Trademarks are a cornerstone to protecting your brand’s identity and uniqueness. Using trademarks helps protect your image from being copied by competitors. To protect the identity of your brand, you need to ensure that your business trademarks are registered federally and that active surveillance is being carried out to avoid trademark infringement.
UNDERSTANDING THE DIFFERENCE: UNREGISTERED AND REGISTERED TRADEMARKS
When initiating the filing of a trademark, you will encounter two main types of trademarks: unregistered and registered. Basically, unregistered trademarks are limited to geographic areas, while registered trademarks are protected either in a state or federal area, depending on how it is registered.
Unregistered trademarks can be recognized by the ™ symbol. In California, generally, the company that uses a trademark first has the rights to that particular trademark. These trademarks are only guarded on the grounds of common law; therefore, you might not need to file for a trademark since your claims are protected once you start using the trademark in business.
A trademark that is not registered is typically only protected in the region where it is being utilized. This means that if your business is using a particular logo in Los Angeles, you will likely have claims to the trademark in the area, but you will have no rights in Santa Barbara or other cities where your business is not located.
A further disadvantage of unregistered trademarks is that you will likely not have legal grounds to initiate trademark litigation in the case that infringement occurs. Our patent lawyers at Blake and Ayaz, therefore, greatly advise getting trademarks registered.
Trademarks can be registered on the state or federal level, depending on the geographical scope of protection that your business needs. In the state of California, your chances of protecting your trademarks are much higher if they are registered. State-level trademark protection, however, will only help protect your trademark in California, and you will not have permission to use the federal ® symbol.
Having federally registered trademarks gives your business the privilege of using your trademark exclusively in the United States. Additionally, any other applications that have trademarks similar to yours will be immediately blocked by the U.S. Patent and Trademark Office. Infringement from other companies will also be avoided beforehand because your trademarks will be listed in the USPTO database.
3 STEPS TO FILING TRADEMARKS
The Trademark process can seem daunting at first, especially considering the high levels of bureaucracy in California’s legal system. Our trademark lawyers have made the process understandable by breaking it down into the following three steps.
- Carry Out a Thorough Trademark SearchWhen initiating the trademark filing process, you will need the assistance of a lawyer to help you conduct a trademark search. This step in the process cannot be overlooked because understanding the other trademarks out there is critical to preventing trademark infringement problems later in the process. A well-done trademark search will save your business money and resources in the long run. It should entail browsing for names that have similar sounds and spelling, as well as phrases and words that may elicit a similar commercial feeling or notion.
- File for Federal Trademark Protection In order to protect your Los Angeles trademark assets, our attorneys at Blake and Ayaz recommend that you file on the federal level. To do this, you will need to register with the U.S. Patent and Trademark Office. A federal trademark will give your business the highest level of trademark protection. The average time for processing a trademark application is 3 to 4 months. When considering your application, the USPTO will thoroughly go over a variety of rules and regulations to make sure that your application complies with federal trademark law. Grounds for a rejected application include:
- Having a name that is general or solely descriptive.
- Trying to trademark a surname or someone else’s name without their permission.
- Having a business name that only describes the geographic area where the goods or services are derived from.
- Attempting to trademark a word or phrase that could potentially be confused with an already existing trademark.
If your business is trying to trademark a name that could potentially confuse consumers with an already existing trademark based on sound, look, or general impression, your application is likely to be rejected. This is why it is important to hire a lawyer that can help you with a thorough trademark search before submission so that you can avoid a rejected application.
After a trademark application is posted for filing, it will also be released publicly in case another company should choose to oppose it under the Trademark Trial and Appeal Board (TTAB). This is a 30-day period that allows a third party to issue a notice of opposition to try to prevent your trademark from receiving registration. Additionally, a plaintiff can issue a petition to cancel a currently registered trademark.
- Renew Your TrademarkAfter your trademark registration application is accepted, you will have five years of national registration until you will need to renew your federal trademark registration. If your business desires to continue owning the rights to your trademark, you will need to file for renewal during the fifth and sixth years from the registration date.If you don’t file your trademark renewal in time, your trademark rights will be canceled, and another company will have the right to use your trademark. After the initial 5-year renewal, your company will need to complete the trademark renewal process every ten years following your trademark registration date.
- Consider Filing for Trademark Protection in Other CountriesIf your business is looking to expand and move into international commerce, having a federal trademark can be the grounds for a trademark application internationally. Under the Madrid Protocol, trademark applications in other countries can be swiftly filed. You will also have the opportunity to extend your geographical coverage further, should you choose to do so in the future.
WHAT TO DO IF TRADEMARK INFRINGEMENT OCCURS
When two companies use a trademark that is perplexingly similar in sound, spelling, or commercial impression, trademark infringement can occur. While trademark infringement can happen by accident, it could be a spiteful attempt from another business to profit off of your brand and existing reputation.
To determine whether consumer confusion is probable to occur, the Ninth Circuit, a court circuit that includes California and surrounding states, use the Sleekcraft test to make decisions on trademark infringement cases, established from the ruling in AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir.1979). There are eight factors that make up the Sleekcraft test, which include analyzing the similarity between two trademarks, viewing the marketing channels that are used by both companies, looking at the intent of the defendant in using the trademark, and considering the power of the older trademark.
California courts can decide to use factors other than the Sleekcraft test when deciding on whether trademark infringement has occurred. Additionally, trademark infringement issues are usually incredibly technical and depend on the court system in Los Angeles and the complexity of your case. Therefore, it is critical to secure a local and experienced trademark attorney who knows the Los Angeles legal system well.
- Filing a Trademark Cancellation With active and responsible attorneys, you can oppose an infringing trademark before it is even granted registration. This helps you avoid having to negotiate directly with a competitor or, worse, have to battle them in court. By spotting confusingly similar trademarks early and filing a trademark cancellation with the Trademark Trial and Appeal Board (TTAB), you can avoid unnecessary damages to your business revenue early on.
- Issuing a Cease-and-Desist LetterIn the case of trademark disputes, you will need experienced and knowledgeable attorneys to make sure you are adequately represented. Sometimes, trademark disputes can be quickly resolved by serving the infringer a cease-and-desist letter, which implies that a lawsuit is looming if the business doesn’t stop using your trademark immediately. Our Los Angeles trademark attorneys have had substantial success helping our clients avoid going to court by sending a strong and firm message to infringing businesses with cease-and-desist letters.
- Taking the Infringer to Court In the case that two companies cannot agree on a settlement, trademark litigation can become unavoidable. Such litigation typically happens on a federal level. To successfully back your claim in court, you must satisfy the following requirements:
- Your trademark is valid and ideally registered with the USPTO.
- You used your trademark for business before the opposing company with the infringing trademark did.
- Your defendant’s trademark could potentially be confused with your trademark and could throw customers off about the origin of the goods and services.
Our trademark attorneys at Blake and Ayaz are experienced at collecting ample evidence for you to put your best foot forward in court. Our firm will gather the following information, among other evidence, to help you make your case:
- The dates of your trademark use, starting with the beginning date and showing continuity of trademark use.
- The start date of trademark use for the infringing company.
- Where and in what manner the infringer is selling and marketing their goods and services.
- Who the infringer is selling to.
In addition to these factors, our Los Angeles lawyers have a track record of being able to prove instances where consumers became confused by the infringing trademark.
- Recover Damages After you can prove trademark infringement, there is the option of seeking recovery of damages. Typically, the first step is getting a court injunction so that the infringing trademark can no longer be used. Also, you will want to get a court order issued that requires the infringer to give up or destroy all goods with the infringing trademark. Monetary compensation, which can be made up of the infringer’s profits from the infringing trademark, and damages undergone by the plaintiff, can be demanded. Additionally, the plaintiff can order the defendant to cover the fees of the lawsuit and attorney costs.
INTELLECTUAL PROPERTY LAW
In addition to protecting your trademarks, our dedicated attorneys at Blake and Ayaz have years of experience defending the intellectual property of our clients in the Los Angeles area. We carry out thorough research and file detailed patents so that your inventions stay protected. Having a strong patent portfolio to protect your interests and filing patents internationally under the Patent Cooperation Treaty (PCT) are some of the specialties that our practice focuses on.
Our team is actively scanning for patent and copyright infringements so that we can protect your assets and revenue in a timely manner. If you are in the music or entertainment industry, we make sure that your original forms of expression, including your art and media, cannot be bought and sold for cheap by a malicious infringing company.
Our dedicated family of Los Angeles IP attorneys has ample experience in protecting your trade secrets. Sensitive business information that could make or break the foundation of your company, such as techniques your company uses to create your goods, will always be defended by our lawyers.
FINDING EXCEPTIONAL LEGAL REPRESENTATION TO PROTECT YOUR ASSETS
At Blake and Ayaz, our team of well-established Los Angeles attorneys is here to help you defend your intellectual property and other assets and, in turn, boost your enterprise’s influence and overall revenue. If you are seeking a Los Angeles intellectual property lawyer, or need assistance with complex legal matters, including trademarks, copyrights, licensing, or trade secrets, don’t hesitate to contact our office today.