Trademark RegistrationOur law firm assists clients in southern California in acquiring trademarks which includes trade dress. If you have an infringement or litigation issue, or need local counsel or pro hac vice assistance, please see our trademark infringement or trademark litigation pages. Our intellectual property litigation page highlights some of our previous results in litigation. For more information about trade dress, you may see our trade dress page.
Trademark rights are acquired either by filing a trademark application or by using a trademark in commerce. Generally, the prior user of a trademark owns the trademark in the geographic region in which it is in use. Several exceptions to this general rule exist. For example, in the U.S. a Trademark Application may be filed on an "intent to use" basis. The filing date of such an Application can become the constructive date of first use for the trademark even if the applicant has not yet begun actual use. Before use or registration of a trademark, a Trademark Search is recommended to be sure that the trademark is not already in use by another party.
Most countries are “first to file” jurisdictions and therefore a trademark should be registered with the United States Patent and Trademark Office (the "PTO") and in all foreign countries where use exists or is planned. Many benefits exist in registering a trademark with the PTO. The most important benefit is that federal trademark registration may afford the registrant presumptive nationwide trademark rights even if the registrant's actual use is limited to a certain area of the country. These presumptive rights can become crucial in the event of an infringement. Federal trademark registration can also provide certain statutory benefits most notable of which is incontestability. Incontestability can prevent certain attacks on a trademark. In practice, a federal trademark registration notifies potential infringers that you are serious about protecting your intellectual property and tends to increase the value of the trademark and the business which owns it.
International registration of trademarks has become easier recently due to the Madrid Protocol which allows us to file trademark applications in most foreign jurisdictions in about the same amount of time it takes to file an application in the U.S. We also have relationships with law firms throughout the world should local expertise be required during prosecution of the application.
If you are interested in having us assist you with registering a trademark, please contact us. We have offices throughout southern California.