San Diego Trademark Registration Attorney
At T-Rex Law, we understand the importance of a great trademark. We understand the importance of protecting it too. We also know the trademark process can be daunting, but it shouldn’t have to be. Our San Diego trademark registration attorneys are here to walk you through the process. Call us today for a free consultation (858) 220-2345.
What is a Trademark?
A trademark is any word, name, logo, design, color, sound, symbol, product design, product packaging, etc. that is capable of identifying source. Trademarks are everywhere – on signs, billboards, buses, on the Internet, advertisements, television, etc. Some of the most famous trademarks include Apple, Google, Facebook, Instagram, McDonald’s, etc.
A trademark can be a business’s most valuable asset, and trademark owners should do everything they can to protect them. Our 30-second elevator pitch is even shorter than that – dollar for dollar protecting your intellectual property (with focus on protecting your trademarks) is the best way to build value in your business. Most investors aren’t looking at businesses to buy their employees, their inventory of goods, or their supply chains – they are looking at businesses to buy their intellectual property, including trademarks.
All too often trademark owners realize that their trademark protection is not as strong as it could or should be when they need it.
The United States uses a mixed first-to-use and first-to-file trademark system. This means that trademark rights arise from several situations:
First and foremost, you obtain trademark rights in and to your trademark when you make sales of your goods/services. Without a state or federal trademark application/registration (discussed further below), those rights are generally limited to your geographic scope of use. These rights are known as your common law (unregistered) rights.
- For example, if you sell your goods in San Diego, your common law rights are likely limited to the city of San Diego only. If you sell your goods in San Diego and Los Angeles, your common law rights are likely limited to Southern California. If you sell your goods in San Diego and San Francisco, you may have common law rights to the entire state of California. If you sell your goods in California and Arizona, you may have common law rights in both states.
Second, you obtain trademark rights from the filing of and obtaining of a state trademark application/registration. State trademark registrations protect your trademark throughout the entire state – but do not extend outside of that state.
- Please note that, with rare exception, states require actual use of your trademark on your goods/services before a state trademark application can be filed.
Third, you obtain trademark rights as soon as you file a U.S. trademark application (so long as that application remains “alive” and matures into a U.S. trademark registration). U.S. trademark applications can be filed on two (2) separate and distinct bases:
- First, U.S. trademark applications can be filed on an Actual Use basis. A U.S. trademark application filed on an Actual Use basis declares that you have made sales of your goods/services bearing your trademark in interstate commerce (across state lines). If you have not made those sales across state lines, you cannot file the U.S. trademark application on an Actual Use basis. Please note that the “use” requirement varies from industry to industry. Some sales of goods/services may qualify as “use” in one industry but not others. For example, restaurants get the presumption of use in interstate commerce even if they only have one (1) location in one (1) state – because it is presumed that travelers from other states use the highways and roads and will visit restaurants. The “use” requirement is generally satisfied if sales of goods/services have been made outside of the U.S.
- Second, U.S. trademark applications can be filed on an Intent to Use basis. A U.S. trademark application filed on an Intent to Use basis means that you have a bona fide legitimate intent to sell your goods or services across state lines bearing your trademark, but in general you have not yet done so.
Each of the above situations grant a trademark owner trademark rights. This all may seem complex, and an experienced trademark attorney can help you understand the scope of your trademark rights.
Should I Conduct a Trademark Search?
Trademark Searches, often called “trademark clearance” or “due diligence”, involve searching the U.S. Patent and Trademark Office website and common law (unregistered) sources to determine if a third party has prior/superior trademark rights and may have a legitimate trademark infringement claim against you. Trademark Searches provide crucial information on competitors that might be using a same or similar trademark. Trademark Searches can literally save you thousands or tens of thousands of dollars by helping you avoid a trademark infringement claim.
At T-Rex Law, we offer numerous types of Trademark Searches with varying levels of depth. We want all clients to be able to afford at least a basic, identical-only Trademark Search to at least determine registrability of their trademark at the most basic level.
What are the Benefits of Registration?
U.S. trademark applications/registrations grant significant benefits above and beyond the rights you can obtain from common law (unregistered) rights or state trademark applications/registrations. Those rights include:
- Exclusive nationwide constructive rights to use of the trademark, even if you are only using that trademark in several states;
- Use of the ® symbol;
- Presumption that you own the trademark;
- Presumption that your trademark is valid;
- Puts others on notice that you are using a trademark for the applied-for goods/services and can be persuasive when asking an infringer to stop using an identical or confusingly similar trademark;
- Can assist in enhancing damages;
- Can assist in enforcement efforts against cybersquatters that have purchased domain names that include your trademark;
- Attracts investors and increases the value of your business, and can also be used as collateral in financial transactions;
- Grants you the right to use the Madrid Protocol, a system that makes it easier to file foreign trademark applications;
- Helps prove fame that can be used in proving dilution of your trademark (a cause of action that is separate and distinct from likelihood of confusion); and
- The right to seek enforcement of your trademark with certain entities and agencies like the U.S. Customs and Border Protection, Amazon Brand Registry, Alibaba, social media platforms like Facebook, LinkedIn, and Instagram, etc.
What is a Trademark Initial Refusal / Rejection (“Office Action”)?
Initial refusals (called “Office Actions”) are an administrative tool that allows the Patent and Trademark Office to notify you of a deficiency in your U.S. trademark application. These issues can be quite simple (e.g. adding a few words to the description of your goods) to extremely complex (e.g. likelihood of confusion, descriptiveness/genericness, etc.).
An Office Action that isn’t responded to can lead to the death of your U.S. trademark application or affect the scope of the application. It is important to respond to these Office Actions promptly and with a full understanding of what the Response entails.
T-Rex Law is intimately familiar with Response to Office Action situations and can guide you through the process with ease. T-Rex Law can also guide you through more complicated strategies like preparing and filing a Petition to Cancel a prior-filed registration that is the basis for refusing your application.
How Do I File Foreign Trademark Applications?
At T-Rex Law, we have extensive experience in prosecuting foreign trademark applications through the Madrid Protocol. The Madrid Protocol is a treaty that allows the owner of a U.S. trademark application or registration to more easily file foreign trademark applications. Without the Madrid Protocol, a trademark owner would be limited to hiring counsel in each country outside the United States and prosecuting the applications individually.
Why Choose T-Rex Law?
At T-Rex Law, we understand the ins and outs of U.S. and foreign trademark law. We make sure that clients truly understand their legal situation, the law, and their choices. We firmly believe that it doesn’t benefit clients to have an attorney simply drone on and on spouting legal jargon – our attorneys make sure clients really do grasp the concepts and understand why protecting trademarks is so important, as well as what our proposed costs and fees cover.
We also understand the financial burdens that face small to medium size businesses, and we work with clients to comprehensively protect their trademarks while still keeping costs and fees to a minimum. We operate on a 100% flat fee basis, so clients are never issued invoices for work that they didn’t specifically ask for and approve in advance. Our Founder / Partner, Rex Brabson, is the 3rd most active Trademark Trial and Appeal Board attorney in the nation*. Contact our San Diego trademark registration attorneys today by filling out our online form, or giving us a call at (858) 220-2345.
* Based off of publicly-available data from December 01, 2019 – Present.