San Diego Trademark Attorney
San Diego trademark attorneys are able to assist in protecting your trademark rights both in the state of California and nationwide.
Federally registering your trademark with the United States Patent and Trademark Office (USPTO) offers many legal advantages and should be a top priority for any company. A trademark attorney can assist you in the process, and help you enforce your trademark rights should any infringements occur.
Register Your Trademark
A trademark attorney can assist you in applying on the USPTO website for federal registration. This will ensure there are no unnecessary delays with your application due to missing or incorrect information. The information you need to include on a trademark application includes:
- The name of the trademark owner, which could be an individual or a company, and their contact information
- A drawing of the trademark, whether that is a design, word, or phrase
- The types of goods and services to be used in conjunction with the trademark
- The government filing fee, which is typically $225 per class of goods and services specified on the application
- The basis of filing, whether you are intending to use the trademark or already using the trademark
- A specimen that proves your trademark is being used in commerce. This could be a website or product sample
Trademark applications typically take about three months to be reviewed by the USPTO examining attorney.
A trademark is a word, phrase, design, logo that identifies the source of goods and services of a company. A word, slogan, or even a smell or color can all be claimed as trademarks if they are used in commerce to distinguish the source of a product or service.
In order to be able to claim something as a trademark, it must be distinct enough to qualify, and not be confusingly similar to another existing trademark.
Conduct a Trademark Search
To ensure you are not infringing on another company’s trademark, your trademark attorney should conduct a thorough trademark search before using the trademark. Your San Diego trademark attorney will search the Trademark Electronic Search System (TESS), while also opening up their search to include trademarks that may not be federally registered.
Failure to perform a professional search could make you a target for infringement claims, as even unknowingly using an infringing trademark will constitute an act of infringement.
Common Law Trademark Rights
Your common law trademark rights kick in as soon as you begin using a trademark in commerce. So if you are operating in San Diego only, your rights will likely only apply in the city area. Federal protection is the only way to protect your trademark nationwide.
Some businesses may choose to register their trademark with the California Secretary of State Office. This will protect your trademark rights solely in the state of California. Companies may choose this route to save themselves the cost of applying for federal protection. However, it’s recommended you invest in the cost of a federal application in order to save yourself legal trouble in the future. A federal registration can also become incontestable which is another large advantage.
Federal Trademark Rights
There are many legal advantages to federally registering your trademark with the USPTO.
- The ability to use the registered trademark symbol (®) in conjunction with specified good and services
- Presumption of ownership and validity in infringement lawsuits
- A basis of an international trademark filing
- The U.S. Customs and Border Protection will block counterfeit goods from being imported
- Publication of trademark rights in the Trademark Official Gazette (TMOG)
Your federal trademark rights do not begin until you have completed the entire process of registration, including the opposition phase.
Renewing Your Registration
Trademark protection lasts as long as the trademark is in use. You will need to renew your registration between the fifth and sixth years after registration, and every 10 years after the date of registration.
This will require filing a renewal and submitting renewal fees. A trademark attorney will assist you tracking the deadlines and making sure all information is correct so there is no interruption in your status as a registered trademark.
Some unscrupulous parties might attempt to take advantage of your company’s good will and reputation to mislead customers into confusing your brands. Trademark infringement lawsuits can be costly, so it’s best to act swiftly in cases of infringement, and to attempt to settle the matter as quickly and amicably as possible.
Types of Trademark Infringement
The most common case of trademark infringement occurs when there is likelihood of confusion between the trademarks. However, trademark infringement can take place even when consumers are clear that two trademarks are unrelated.
For example, consumers are unlikely to believe that a lipstick that uses the “Apple” trademark was manufactured by the international technology company. Still, the use of the Apple trademark on lipstick may have the effect of weakening the Apple brand and making the brand less unique. This is referred to as trademark dilution which can also be the basis of a trademark infringement claim.
Likelihood of Confusion
If consumers could reasonably mix up two trademarks, and thus the source of products, the trademarks may be deemed confusingly similar. In California, the matter of trademark confusion is examined with the following eight factors in mind, based on the landmark AMF, Inc vs. Sleekcraft Boats trademark infringement case.
- Similarity between trademarks
- Proximity of goods and services
- The strength of the trademark
- Proof of confusion from consumers
- The intent of the defendant
- Proximity of marketing channels
- Possibility of expansion from trademark owners to other markets
- The level of purchasing care consumers are likely to take before buying the product
Similar trademarks may be permitted to coexist if the industries and target demographics are remote enough.
A trademark attorney can set up a trademark watch service for you. These services will let you know if there is any infringing activity on your registered trademark. A trademark watch typically notifies you of similar trademarks that are filed and that are published for opposition. If you don’t have a trademark watch, at a minimum trademark owners should set up a google alert to potentially be notified of infringements that occur online.
Sending a Cease and Desist Letter
Upon discovery of a trademark infringement, you should send a cease and desist letter to the unauthorized party as soon as possible. The quicker you are to act against infringement, the better chance you have of successfully halting the unauthorized usage of your trademark.
Not only do cease and desist letters demand that the infringing activity cease, but they also alert the receiver that failure to comply with the demands will result in legal action. Therefore, if your cease and desist letter is ignored, you can assume that the other party is fully aware that you intend to pursue legal remedies. It is a large financial risk to ignore infringement since you could ultimately lose your trademark rights entirely.
If there is an issue with your application and an Office Action issues, you’ll have six months to respond to the office action issued by the examining attorney. Once the examining attorney approves your application, your trademark will be published for opposition. Examining attorneys can miss similar trademarks, so the 30 day opposition period gives other trademark owners an opportunity to speak up if they believe their rights would be infringed if the trademark registers.
Oppositions are overseen by the Trademark Trial and Appeal Board (TTAB). Both parties are given the chance to strengthen their arguments during the discovery period. The TTAB makes a decision once both sides have presented their cases.
The TTAB proceedings are conducted remotely, so you won’t be required to make in person court appearances until maybe the very end of the case. Once a resolution has been reached, either side can appeal the decision to a federal court. If nobody files an opposition, your trademark will be successfully registered.
You might discover in your trademark search process a similar or identical existing trademark, which would prevent you from being able to successfully register your desired trademark.
A Petition to Cancel a registered trademark can be filed by your trademark attorney with the USPTO. The decision would be determined by the Trademark Trial and Appeal Board (TTAB). In many trademark cancellations a primary issue is priority of use of the trademark.
Defending Against an Infringement Claim
A trademark attorney will work with you to defend your rights, should you be accused of infringing on an existing trademark. The trademark attorney may:
- Review the infringement claim to make sure it is not defective in some way
- File a motion to dismiss if there is no factual basis for the claim, which, if granted, would halt the lawsuit from going any further
- File a counterclaim if the claimant is, in fact, guilty of infringing on your trademark
- File a claim for declaratory relief
Trademark litigation is often viewed as an option of last resort. The good news is that almost all cases settle, and frequently the settlement occurs early on in the case.
The steps of a trademark infringement lawsuit are:
- Filing of the infringement claim: Once a complaint is filed and served, the defendant has 21 days to respond to the claim.
- Discovery period: Both sides can gather and request evidence to support their case.
- The motion phase: Either party can file a motion for summary judgement, which would allow the courts to make a decision based on evidence produced during the discovery process.
- Trial period: Both sides will present their best arguments about whether or not an infringement took place.
- Resolution: The judge or jury will reach a decision and if appropriate award damages.
Many trademark lawsuits end because the defendant does not even make an appearance in the case. In these cases, a default judgment will issue.