Orange County Trademark Attorney

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Orange County Trademark Attorney

We are a full service orange county intellectual property law firm, so we assist Orange County businesses in relation to trademark, copyright, and patent issues.  We have an office conveniently located in Irvine, California to assist you. If you are seeking an Orange County trademark attorney, please contact us.

Trademarks are words and symbols that allow consumers to connect and identify with specific products. Your trademark could take the form of an easily recognizable word, logo, or design that the public associates with your brand.

Trademarks vs Copyrights vs Patents

Often, there is confusion between the three primary different types of intellectual property: trademarks, copyrights, and patents. However, each is a distinctly different thing.

A copyright is an original work of authorship. This typically includes works of art and entertainment, such as websites, books, movies, songs, computer software, and architecture. Copyrights protect tangible expressions of ideas, but not the actual ideas themselves.

A patent relates to a novel invention. It excludes others from making, using, offering for sale, or selling the invention. Patents are usually granted for a limited time, and the invention is fully disclosed to the public.

A Trademark is any combination of words, designs or even sounds that identifies and distinguishes the source of goods or services.  A service mark is the same thing as a trademark – it just identifies and distinguishes the source of services rather than a product. The word “trademark” is used as a blanket term for both instances.

Some examples of famous trademarks you’re likely to recognize:

  • Coke and the Coca-Cola brand name including it’s distinctive flowing script and red & white colors
  • Google and its distinguishing color pattern and multi-colored capital G
  • McDonald’s and its golden arches
  • Microsoft and it’s four colored squares
  • NBC and its peacock and the notes in its memorable chime
  • Nike and its “Just Do It” slogan

For consumers, the recognizability of trademarks like these helps them identify the source of the goods and services they choose to purchase. Because your trademark identifies your company as the sole provider of specific products or services, your trademark should be unique to your business.

Trademark law protects these interests and allows you to prevent others from using a trademark so similar to yours that it is likely to confuse consumers about the source of the goods or services.

Trademark Registration for Orange County Businesses

You aren’t required to formally register your trademark. Common law allows you to lay claim to your trademark through normal business use. However, trademark registration with the United States Patent and Trademark Office (USPTO) offers more extensive protection including more protection against trademark infringement.

Common Law Use

When you see a trademark accompanied by “TM”, the trademark holder has common law trademark rights. This means they have been using the trademark but have not yet registered it. Common law trademark rights are limited to the geographic area of use.

For example, if you use your trademark in Orange County alone, other Orange County businesses cannot use a similar trademark if offering similar goods or services.  But a company may be able to use a similar trademark for similar goods in San Francisco without infringing your trademark. They may even be able to prevent you from expanding into other areas of the county because they used the trademark first in those geographic areas.

Also, if your competitor gets to the USPTO before you to formally register the trademark, they can then gain presumptive rights throughout every area of the country that you are not using the trademark. As you can see, it makes good business sense to register your trademark instead of relying on common law trademark rights.

USPTO Registration

To file a U.S. Trademark Application you must show that you’ve either already used the trademark in commerce or that you have the legitimate intention to start using it.

A trademark followed by the ® symbol indicates that the owner registered it with the USPTO. To earn that formal trademark symbol, you must file an application and obtain approval from the USPTO.

Benefits of registering your trademark federally include:

  • National trademark protection, based on your filing date
  • Formal notification to others that you own the trademark, acting as a potential deterrent to trademark infringement
  • A presumption that you own a valid trademark and you have the exclusive right of its use
  • The right to sue for trademark infringement in federal court and pursue monetary damages
  • Prevention of other businesses from registering a trademark that’s confusingly similar to yours
  • Registration can serve as the basis for international trademark registration

Should I do a Trademark Search?

Yes.  To be successful in registering your trademark, you need to first ensure that no one else owns the trademark you’re seeking to register.  This why a trademark search by a trademark attorney prior to using a trademark or filing a trademark application is highly recommended.

International Protection

Beyond the U.S., if you plan to do business in other countries, you should file trademark applications internationally. Utilizing the Madrid Protocol, we are able to quickly file trademark applications that extend your protection to many other countries.

Should I Hire a Trademark Lawyer to Help with the Registration Process?

While it is possible to register your trademarks on your own, it can be a confusing and time-consuming process. The US Trademark Office encourages applicants to hire a trademark attorney to handle this process.  The USPTO states that working with an experienced trademark lawyer can increase your chances of having your trademark application accepted — and help you navigate the Office Action process if your application is refused.

It’s also important to note that the USPTO doesn’t accept every trademark application it receives. In fact, on first action the USPTO accepted just 15 percent of trademark applications filed in 2018 based on filings per class of goods or services.

Trademark applicants represented by attorneys are 50% more likely to get a trademark registered compared to those that file their own applications.  The study, which used 25 years’ worth of data, found that trademark applications filed by a trademark attorney were approved 60% of the time, while trademark applications filed without the assistance of an attorney were only approved 42% of the time.  In instances when an Office Action issued in response to the application, applicants with a trademark attorney are 68% more likely to get a trademark registered than those without a trademark attorney.

Trademark Infringement Lawyers in Orange County

Once you’ve established trademark rights, other companies may not use a confusingly similar trademark.  If you’ve registered your trademark, the hope is that other businesses will be deterred from using any trademarks that may be confused with your own. But if someone does use a similar trademark, it may be trademark infringement and in that case you can fight it.

What is trademark infringement?

Trademark infringement is the unauthorized use of a trademark on or in connection with goods or services in a manner that is likely to cause consumer confusion, deception, or mistake about the source of the goods or services.

Determining trademark infringement

For most cases of trademark infringement, there are two primary issues:

  1. Does a “likelihood of confusion” exist between the two trademarks? This question is typically answered by evaluating the similarity of the two trademarks as well as the similarity of the goods and services. It falls on the Plaintiff to prove that a likelihood of confusion exists.
  2. Can the Plaintiff prove ownership and prior use? Here is where the Plaintiff greatly benefits from having a registered trademark. Owning a registered trademark gives a Plaintiff presumptive ownership rights to the trademark.

There are established legal factors that are used to determine whether a likelihood of confusion exists. In the Ninth Circuit, which includes California and all surrounding states, they are as follows:

  1. The strength of the senior trademark being infringed;
  2. Whether the products or services at issue are closely related.
  3. The similarity of the trademarks.
  4. Whether there is evidence of actual consumer confusion between the trademarks.
  5. Whether the products are sold in similar marketing channels.
  6. The degree of care exercised by the typical buyer. For example, when a product is expensive, the consumer likely shows more care when making the purchase.  This may make confusion less likely than when buying something inexpensive.
  7. The defendant’s intent when choosing or using the trademark.
  8. The likelihood of expansion of the product lines.

See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir.1979).

A court will analyze and assess these criteria separately and together to reach a determination of trademark infringement. Some factors may bear more weight than others, and other factors beyond these may be considered.

Market newcomers wanting to carve a shortcut to their company’s visibility may attempt to piggyback on the goodwill that an organization has created with a successful trademark. Recent studies show more than 80% of companies experience trademark infringement.  Also, of the companies surveyed, 30% indicated that they were forced to alter a brand name due to the trademark infringement.

Infringement hurts the owner of the trademark in a couple of ways. Most obviously, the infringing company creates confusion in the market, thereby eating away at sales of the trademark owner’s products or services.

A company can also suffer by the dilution of its trademark when it is reproduced and used by another company, regardless of whether the two organizations compete in the same market space. This can harm the value of the trademark.  The damage is especially crippling when the infringing company produces an inferior product or service which is then attributed to the trademark owner doing further reputational damage.  In the case of an inferior product, the poor reputation of the infringing company or its products rubs off on the public image of the trademark owner’s organization. Recovering from this type of perceptual damage can be difficult.

Trademark Litigation Attorneys in Orange County

If you believe that someone is infringing on your trademark rights, it doesn’t mean that trademark litigation is inevitable. In some cases, a simple cease and desist letter may be enough to end the infringement. The trademark infringer may have had no intention to infringe and even if it was willful, an infringer may decide to quickly stop the infringement when threatened with a trademark lawsuit.

In other cases though, a trademark lawsuit may be required to stop the infringement.  Data provided by legal analytics firm Lex Machina reveals that 60% of trademark cases settle, and about a quarter are resolved on default judgment which means that the defendant didn’t even show up to defend itself. So even if a case does come to litigation, the litigation often doesn’t last very long.

In a typical trademark case, litigation takes the following course:

  1. The plaintiff files a complaint.
  2. The defendant has 21 days to file a response such as an Answer or a Motion to Dismiss.
  3. The discovery phase begins. This is when the parties can serve requests for documents, interrogatories, requests for admission, and depositions.
  4. Dispositive motions can be filed such as a motion for summary judgment.
  5. The parties conduct a trial.

What are the possible damages or remedies in a trademark infringement lawsuit?

Remedies you may be able to pursue in trademark infringement litigation include:

  • Injunctive relief – A court order to stop the infringement
  • Destruction of products – A court order to destroy the infringing or counterfeit items
  • Actual damages – An award of plaintiff’s financial damage suffered as a result of the infringement.  This may include lost revenue and depreciation of the value of the trademark.
  • Statutory damages – Statutory damages may be available based on the infringement involved
  • Defendant’s profits – The monetary amount the defendant gained by infringing on your trademark
  • Attorney’s fees – in exceptional cases, attorneys’ fees may be awarded to the prevailing party.

At times actual damages from trademark infringement may be difficult to access.  In such cases it may be helpful to hire a damages expert to help prove the damages at issue.

Defending a Trademark Lawsuit

If a trademark lawsuit has been filed against you, we will review your case to determine if a motion to dismiss or counterclaim may be available.  If a lawsuit is only being threatened, we can also consider seeking declaratory relief.  An action for declaratory relief is normally filed in the defendant’s home jurisdiction to preemptively beat a plaintiff to court.

The Trademark Trial and Appeal Board (the TTAB)

Apart from trademark litigation in a court of law, trademark disputes can also file filed in the Trademark Trial and Appeal Board.  In these cases, a Notice of Opposition or Petition to Cancel is filed to either block a trademark from registering or to cancel it if the trademark has already registered.  For more information about TTAB cases, please see our U.S. Trademark Trial and Appeal Board page.

Mandour & Associates – Orange County Trademark Attorneys

In the event of a trademark infringement, we are aggressive trademark litigation attorneys. We are familiar with defending parties accused of inappropriately using another company’s trademark. We also represent those who are claiming trademark infringement on the plaintiff side. In every case we work to find the best resolution for our clients while attempting to solve issues with minimal time and expense.

Contact Us

If you need assistance with a trademark issue in Orange County, please contact us.

 

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