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Overview of Trademarks
Trademarks are an important part of building a brand for your business. These are a type of intellectual property that helps identify you in the marketplace. With that in mind, a trademark can be any one of the following:
- Words
- Designs
- Slogans
- Sounds
- Symbols
- Color schemes
- Packaging
Note that this definition is extremely broad. In fact, even a distinctive smell could be trademarked. Further, you should be aware that both “service mark” and “trademark” are often used interchangeably in this area of the law.
The good news is that both terms legally mean the same thing. However, as you might imagine, a service mark is typically used to describe a service while a trademark is used to describe goods or products. In other cases, both are simply referred to as “marks”.
That said, when it comes to trademark law, there are both federal and state laws that apply. Specifically, the Lantham Act establishes the rules at the federal level the Business and Professions Code section in the California statutes provides the state-level requirements. There is also common law that provides additional rules relating to trademarks and unfair competition. Common law is based on court decisions rather than statutes.
Basic Trademark Law Principles
With that in mind, when considering a trademark for your business it can be helpful to understand a few basic principles relating to this area of the law. It’s important to understand that the first business to use a trademark in the marketplace is considered the owner. This means that it doesn’t matter if you registered yours first.
In addition, the more distinctive the mark, the more protection the owner is afforded. It is also more likely that your trademark will be approved for registration. By contrast, the more generic or descriptive your mark is the less protection it will provide and you are less likely to have it approved.
For example, let’s say you wanted to open a coffee roasting company. If you actually named the business “The Coffee Roasting Company” this would simply be descriptive and too generic to qualify for a trademark, meaning you would not be able to register it for federal protection.
By contrast, a distinctive mark is one of the following:
- Fanciful – i.e not a real word (think Xerox)
- Arbitrary – a real word, but not the name of the product (think Apple computers)
- Suggestive – hints at the nature or quality of the goods without literally describing them (think 24 Hour Fitness)
As you can see, being creative is a major part of the trademark selection process. Remember, this is also a name that you will use to market to your consumer base, so this step should involve careful consideration of both your product and the brand you want to promote.
Do I Need to Register My Trademark?
Now, keep in mind that you are not required to register your trademark to be able to use it. However, doing so can benefit you in the event that someone infringes on your name, as you are more likely to be awarded damages in a lawsuit. Further, if you intend to scale a small local company to compete on the national level, registration will help make sure that you are protected as you grow.
Given these advantages, registration also makes it less likely that another company will use your name. Once registered, you are allowed to place the registered trademark symbol ® next to your mark.
How Do I Register My Trademark?
Trademark registration is actually a fairly simple process that can be completed entirely online. The first step is to make sure that the name you want is available. This is done by searching both state and federal databases.
It’s also a good idea to conduct a general online search through one of the major search engines to see if any businesses are currently using the name. Remember, businesses do not need to register their marks to have protection.
Next, you should register your name with the California Secretary of State and the US Patent and Trademark Office (USPTO) and pay the filing fees. Note that it’s important to register as a business, rather than yourself personally.
Consequences of Violating Trademark Law
Keep in mind that it is one thing to simply not register a trademark, but another thing entirely to violate the law. If you are found to be infringing, the most minor consequence you may face is being asked to stop using it. However, this can be devastating for a small business and would require a complete rebranding.
It might involve tremendous work and expense to create new websites, social media profiles, and pull products. You would likely also have to start over building any goodwill you have established in the community.
Now, if it is found that you deliberately violated the trademark laws, you may also be ordered to pay large amounts in money damages to the mark’s owner. Keep in mind that your actions are deemed deliberate if the trademark was listed in the federal register.
How Can a California Trademark Attorney Help?
We will conduct a comprehensive search of all relevant databases to ensure that your mark is not currently in use. This is beyond what you may be able to do with free online search tools.
We will evaluate the strength of your trademark and provide recommendations. Next, our team will prepare and file your trademark application and handle any issues that may arise with your application, including appealing a denial if necessary.
Finally, we will enforce your trademark. Keep in mind that this is not something that the government will do on your behalf. Instead, it is your responsibility to address any infringement issues. We are here to help.