California Trademark Search
Prior to registering a trademark, a California trademark search can let you know whether your chosen trademark has already been claimed in the state. However, we typically don’t perform California trademark searches alone because it is much more important to search nationally than just in one state.
California Corporation Search
As part of forming your business, you should search the California Secretary of State records to be sure that your chosen company name is unique. Many budding entrepreneurs believe that registering their company name or filing a “doing business as” (DBA) form is enough to provide trademark protection. Unfortunately, this isn’t the case. Registering a company name provides absolutely no trademark rights.
Registering your company with California simply means you’re authorized to conduct business under that name. This means that you can do things like deposit checks made out to that business name. It provides no statewide trademark protection, and it certainly doesn’t grant trademark rights under federal or international laws.
Actually using your business name in commerce will likely provide common law trademark rights, but this isn’t guaranteed. In fact, someone who properly registers their trademark could later demand that you stop using your business name due to a likelihood of confusion.
Fortunately, a business name can easily be changed. The more difficult task will be to change your trademark if you have already begun use such as on a website. So you can save yourself a great amount of time and money by first performing a trademark search and filing a trademark application prior to conducting business.
California State Trademark Search
It is the California Secretary of State’s office that also maintains trademarks and service marks registered in the state. The agency also offers an online search tool to search trademarks that are registered in the state.
California’s Secretary of State’s trademark search provides a variety of methods for seeking out information on existing trademarks. It is possible to search based on all the following criteria:
- Registration ID
- Description of trademark
- Registration date
- Class code
- Design code
- Name of owner
If you’re simply trying to discover if there are trademarks in use that resemble your desired trademark, searching under “Description of mark” is your best bet. Due to the difficulty in finding every potential match, though, it is a good idea to have a trademark lawyer perform these searches. Whatever route you choose, being thorough will definitely save you both time and money.
Once you’re satisfied that your proposed trademark wouldn’t create a likelihood of confusion with others in use, trademark registration is your next step. Keep in mind that you can only register a trademark in California if:
- You’re using your trademark in commerce within California.
- The trademark is more than just descriptive.
- A drawing on 8.5”x11” paper is included with the application.
- Trademarks with foreign meanings include a translation.
- Three identical specimens proving use in commerce are included.
- A filing fee of $70 for every classification code applied for is included.
Once you’ve performed a California Secretary of State trademark search and meet the registration requirements, you can submit an application directly through the state’s Trademark Online Filing form. However, please note that due to the limited value of a state trademark and the potential for conflict with a federally registered trademark, we rarely file trademarks in just one state. Instead filing nationally is highly recommended.
Search California Trademark Database
The ability to search the California trademark database online is a relatively new feature. Before this tool was made available digitally, you’d have to either contact the Secretary of State by phone or submit a search request via U.S. mail. Those who wish to check on no more than two trademarks still have the option to request such a search over the phone.
Of course, you may be able to perform a much more in-depth analysis by searching the California trademark database yourself. After all, the person who answers your call at the Secretary of State’s office can only perform a search as thorough as the information you provide. By using the California Trademark Search page, you can use countless queries to ensure you’re not infringing upon anyone’s rights.
You may also perform a more in-depth search of California’s trademark database by using class codes. These codes refer to specific industries, and they can be used to narrow down results to only the most relevant. These can be found on the United States Patent and Trademark Office’s (USPTO) Class Code page, and you can enter them after selecting “Class Code” in the “Search Type” section of the trademark search page.
Searching via class code will typically return 500 results, but you can further narrow these down by typing relevant keywords into “Narrow search results” on the right side of the page. Keep in mind that trademarks may occupy more than one class code, and if natural expansion could occur into another industry, it’s prudent to check each of these classes. Due to the nature and importance of a trademark search, we highly recommend that you have a trademark attorney perform the search.
California Trademark Name Search
If you’re looking to create a unique brand identifier, a California trademark name search is a good start. Unfortunately, it is very unlikely to be sufficient for identifying similar trademarks that may conflict with your own. That’s because statewide searches don’t show trademarks that are protected nationally. With almost 500,000 trademarks filed nationally in the U.S. each year, a California trademark name search is likely to be inadequate.
Fortunately, the USPTO’s Trademark Electronic Search System (TESS) allows you to perform a nationwide search. If you merely need a trademark name search, the “Basic Word Mark Search” on this page should be sufficient. There are also options for design searches available on the USPTO website, but they’re more complex than simple name queries. Still, this is still far more effective than California trademark name searches.
California Secretary of State Trademark Search
There are several factors you should consider when choosing between federal and California trademark protection.
Whether you perform a federal or California trademark search will depend heavily upon which type of trademark you intend on registering. To make this decision, it’s necessary to consider the advantages of both options. These benefits are as follows:
Benefits of California Trademark Registration
- Affordability: Federal trademark registration can cost between $225 and $400 per category. California trademark registration is only $70 per category.
- Processing time: The necessary processing time – to include the California trademark search – is typically much shorter than federal processing times.
- Litigation protection: If a nationwide company claims you’re infringing upon their trademark, a prior registration in California can provide evidence of priority use. Again, this only applies geographically.
Benefits of Federal Trademark Registration
- Nationwide protection: A federal trademark provides nationwide protection which will lead to a much more valuable trademark.
- Trademark symbol: Only federally registered trademarks are allowed to use the registered trademark symbol (®). This alerts others that you have rights over the trademark.
- Foreign registration: Federal trademarks can be used as a basis to obtain protection in other countries.
- USPTO database: Anyone searching the federal database will be able to find your trademark and know it’s protected which may head off an infringement.
- Presumption of ownership: Federal registrations provide a presumption of ownership that can be beneficial during trademark litigation.
Trademark Searches After Registration
If your trademark registration has been approved by the USPTO, it doesn’t necessarily mean your work is done. Although the attorneys who review new applications are skilled at what they do, it’s possible that trademarks which could cause a likelihood of confusion could get through. This is why all potential trademarks are published in the Official Gazette for an opposition period.
If you or your third-party monitor recognizes a trademark that could potentially infringe upon your own, you can file a Trademark Opposition to prevent registration. Oppositions can be filed for a variety of reasons. They are as follows:
- Possibility of trademark dilution.
- Trademark is descriptive or generic.
- Trademark is a last name.
- A false connection, origin or sponsorship is implied.
- Trademark may confuse public due to similarity to others.
To be sure trademarks similar to your own are not being approved by the trademark office, we highly recommend that our clients utilize trademark monitoring and if a similar trademark is found, we recommend a prompt cease and desist letter.
California Trademark Search Lawyers – Mandour & Associates
Performing a California trademark search can prove helpful if you’re looking to protect your trademark rights. Unfortunately, it is insufficient for finding federally registered trademarks. These searches are also only useful when you plan on applying for protection at the state level, and this means you’ll lose numerous protections provided by the federal Lanham Act.
While a California trademark search is better than depending upon common law protections, going through the USPTO will ensure nationwide safeguards and demonstrate that you’re serious about protecting your intellectual property rights.
If you have a question about a California trademark search, please contact us.