goods or services of a company. A trademark is different from copyright, but the two are frequently confused. Copyrights protect original works of authorship, such as text, photos and graphics, while trademarks designate the source of goods or services. Trademark rights only fully attached if the trademark is currently being used in conjunction with goods or services in commerce.
The aim of a trademark is to create a strong tie in the consumer’s mind between the product or service and a company’s unique brand identity. For this reason, you should try to be as creative as possible when selecting your trademark. Strong trademarks typically fall under three categories.
- Fanciful: Fanciful trademarks were created for the sole purpose of functioning as trademarks. Examples of famous fanciful trademarks include “Rolex” for watches and “IKEA” for a furniture store. Because these words don’t have meaning outside their existence as a trademark, these types of trademarks receive the greatest level of protection.
- Arbitrary: Arbitrary trademarks assign a word or phrase to the brand that is unrelated to the goods or services being offered. An example would be “Milky Way” as a candy bar.
- Suggestive: A suggestive trademark hints at the tie between a word and the company, but doesn’t explicitly spell out what that connection is. An example of a suggestive trademark is “Roach Motel” which is suggestive of catching insects.
Although fanciful trademarks are the strongest types of trademarks, companies may choose to use a suggestive or arbitrary trademark instead. Because fanciful trademarks are invented for use as a trademark, it requires a large effort from the company up front to teach consumers what the relationship between the brand and fanciful trademark is.
Step 2: The Trademark Search
No matter how strong or unique you believe your chosen trademark is, it’s always possible another trademark owner has beaten you to the punch, or possesses a similar trademark. A trademark attorney can conduct a trademark search ahead of time to ensure that your desired trademark is not confusingly similar to another existing trademark.
A trademark attorney will not only research all federally registered trademarks using the Trademark Electronic Search System (TESS), but will also search for common law uses such as use on the Internet. Unregistered trademarks are still protected under common law trademark rights, so it is essential to search beyond trademark registrations and specifically in the region where you will be using your trademark.
Step 3: Trademark Application
Trademark attorneys make the process of submitting an application for federal registration simple. They will ensure that all information is filled in correctly, so you won’t be delayed by office actions during the process of registration.
The trademark application requires you to provide a specimen of the trademark proving it is in current use in your business. You are also required to specify the types of goods and services that will be sold in conjunction with your trademark. The government application fee will depend on the number of classes of products or services with each typically costing $225.
Once a trademark application is submitted, it will be reviewed by an examining attorney. The attorney will either reject the application, or approve it and publish it for opposition.
Step 4: The Opposition Period and the TTAB
Trademarks that are pending registration are published every Tuesday in the Trademark Official Gazette (TMOG). This gives other businesses a 30 day window to file a trademark opposition if they believe the trademark is confusingly similar to their own and thus would devalue their own trademark.
Oppositions are overseen by the Trademark Trial and Appeal Board (TTAB). The TTAB is an independent legislative body that determines if a trademark can be federally registered or not. The most common cases the TTAB handles are:
- Oppositions; and
Oppositions are determined by a three-judge panel, and the verdict is reached only after both party’s counsel have had the opportunity to plead their case. The outcome of the opposition will determine whether your trademark will register or stay registered.
Step 5: Maintaining Registration
The opposition process is the final hurdle to registration. Once the opposition period is over and your trademark is registered, you will be entitled to the following benefits:
- Presumption of ownership of the trademark, granting you nationwide protection
- The upper hand in legal matters pertaining to your trademark, since your trademark is presumed to be valid
- A basis for filing for international trademark protection
- The ability to use the registered trademark symbol (®) in conjunction with the goods and services
- Public notification of trademark rights, which will deter potential infringing parties
- The USPTO will stop others from attempting to federally register similar trademarks
Trademark protection lasts as long as the trademark is in use, provided you keep up with the renewals and fees. You are required to renew your trademark between the fifth and sixth year of registration, and then every ten years after registration. A trademark attorney will ensure you do not experience an interruption in your rights by being sure that renewals are timely filed.
Trademark infringement occurs with alarming frequency, and it’s the responsibility of the trademark owner to enforce their own rights. With a trademark attorney by your side, you will likely be able to resolve the matter quickly.
Step 1: Monitoring Your Trademark
The best way to keep an eye on the usage of your trademark is to set up a trademark watch for your brand. Most trademark watch services offer weekly reports which alert the trademark owner to any infringing activity. Setting up your own Google alert is also a good idea.
Step 2: Identifying Infringement
When spotting a potential infringement, you should do your homework first to ensure that an actual infringement has occurred. You do not want to take legal action, only to discover that the other party has priority of use and that you are, in fact, the infringing party.
A trademark lawyer can help you research the conflicting trademark and find out if their date of first usage is earlier than your own. You can also check TESS to see if they are federally registered with the USPTO.
Step 3: The Cease and Desist Letter
Once you have determined that an infringement has occurred, a trademark attorney will assist you in drafting and sending a cease and desist letter. A cease and desist letter informs the receiver of your trademark rights and demands that all infringing activity cease. This letter will outline the nature of the infringement and provide proof of your trademark rights, such as your trademark registration number.
The letter will also provide the defendant with a deadline to respond. If the deadline is not met and the infringing activity continues, the next step is typically to file a trademark infringement lawsuit.
There are numerous reasons why a cease and desist letter should be sent before taking legal action. A cease and desist letter might pave the way to a resolution without having to enter a courtroom. Many infringers are scared off by a cease and desist letter sent by a trademark lawyer that litigates, and it can be very effective in halting the unauthorized usage of your trademark.
Responding to an Infringement Claim
Should you find yourself on the receiving end of a cease and desist letter, you should take care to be very calculated in your response. An emotional, off the cuff response could escalate a situation, so it’s best to consult with your trademark attorney immediately upon receiving the letter.
Your trademark lawyer will review the claim and determine your rights in the situation. They might find the claim to be defective in some way, and thus eligible to be thrown out. Other defenses a trademark attorney could mount include:
- The trademark in question has been abandoned by its owner
- The plaintiff was unduly delayed in taking action on the infringement
- The plaintiff has unclean hands and has damaged the defendant in some way with their actions
Trademark infringement lawsuits are typically filed in federal court. Many cases are resolved at some point during the litigation process, and the parties do not have to participate in every stage of the litigation. However, it is important to understand the entire process should you find yourself unable to reach a resolution during the litigation period.
Step 1: Filing the Lawsuit
If a resolution was not reached through a cease and desist letter, the plaintiff can file a trademark lawsuit. The defendant typically has 21 days to respond to the filing. A surprising number of cases settle or end here without the case going any further.
Step 2: Discovery Period
Once a response has been filed, the discovery period begins. During this time, both sides are permitted to gather information, interview relevant witnesses, and request documents from the other party. At this point, either side might choose to try to settle based on the information that comes to light in discovery responses.
Step 3: Motion Stage
When the discovery period is complete, either side may file a motion for summary judgement. A motion for summary judgement requests that a verdict be reached immediately based on the information gathered so far. The judge may choose not to grant this motion, in which case the matter will proceed toward trial.
Step 4: The Trial
Trademark trials typically last four to five days. Both sides will present their best case, and each side is afforded the opportunity to cross examine witnesses brought on by the other party.
Step 5: The Verdict is Reached
A judge or jury will decide the outcome of the case. This might mean granting an injunction or awarding damages. The verdict can be appealed in a federal court, or a district court that has jurisdiction over the matter.