Axis Trademark and IP Law
A Los Angeles, California Law Firm representing Trademark Clients
Looking for the right Los Angeles Trademark Lawyer?
We help clients throughout California register and
apply for trademark protection to protect their
business names, services, and goods cost-effectively and reliably.
Trademarks form a key foundation of marketing and brand identity. There is nothing worse than establishing a successful business, brand, or product, only to have competitors compete unlawfully by using deceptive means to try to capture marketshare. In order to minimize confusion and maintain trademark rights, trademarks are registered and enforced both internationally and domestically through a database.
Overview of Trademark Law
Registering your trademark is one of the easiest things you can do to protect your company’s name, brand, logo, design, or other mark. Getting a trademark application on file with Axis is fast and easy. Take a look through our FAQs, Pricing, and Resources to get more information about the process and how easy it is to get started.
What is a Trademark? A trademark is a federal protection for your name, sign, logo, slogan, or combination of these items, which help identify your services and products and distinguish them from others in the market is. Without a mark that is protected by the filing of a trademark application with the U.S. Patent & Trademark Office, any other person can begin using your Mark and you will be unable to protect it.
What Protections Do you Get by Trademarking? By trademarking your Mark, you receive a series of protections based on federal law, which include but are not limited to the following:
- Nationwide Protection: You will receive nationwide and exclusive ownership over your Mark.
- Enforcement: If an individual or business attempts to use your Mark, you will be able to enforce your Mark and prevent them from using it.
- Statutory Damages: If an individual or business uses your mark unlawfully, you can bring legal claims against them attempting to recover statutory damages based on federal and state law.
Where are Trademark Registrations Filed?
The U.S. Patent and Trademark Office is the governmental agency that oversees federal trademarks. Trademarks are symbols, logos, words and their fonts, designs, colors, and even sounds that identify a particular product. The owner of a federal trademark registration has the right to prevent others from using the registered trademark anywhere within the United States, whether or not the trademark owner has sold goods or provided services to customers within any particular region. A major benefit of obtaining a federal trademark registration is that your trademark is protected nationwide.
When approving or rejecting trademarks, the United States Patent and Trademark Office (USPTO) evaluates whether the trademark is too generic or whether it could be easily confused with an already existing trademark. It also compares a mark with common law rights to trademarks, which are unregistered marks that have been in use commercially. Having a federal trademark registration gives notice to your competitors, or anyone who might want to use the trademark, that it is your exclusive property. Such notice is required to recover profits or damages for trademark infringement.
Types of Trademark Registrations
There are basically two ways of establishing trademark rights. The first is filing an application claiming that you’re currently using the mark in connection with your business or an activity. The second method involves filing an application registering a mark stating that you have the intention to use the mark in commerce at a later time.
What Makes a Strong Trademark?
A strong trademark allows you to prevent third-parties from using your mark. When it comes to selecting a strong Trademark, two factors come into play- likelihood of confusion and strength of the mark. Likelihood of confusion exists when the marks are similar and the goods or services are related in such a way that consumers believe that they come from the same source. This means that the marks are related in such a way that they look alike, sound similar, have the same meaning, or create similar overall commercial impressions. Please note that even identical marks may be registered if used on goods or services that are unrelated, unless the mark is famous.
- Generic Terms – Common, everyday names; incapable of identifying source. They are the weakest mark and are not registrable.
- Descriptive Terms – Merely describe a feature or quality of the goods or services, and don’t identify and don’t distinguish the good or services. Although these are warmer than generic terms, these are not registrable.
- Suggestive Terms – Suggest qualities and characteristics of goods or services without actually describing them. These are mostly registrable.
- Arbitrary Terms – Creative or unusual terms that are inherently distinctive and the source is identifiable. They are the easiest mark to protect and are registrable.
What’s the Difference between a Trademark, Patent, Copyright, Domain Name, and Business Name Registration?
Trademarks, patents, copyrights, domain names, and business name registrations all differ, so it is important to learn whether a trademark is appropriate for you.
A trademark typically protects brand names and logos used on goods and services. A patent protects an invention. A copyright protects an original artistic or literary work. For example, if you invent a new kind of vacuum cleaner, you would apply for a patent to protect the invention itself. You would apply to register a trademark to protect the brand name of the vacuum cleaner. And you might register a copyright for the TV commercial that you use to market the product.
A domain name is part of a web address that links to the internet protocol address (IP address) of a particular website. For example, in the web address “http://axislegalca.com,” the domain name is “axislegalca.com” You register your domain name with an accredited domain name registrar, not through the USPTO. A domain name and a trademark differ. A trademark identifies goods or services as being from a particular source. Use of a domain name only as part of a web address does not qualify as source-indicating trademark use, though other prominent use apart from the web address may qualify as trademark use. Registration of a domain name with a domain name registrar does not give you any trademark rights. For example, even if you register a certain domain name with a domain name registrar, you could later be required to surrender if it infringes someone else’s trademark rights.
Similarly, use of a business name does not necessarily qualify as trademark use, though other use of a business name as the source of goods or services might qualify it as both a business name and a trademark. Many states and local jurisdictions register business names, either as part of obtaining a certificate to do business or as an assumed name filing. For example, in a state where you will be doing business, you might file documents (typically with a state corporation or state division of corporations) to form a business entity, such as a corporation or limited liability company.
What’s the Difference between a Trade Mark, Trade Name, or Business Name?
A trade name is any name used by a business to identify itself. Simply adopting a trade name does not necessarily mean that it is protected by any federal or U.S. trademark.
A trademark is more specific: it is a symbol or word (including slogans, logos and designs) used to identify the source of goods or services, and it gives the owner of the trademark certain rights. For example, the Nike Swoosh logo signifies that the source of the product is Nike.A trademark generally allows its owner to exclude others from using a confusingly similar trademark. In the U.S., the first user (senior user) of a trademark usually has ownership priority rights over later users in their geographic area.
Trademark protection can last as long as the trademark is used in commerce and as long as the trademark does not become generic. For example, “Kleenex,” which was once a brand name, is now generic to describe all tissue paper.
What is the Difference between a Trademark and a Copyright?
Registration of a trademark with the U.S. Patent and Trademark Office (USPTO) protects brand names, designs, or logos that distinguish the goods or services of one provider or manufacturer from the goods or services of another provider or manufacturer. A trademark generally allows its owner to exclude others from using a confusingly similar trademark. Having a registered trademark may also decrease the likelihood that another party will file a trademark infringement lawsuit against you.
Registration of a copyright with the U.S. Copyright Office protects original works of authorship that are in a “tangible medium” – something you can touch or buy. For example, a recording of a song, an oil painting on canvas, or a novel. Copyright protection can be given to many kinds of works, including literary, dramatic, musical, artistic works, and more. Subject to some limited fair use exceptions, the owner of a copyright generally has the exclusive right to reproduce, distribute, perform, display, or license a work and derivatives of the work.
What Kinds of Trademarks are Available?
Not all trademarks are entitled to trademark protection. There is a hierarchy in trademark law that includes the following categories:
- Fanciful trademarks, made up words that have no connection to the product, are given the highest level of protection with the greatest scope.
- Suggestive marks are given the second highest level of protection. These marks suggest a quality or feature of the product, but do not describe the product.
- Descriptive marks describe the product and are given much less protection.
- Generic marks are given no protection at all. Generic marks are words that are the same as the common name of the product.
What is the Process for Getting a Trademark?
- Search of Existing Trademarks. A trademark application generally begins with a trademark search, if elected by the client. A trademark search will include a complete search of all federal and state registrations and pending applications, a search of common law rights, and an opinion concerning the availability of the proposed mark.
- Preparing the Application. If the coast is clear, then the trademark process will involve preparing an application before the U.S. Patent & Trademark office. AXIS Legal Counsel offers trademark applications for low flat fees. Contact us today to learn more about our rates. The cost of applying for a federal trademark includes a government filing fee of $325 per class of goods or services plus the fees of an attorney. Class, also called International Class, refers to a specific category of goods or services that the proposed trademark falls into–such as clothing or furniture–and these classes have been established by the USPTO. To protect yourself appropriately, it is important that you and your attorney correctly identify which class(es) your goods or services fall under. You will also need a specimen showing how the trademark is actually used in commerce (for example, on packaging for the goods or on labels attached directly to the goods) must be submitted to the USPTO with the application, unless you are filing based on an intent-to-use, rather than existing actual use.
- Assignment to and Objections by the Trademark Examiner. Once your trademark application is filed, it will be assigned to an examiner. The trademark examiner may object to the trademark application for a variety of legal and technical reasons. These are called “office actions.” If the trademark examiner rejects the trademark application because someone else used the same or a similar trademark before you, we will advise you whether we think we can overcome the rejection and the cost of fighting the rejection. In many cases, the examiner has no objections. In that case, we receive a notice of allowance. The registration usually issues within 3 to 4 months of the notice of allowance. If there is no objection, then there are no additional fees and the application is published by the Trademark Office to see if any other company has an objection.
- Opposition and Objection from the Public. If no objection is received from the public within 30 days of publication, then a federal trademark registration will issue for your trademark. An objection from the public can result in a form of litigation called an opposition proceeding before the Trademark Trial and Appeal Board.
How Long Does it Take to Get a Trademark?
It takes approximately:
- 7-10 Days once an application is filed for the serial number to be assigned and the mark to display as “live” on the U.S. Patent & Trademark’s office
- 4-6 months to learn whether the Trademark Examiner has concerns about the trademark
- 6-8 months for the Trademark to publish
- 8-9 months to obtain the registration, assuming there are no oppositions, refusals, or office actions.
Selecting a Mark
Once you determine that the type of protection you need is, in fact, trademark protection, then selecting a mark is the very first step in the overall application/registration process. This must be done with thought and care, because not every mark is registrable with the USPTO. Nor is every mark legally protectable, that is, some marks may not be capable of serving as the basis for a legal claim by the owner seeking to stop others from using a similar mark on related goods or services. Businesses and individuals new to trademarks and the application/registration process often choose a mark for their product or service that may be difficult or even impossible to register and/or protect for various reasons. Before filing a trademark/service mark application, you should consider:
- Whether the mark you want to register is registrable, and
- How difficult it will be to protect your mark based on the strength of the mark selected.
AXIS Legal Counsel offers legal services to a wide variety of clientele in need of a trademark attorney. If you are in need of legal assistance from a Los Angeles trademark attorney, contact Axis for a confidential no-risk and no-charge consultation at email@example.com or (213) 403-0130.