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Trademark Registration Benefits

The Benefits of Trademark Registration

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Trademark Registration Benefits

Trademark protection is extremely important because it ensures that a company’s brand doesn’t get tarnished by misuse, and that customers don’t get outright stolen by a competitor due to unauthorized use. While common law trademark rights afford a certain level of protection since ownership of a mark is established the moment that mark is used, the best way to ensure that your trademark is truly protected in both the short term and the long term is to register it with the U.S. Patent and Trademark Office (USPTO). The benefits of trademark registration are wide-ranging, including the ability to take legal action if someone ever violates your intellectual property rights. Simply put, making sure that your trademark is officially registered can have a significant impact on your company’s bottom line.

To learn more about the advantages of trademark registration, keep reading this blog.

Why Should You Register Your Trademark with the USPTO?

Although you have common law trademark rights the moment you begin using your product or service, there are a number of exclusive rights that come when you formally register your trademark with the USPTO. Some of the most significant benefits of trademark registration include the following:

  • You get trademark rights in every state and U.S. territory. Regardless of how limited your use may be, official recognition of your mark by the USPTO will give you trademark protection in all 50 states. This could be especially important if a competitor ever infringes on your trademark in a state or region where you don’t normally do business.
  • You can use the trademark registration symbol. You are not allowed to use the trademark registration symbol ® on your product packaging or any other product-related materials (e.g., a website, advertisements, etc.) until your trademark is registered with the USPTO. When people see this symbol, it can offer immediate credibility because they will know that you have obtained an official trademark. Moreover, the ® symbol can also have the effect of discouraging others from possibly trying to infringe on your trademark because they know that doing so will expose them to liability.
  • Your trademark will be entered in the USPTO database. The USPTO maintains an online database of all trademarks that have been officially registered in the United States. The database includes information about the trademark, whether the trademark is registered for a good or service, and the date on which the trademark registered. The federal trademark register serves as notice to anyone who might think about violating your trademark, whether the infringement is intentional or unintentional. The USPTO will be able to quickly identify your trademark in the database if anyone ever attempts to register a similar trademark. Additionally, since all marks listed in the database are enforceable, your competitors will know that you can sue them in federal court if they violate your trademark.
  • You can file a trademark lawsuit in federal court. One of the most important benefits of trademark registration is that you will be able to enforce your trademark with legal action. Although common law trademark rights exist, only a registered trademark holder can file a Lanham Act claim in U.S. district court, which is how you pursue damages when someone violates your trademark. Beyond that, if your case does reach trial, the fact that you have a trademark registration certificate may be sufficient as proof that you own the trademark.
  • You will have trademark licensing rights. Intellectual property rights can be incredibly valuable, and not just because they are enforceable as a way to ensure brand integrity and maintain your share of the market. When your trademark is registered with the USPTO, it will open up another potential revenue stream by allowing you to sell, license, or otherwise transfer your trademark rights in the future.

Contact the Los Angeles Trademark Lawyers at Tauler Smith LLP

The L.A. trademark attorneys at Tauler Smith LLP have a comprehensive understanding of intellectual property laws, and they are ready to protect your interests in both California state court and federal court. Call us anytime at 310-590-3927 to discuss your trademark case. You can also fill out the online contact form to schedule an initial consultation.

Trademark Registration

How to Register a Trademark

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Trademark Registration

It isn’t technically necessary to register a trademark in order to get trademark protection because common law trademark rights exist as soon as you create and use a trademarkable feature of your brand. However, many companies still decide to register their trademarks with the U.S. Patent and Trademark Office (USPTO) because doing so comes with several advantages, including the ability to file a lawsuit in federal court if you discover a competitor infringing on your trademark rights.

To learn how to register a trademark and protect your intellectual property rights, keep reading this blog.

What Is the Trademark Registration Process?

Registering a trademark is not a simple matter. For starters, you should expect the trademark filing process to take at least eight (8) months even in the best cases, and up to 18 months if there are delays or legal issues with your application.

There are several stages to the trademark registration process, including the following:

  1. Trademark Clearance Search
  2. Prepare & Submit the Application
  3. Monitor Your Trademark Application Status
  4. Review of the Trademark Application
  5. Publication of Your Trademark
  6. Registration Certificate Issued

Stage #1: Trademark Clearance Search

You must first select a name, design, or other type of mark to be trademarked, and the success or failure of your application for formal trademark recognition will hinge on whether another company already has an existing trademark for a similar name or design. So, before submitting your trademark application to the USPTO, either you or an attorney should perform what is known as a trademark clearance search. By looking through the USPTO trademark database, you can make sure that no one else has already registered a similar trademark before you file your application. The federal trademark register provides information about when a trademark was initially registered, its design, and its product application.

In the event that a trademark already exists for a similar product, the USPTO will likely reject your application. If your application is successful despite the existence of a similar product name or design, you could later find yourself exposed to liability when the other company files a trademark infringement claim against you.

Stage #2: Prepare & Submit the Trademark Application

The USPTO has made it easier to register a trademark by allowing individuals to file their trademark applications online. You can set up a USPTO.gov account on the Trademark Electronic Application System (TEAS). Once your online account has been created, you will be able to file your trademark application. There is a non-refundable application/processing fee of up to $350, as well as additional fees if you need to request more time to show your intent to use the mark. (Assuming your trademark application is ultimately successful, you will then need to pay a filing fee for declaration of use after 5 years, and then a renewal fee every 10 years.)

Stage #3: Monitor Your Trademark Application Status

After submitting your trademark application, it will be your responsibility to keep track of its progress. You’ll be able to do this by using the Trademark Status and Document Retrieval (TSDR) system, which provides easy access to your application and registration information, including the status of any documents that you sent to the USPTO, messages about deadlines for submitting additional documents, and the progress of your application. The system can be accessed 24 hours a day, and logging in requires you to enter either the trademark serial number or the trademark registration number.

You are expected to log in and check your trademark application status at least once every six (6) months, and you should continue checking the status until you’ve received notice that your trademark application was successful. You should also make sure that all personal contact information is correct, including your mailing address and your email address.

Stage #4: Review of the Trademark Application

After you file your trademark application, a review will be assigned to a USPTO examining attorney. The examining attorney will first make sure that your application is compliant with all laws and regulations, and then conduct a thorough search for any conflicting trademarks. At the conclusion of the review, the examining attorney will either accept your trademark or refuse to register your trademark.

If your trademark is rejected, the examining attorney will issue an “office action” via official letter. The office action will provide grounds for the refusal by listing any legal issues that exist with the trademark. If these are minor issues that can be easily remedied, you may be allowed to fix them and still get your trademark approved. You or your attorney will need to respond to the USPTO within six (6) months of receiving the office action. Failure to respond in a timely manner will result in your application being considered “abandoned.”

Stage #5: Publication of Your Trademark

If your trademark application is approved with no objections, the mark will be published in the Trademark Official Gazette (TMOG). This is the official journal of the USPTO, and it is published every week on Tuesday. The publication serves as notice to the public of the existence of your trademark. Once the mark is published in the Trademark Official Gazette, other parties will have just 30 days to take action if they wish to oppose your trademark registration. If an opposition is filed by someone who believes that you are attempting to register a trademark that they already own, the case will go before the USPTO Trademark Trial and Appeal Board (TTAB).

Stage #6: Registration Certificate Issued

After 30 days have passed without objection to your trademark since its publication in the Official Gazette, the registration process will enter the final stage. The issuance of a trademark registration certificate won’t happen quickly, so it is imperative that you continue to monitor your application status online. In many cases, it takes another three (3) months before the USPTO officially registers the mark and sends you a registration certificate. You will then need to file all required maintenance documents (e.g., Declaration of Use, Declaration of Incontestability, etc.) in order to ensure that your registration remains active. This can be done through the online system.

What Happens If Your Trademark Application Is Successful?

At the conclusion of the trademark registration process, the USPTO will issue a decision and either accept or reject your trademark application. If the agency accepts your application and grants your trademark, and there is no subsequent opposition to the trademark after notice is published, you will be able to use the trademark registration symbol ® on your product’s packaging and other materials, which is a good way to deter any possible competitors from attempting to use your trademark.

Once your trademark has been officially registered, the USPTO will enter it in an online database. This will serve as legal notice to everyone in the United States and throughout the world that your trademark is enforceable. If anyone ever violates your trademark rights, you will be able to file a lawsuit in U.S. district court.

Contact the L.A. Trademark Attorneys at Tauler Smith LLP Today

The legal team at Tauler Smith LLP includes Los Angeles intellectual property lawyers who have extensive experience representing both plaintiffs and defendants in trademark disputes. If you received a trademark violation letter, or if you need help protecting your trademark against infringement, we can assist you. Call us today at 310-590-3927 or submit the online contact form to schedule a consultation.

Trademark Symbols

When Can You Use Trademark Symbols?

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Trademark Symbols

There are three main symbols to indicate trademark rights: TM, SM, and ®. These symbols often appear as subscript or superscript in a product or service’s marketing materials. If you use one of these symbols, it will indicate that you are claiming trademark ownership. This doesn’t automatically establish your trademark rights since the claim may still need to be litigated in the event of a dispute, but placing a trademark symbol near the relevant word, phrase, logo, or design can still serve as a strong deterrent to any competitors who might want to violate your trademark. The key question is: Exactly when can you use trademark symbols? And what are the differences between the trademark symbols?

To find out when you can use the various trademark symbols on your product packaging, advertising materials, etc., keep reading this blog.

The Benefits of a Trademark Symbol

A trademark symbol can let people know that you are claiming ownership of the trademark. In other words, the trademark symbol is a visual cue to anyone who might be looking at your product, putting them on notice that you hold the trademark. For consumers, the symbol indicates that this particular product is associated with your brand, which can put the consumer at ease that what they are about to purchase is the right product. For competitors, the symbol tells them that this product is off limits if they are thinking about copying it and trying to pass it off as their own, an infringement that not only threatens to take away your customers but can also do serious damage to your brand integrity.

What Do the Trademark Symbols TM, SM, and ® Mean?

There are three different trademark symbols that are commonly used:

  1. TM – This is short for “Trademark,” and it is typically used for goods.
  2. SM – This is short for “Service Mark,” and it applies to services.
  3. ® – The R inside a circle signifies that a trademark has been federally registered.

Since you have common law trademark rights the moment you begin using your trademark, you also have a legal right to use the “TM” or “SM” symbols on your product packaging and in ads, depending on whether you want to indicate a trademark (TM) for goods or a service mark (SM) for services. It is only through official registration of your trademark, however, that you can legally use the trademark registration symbol ®.

Restrictions on Use of the Trademark Registration Symbol

It is important to understand that there are certain restrictions on use of the ® symbol, including the following:

  • The trademark registration symbol can only be used by an officially recognized trademark holder, which means that the mark must be registered with the U.S. Patent and Trademark Office (USPTO). If your trademark application is still pending, you are not allowed to use the registration symbol.
  • The trademark registration symbol cannot be used for aspects of your brand that are not listed in the federal trademark register. In other words, the particular good or service must, in fact, be officially trademarked and viewable in the USPTO online database.
  • The trademark registration symbol must be placed near or around the word, slogan, logo, or design that is actually trademarked. It should be clear to the consumer which good or service has been registered.

Contact the California Trademark Attorneys at Tauler Smith LLP

If someone has infringed on your IP rights and you need to enforce a trademark or copyright, having an experienced California intellectual property lawyer on your side can make all the difference. The Los Angeles trademark lawyers at Tauler Smith LLP are here to help you. Call us anytime at 310-590-3927 or submit the contact form to schedule a consultation.

Trade Dress

What Is Trade Dress?

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Trade Dress

If you are a business owner, you may know about the various options you have for protecting your intellectual property rights, such as trademark, copyright, and patent rights. Depending on the nature of your business, another IP right that you might possess is trade dress. What is trade dress? In the broadest terms, trade dress refers to the visual appearance of a product or service, or its packaging, that lets consumers know the product’s source.

To learn more about trade dress, including how it differs from trademark, keep reading this blog.

What Kind of Intellectual Property Right Is Trade Dress?

Trade dress is an intellectual property right that specifically applies to the promotional aspects of a product or service. For example, trade dress would protect the packaging of your product against infringement by a competitor, as long as your packaging is unique and can be clearly distinguished from other kinds of packaging. In addition to product packaging, examples of trade dress for a product might include a product display, or even the design of the product itself. For a service, trade dress can apply to the décor or interior design of a business location or space. (E.g., the look, feel, and ambience of a restaurant chain or theme park.)

Just as with trademark rights, trade dress that has been registered with the U.S. Patent and Trademark Office (USPTO) can be protected in court by having an experienced California trade dress attorney file a Lanham Act claim. Trade dress is also similar to trademark in that there are common law trade dress rights: the use of a particular packaging design or logo is what creates trade dress, regardless of whether it is listed in the federal trademark register. If a competitor violates your trade dress by using packaging or other design aspects that might confuse consumers when it comes to the origin of the product, you may need to take legal action.

When Can Trade Dress Be Protected?

While trademark rights can be both common law and statutory, trade dress is typically a common law IP right. That’s because there are significant restrictions on the types of trade dress that may be recognized by the USPTO, and it can be extremely difficult to get your trade dress listed in the federal trademark register. One of the major advantages of receiving official trademark recognition from the USPTO is that the trademark will be enforceable in U.S. district court if you ever need to file a lawsuit against an infringing competitor, and the same is true for trade dress. That’s why, despite the potential difficulties in receiving approval, it may still be worth it to file a trade dress application with the USPTO.

In order to register your trade dress, certain conditions must be met:

  1. The trade dress must be inherently distinctive, or it must have a secondary meaning.
  2. The trade dress must be non-functional.

What Does “Inherently Distinctive” Mean?

An “inherently distinctive” trade dress is generally one that is novel, unusual, and largely inseparable from the product or service itself. In cases involving trade dress infringements, courts tend to issue more favorable rulings for plaintiffs looking to protect trade dress for services as opposed to products. The United States Supreme Court has ruled that the décor of a restaurant can be inherently distinctive in certain circumstances, whereas product designs alone cannot be inherently distinctive without having acquired uniqueness through advertising and consumer reaction.

If a product’s packaging is found to be similar to the packaging for other products on the market, this doesn’t necessarily doom a trade dress claim to failure. That’s because the plaintiff would still have an opportunity to show that, despite the similar packaging used by other brands, this particular brand’s packaging has acquired a “secondary meaning” among consumers who tend to associate the packaging, design, etc. exclusively with the one brand. For example, the design of the Coca-Cola bottle is shaped in a way that has come to be associated with the Coca-Cola brand. Even if other sodas or beverages use a similarly shaped bottle, consumers instantly connect this particular bottle’s shape to Coca-Cola. This is why Coca-Cola would have a viable claim if a competitor infringed on their trade dress.

Functional vs. Non-Functional Trade Dress

Since trade dress tends to focus more on a product’s packaging than on the actual product, courts have held that trade dress can only be protected legally when it involves visual qualities that are used to market a product or service. Although the Coca-Cola bottle is technically functional in that it contains the beverage being sold to consumers, that’s not the source of the company’s trade dress rights. Since a bottle with a different design and shape could serve the same function, it’s clear that the Coca-Cola bottle was designed primarily for advertising and promotional purposes. This non-functional aspect of the bottle’s design is why it can be afforded trade dress protection.

Contact the Los Angeles Trade Dress Attorneys at Tauler Smith LLP

Whether you’ve received a letter alleging a trade dress violation, or you’ve become aware that someone might be infringing on your trade dress, it is imperative that you speak with a knowledgeable intellectual property attorney as soon as possible. The Los Angeles trade dress lawyers at Tauler Smith LLP represent both plaintiffs and defendants in IP cases, and we are prepared to help you resolve your trade dress case.

To get started, call the Tauler Smith legal team at 310-590-3927 or fill out the online contact form.