Whether you are creating your own business, starting a nonprofit organization, or even starting a band, trademarks provide you with the opportunity to set your brand apart from others. When you do this, you create an identity that differentiates you from competitors. Trademarks work to put your customized stamp on your products and services so that consumers can recognize your work. This is a vital part of brand recognition that builds your company into a thriving and reliable source. However, there are times when others try to infringe on your copyright, which could hurt your brand by marketing inferior products and services. This confusion can drive your business base away from you.

At The Myers Law Group, we understand how important your brand is to your success and how valuable your trademark is in building a solid foundation for your consumers. Trademarks, copyrights, and patents are all part of a category known as intellectual property, and our team is skilled and experienced at helping our clients ensure that their intellectual property is protected. Whether you are seeking a trademark application for the first time or find yourself needing guidance and help litigating a trademark infringement, our team of trademark attorneys can help.

Filing a Trademark

The trademarking process is more than just designing something and putting the trademark symbol on it. There are actually several types of trademarks, including registered versus unregistered and state versus federal.

Unregistered Trademarks

Unregistered trademarks fit into the protections of common law. This is when you decide to put the ™ symbol on what you wish to trademark and start using it in the regular conduct of your business. While this seems simple enough, there are limited protections. Should someone claim an infringement, or if you feel that someone else is infringing on your use of the trademark, then it must be proven in court who first used the trademark in the conduct of business. In addition, these types of trademarks are only protected within the geographic region in which you are located. If, for example, you name your business Myers’s Auto Sales and use an unregistered trademark, someone in another geographic region could name their business the same, and you have no legal right to go after them for trademark infringement.

Registered Trademarks

If you wish to have protections nationwide, you will want to file for a registered trademark, which offers you protections beyond your geographic region. Thinking about this decision early on in your business or entity could save you time and energy in the future. What you may think will begin small could easily grow, so knowing the future goals of your enterprise is important when deciding whether to go with registered versus unregistered.

State vs. Federal Registration

In addition to deciding between a registered or unregistered trademark, you will want to decide if you need a state or federally registered trademark. State level registrations, such as in California, can offer you protection throughout the state from infringements that may arise anywhere within its borders. If you find a company attempting to use your trademark, or infringe on elements of it that could impact your entity, then you have a legal right to take action. However, state registration only protects you within California. For national trademark protection, and to legally use the federal trademark symbol, you must file for a federal trademark registration.

Trademark Search

Before you make the decision to apply for a trademark, you will want to conduct a trademark search. This is one of the many areas where a trademark attorney can help. Searching through state and federal databases can be time-consuming, and knowing what to look for can be difficult. With an experienced Los Angeles Trademark lawyer, you can not only ensure your trademark is unique and qualifies for registration, but you could save additional time and money with any potential future litigation you may encounter because of a faulty search.

Registering Your Trademark

Registering your trademark on the federal level is often the right choice for many California businesses. The registration will be filed by your attorney through the U.S. Patent and Trademark Office (USPTO), which will provide significant advantages for your business. Many of these advantages include:

• You can exclusively use the trademark from coast to coast.
• It blocks similar trademarks from registering if they may cause any confusion in similarity.
• You gain the legal right to use the national trademark symbol.
• You are the presumed legal owner of the trademark.
• You are less likely to encounter infringement as a part of the national database.

Protecting Trademarks Internationally

Using what is known as the Madrid Protocol, if your trademark is registered federally, you can easily register it internationally. For businesses that are based in California, but conduct business internationally, filing for international trademark protection can ensure that your company can continue to grow and build its foundation in most countries around the world.

Trademark Considerations

With the many options available to you for registering your trademark, you should consider your business or entity and what your long-term goals are. The trademark registration process takes an initial four months before your application is reviewed. The process is time-consuming because the USPTO painstakingly ensures that each trademark qualifies, is unique, and complies with federal law. Many trademarks are refused because of any one of the following reasons:

• It could be confused with an already existing trademark.
• The trademark is too generic or is simply a descriptive word.
• The trademark describes the geographic location where the goods and services originated.
• It is a person’s surname.
• The trademark uses a person’s name, image, or likeness without their consent.

Often, goods and services that are similar may also have similar trademarks. The purpose of a trademark is to uniquely identify you and your business or entity. If a trademark is considered confusing, it is likely too similar in design, phonetic sound, or the commercial impression to a preexisting one.

Time Limits on Trademarks

Once registered, trademarks do not hold a lifetime guarantee. The protections offered on a registered trademark last for five years, and a renewal application must be filed between years 5 and 6 to ensure that your protections remain in place. If you fail to file a renewal, then the trademark will expire, and you will lose your rights to it. This can complicate matters because, if your trademark expires, another entity can register something similar. If you continue to use the trademark you had previously registered, you could find yourself infringing on the new registration, even though you had it first.

Trademark Infringement

When two companies use trademarks that could be considered confusing, but are using them at the same time, it falls into the category of trademark infringement. While not every incident is nefarious in nature, there are times when there is malicious intent to hurt your business or diminish the reputation of your goods and services. This is done with the intent to cut into the profits of your business and use your success to profit.

Cease-and-Desist Letter

The first step in a trademark infringement incident is to have an attorney issue a cease-and-desist letter. These letters are designed to provide the entity that is infringing an opportunity to stop use of the trademark without seeking litigation. In many cases, this will be enough to settle the issue. The letter will inform the entity that if they do not, they will face litigation that could cost them both time and money. Anytime an entity can avoid a legal process, they will often do what is necessary.

Trademark Litigation

Should a cease-and-desist letter fail, the next step is to litigate the issue. To prove that an infringement has occurred, the plaintiff must prove that not only is the trademark similar, but so too are the goods and services offered. This is why a company like Delta Air Lines cannot seek infringement on Delta Faucet Company. The products and services offered are separate and therefore eliminate the confusion consumers may have. Without proving the trademark is confusing, the likelihood of successfully recovering damages is drastically reduced.

When determining if the trademarks are confusing, there are 8 considerations that are taken into account. These include:

• How strong is the trademark considered the original?
• How close are the goods and services?
• How similar are the trademarks themselves?
• Does any evidence exist that can prove that confusion has already occurred?
• What marketing services are used?
• How much would an ordinary consumer pay attention to the details of the trademarks?
• What was the intent of the entity that is accused of infringement when they selected their trademark?
• How likely is expansion for the product lines?

While many trademarks are similar, proving that infringement has occurred involves the details surrounding the two trademarks in question. Because of this, the legal system offers courts a wide amount of discretion in determining if trademark infringement has actually occurred. The above considerations help determine the ultimate decision, but they are not the only factors that are considered when reaching a decision in any trademark litigation. It is ideal to consult your attorney about your concerns so that they can help guide you through the process and recommend the next steps you should take.

To be successful in trademark litigation, a plaintiff must prove:

• They own the trademark or were the first to use it, preferably through USPTO registration.
• The trademark was already in use while conducting business prior to the infringement.
• The infringing trademark could reasonably cause confusion.

To meet these requirements, you will want to gather multiple forms of evidence, including:

• Documentation of the trademark’s first use and consistency of use after
• Information regarding the infringing entities goods, services, and geographic business area
• The intended audience of the trademark
• Any actual evidence that proves that confusion has already occurred

This is another area where a Los Angeles Trademark Lawyer can help ensure that you have the proof needed.

An attorney is not required for registering a trademark in California. However, the process can be difficult and confusing, which could lead to missteps in the application process. If you are not thorough in your application, or in your usage of your trademark, you could find yourself exposed to potential litigation for trademark infringement. The cost savings on the front end, when not utilizing the services of an attorney, could end up costing you more time and money later should you face litigation. An attorney can

• Help ensure that your trademark is available through an extensive search.
• Ensure that your documentation and application are current.
• Work on your behalf throughout the USPTO process.

Both a trademark attorney and a patent attorney work under the umbrella of intellectual property. This involves original ideas, designs, or concepts that you want to protect from others. Even though they work in intellectual property, they focus on different areas. Trademark attorneys focus on intellectual property, such as logos or business names, while a patent attorney focuses on designs for tangible products. Each type of attorney will focus regionally and nationally on the laws, education, and changes that relate to their specific area of intellectual property law. Often, the two attorneys will work in tandem with one another if you are registering both a patent and the name of the product for which the patent is protecting. This team can help you gain the complete protection you need for a new product you may be offering.

Whether you are looking to register your business name, logo, or slogan in Los Angeles, your intellectual property deserves protection. It can be a big step in making your dream a reality. Seeking trademark protection can help ensure that you have created a solid foundation for your business or entity, build brand awareness for your consumer base, and help distinguish you from your competitors. You may not think it’s an important step now, but our trademark attorneys at The Myers Law Group know how important this step can be. If you have questions about trademarking, contact our offices and let our team help guide you through the process to ensure that you have the protections you need.