San Diego Trademark Attorney
If you are looking for a San Diego trademark attorney, please feel free to contact us. We are a full service California intellectual property law firm. We assist San Diego businesses and individuals with issues related to trademarks, copyrights, and patents.
Trademarks are words, logos, designs, colors, sounds, symbols, or other devices that inform consumers about the source of products or services that they consider buying. You likely see trademarks every waking hour. Examples of famous trademarks seen on a daily basis are those owned by Apple, Google, Microsoft, Toyota, Starbucks, McDonald’s, YouTube, Yahoo!, and Subway.
A trademark can be one of a business’s most valuable assets, so trademark holders must do everything they can to protect and assert their trademark rights.
Trademark Registration for San Diego Businesses
There are several ways to build a legal shield around your brand, but you must first understand which protections apply to each instance of intellectual property. While patents cover new inventions and copyrights relate to original works, a trademark is typically meant to provide protection for your brand name and logo.
What many people don’t realize is that trademark registration isn’t necessary for trademark protection. In fact, you have rights over a trademark the moment you use it in commerce in connection with goods or services. Although this common law trademark protection is beneficial, there are countless reasons you should still register your trademark.
How to Protect Your Trademark
A company can take several steps to avoid trademark infringement issues.
- Conduct clearance searches to confirm your trademark is not infringing on an existing trademark. Before a trademark is used, a trademark search should be done. If it is later discovered that your trademark too closely resembles another trademark with prior use, you will likely be forced to alter your trademark or come up with a new trademark completely. Failing to do a trademark search can obviously cost your business significant time and expense.
- Apply for trademark registration. If you offer your services or sell your products in more than one state or country, your trademark is eligible for federal registration with the U.S. Patent and Trademark Office (USPTO). With Federal registration comes presumption of exclusive national rights.
If you plan to do business or sell goods globally, you should consider international registration of your trademark. This process has been greatly simplified with the introduction of the Madrid Protocol, enabling a quick registration of your trademark in other countries.
Place the ™ or ® symbol next to your trademark. Doing so serves as notice that you are claiming your trademark rights to the name or symbol. You can use the ™ symbol even if you have not applied for trademark registration. The ® symbol can be used only after a federal registration is issued.
Benefits of Federal Trademark Registration
- Protects your trademark nationwide. Under common law, your protection typically only applies to your geographic area.
- The USPTO will block confusingly similar trademarks
- An intent to use application reserves your trademark even if you’re not ready to use it in commerce.
- Makes your trademark searchable in an online database – thus discouraging others from filing a similar trademark application.
- Provides the right to bring a trademark infringement case in federal court and get statutory damages in addition to actual damages.
- U.S. Customs and Border Protection can block counterfeits from being imported that infringe upon your trademark.
- You gain a presumption of ownership, and this provides a leg up against other individuals or organizations with unregistered trademarks.
The Trademark Registration Process
Because of all that can go wrong with mere common law trademark rights, there are over 400,000 federal trademark applications filed in the U.S. each year.
Submit a Trademark Application
After performing a trademark search to ensure your trademark is unique – which isn’t required but highly recommended – the next step is to submit a trademark application to the USPTO. This will either be a use-based trademark application – if you’re already using the trademark – or an intent to use trademark application.
In order to register your trademark, the following information is required for your trademark application:
- The owner of the trademark. Also known as the “applicant,” this may be an individual, partnership, a corporation, or any other type of legal entity.
- Name and address for correspondence.
- Depiction of the trademark. Also known as “the drawing,” this is a clear image of the trademark you are registering. This can be a standard drawing such as a word, or a special form such as a specialized logo.
- Goods/Services. You must list the specific goods or services for which you want to register your trademark.
- Application filing fee. This can vary based on the type of trademark application.
- Basis for filing. You must specify your reason for filing your trademark. Typically, most applicants file because (1) they are already using it in commerce or (2) they intend to use the trademark in commerce in the future.
- Specimen for use-based applications. This is similar to the drawing, except it depicts your trademark as it appears in the marketplace – for example, on labels or on your website.
- If you are the one who owns the trademark, you may sign the trademark application. However, if you are signing on behalf of a business entity, you must be someone who has the legal right to sign a binding document as it pertains to that business.
After the trademark application is filed, an examining attorney with the USPTO is assigned your case. This generally takes 4 months. They’ll review your requested trademark to see if it’s similar to trademarks that have already been applied for or registered. The USPTO Examining attorney will also review the application for any other defects. If approved, your application will be approved for publication. If there are issues with your application, you will receive an office action. For any office action, you have 6 months to file a formal response.
Publication for Opposition
Up to six weeks after approval, your trademark will be published in the Official Gazette which allows for public review. During this period any third party with standing can oppose your trademark application. If there’s no opposition and your application was filed based on actual use, your trademark will register within six weeks. Those with Intent-to-Use applications need to file a Statement of Use before the trademark will register.
Obviously, this can be a tedious process that a trademark attorney can handle. Though it is not necessary to hire a trademark attorney to file a trademark application, the U.S. Patent and trademark offices recommends it. This may be because the USPTO accepted just 15 percent of trademark applications that were filed in 2018 upon first action based on filings per class. Also, trademark applications filed by a trademark attorney are 50% more likely to register.
After everything is said and done, the work of actually protecting your trademark begins.
Trademark Infringement Lawyers in San Diego
If you’re lucky, you’ll never face an instance of trademark infringement. Unfortunately, trademark infringement is becoming more common. Around 4,000 trademark infringement lawsuits are filed each year, and annual brand losses due to counterfeit trademark infringement alone exceed $250 billion in the United States and $1 trillion globally.
There are several types of issues that may arise but usually trademark infringement issues revolve around whether a likelihood of consumer confusion exists.
What is a Likelihood of Confusion?
A likelihood of confusion occurs when consumers mistake one brand for another. In the Ninth Circuit – which includes all of California and all neighboring states – the test for trademark infringement comes from the case of AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir.1979). The case is often referred to as just Sleekcraft or the Sleekcraft factors. The eight factors to determine a likelihood of confusion set out in the Sleekcraft case are as follows:
(1) strength of the trademark;
(2) proximity of the goods and services;
(3) similarity of the trademarks;
(4) evidence of actual confusion;
(5) marketing channels used;
(6) type of goods or services and the degree of care likely to be exercised by the purchaser;
(7) defendant’s intent in selecting the trademark;
(8) likelihood of expansion of the product lines.
Though most cases are won or lost on the above factors, these factors are not exhaustive and as such other variables may come into play in determining infringement.
Most trademark infringement issues fall into one of two categories.
- Accidental infringement that had no fraudulent attempt; and
- Intentional trademark violations in an effort to confuse consumers over competing brands.
Regardless of which scenario applies, trademark infringement is still a violation of law. Accidental occurrences can typically be handled outside of court with a cease and desist letter. Intentional violations may also be handled without resorting to trademark litigation, but our experience in either case is that having a trademark attorney that litigates representing you is paramount.
What is Trademark Dilution?
Trademark dilution is a type of trademark infringement that doesn’t cause a likelihood of confusion. With trademark dilution, consumers might experience no confusion at all between brands because the use might be in relation to completely unrelated goods and services. Dilution exists, however, because the trademark use weakens the uniqueness of the trademark at issue.
Policing Trademark Violations
The government doesn’t actively police trademark infringers so it is up to the trademark owner to watch for infringements and proactively handle them. Failing to police your trademark can result in the loss of trademark rights. In other words, if someone begins to infringe your trademark, over time they may actually gain rights to the trademark in certain portions of the country. Also, if multiple companies all use very similar trademarks at the same time, over time the trademark is weakened and in the end none of the companies may have enforceable rights.
In order to police your trademark, you should set up a google alert which will notify you of online infringements. You should also have your trademark attorney set up a trademark watch which will notify you any time a trademark similar to yours is filed or published for opposition with the U.S. Patent and trademark office.
While courts will consider all of the factors contributing to a likelihood of confusion, your goal should be to avoid going to court altogether. The best way to avoid trademark infringement issues before they start is to actively police your trademark.
When you recognize someone taking liberties with your brand, you should immediately have a trademark attorney send a cease and desist letter. In most cases a prompt cease and desist letter from a trademark litigation lawyer is enough to end the infringement. If a violator refuses to stop, then trademark litigation becomes likely.
Trademark Litigation Attorneys in San Diego
Trademark litigation typically occurs when other avenues have been exhausted. After you file a trademark infringement complaint, the defendant has three weeks to respond to the claims set out in the complaint. Thereafter a discovery phase takes place – potentially lasting several months – where each side can request documents, issue interrogatories and requests for admissions, and serve notices of deposition. Third party evidence can also be sought via subpoena.
After the discovery phrase, dispositive motions can be filed such as a motion for summary judgment. A summary judgment motion can attempt to end one portion of the case or it can at times win an entire case altogether. When the motion phase is complete and no settlement has been achieved, only then will a case proceed to the courthouse and a trial can begin.
In many instances, though, it never even gets this far. In fact, 85 percent of all damages awarded in trademark infringement lawsuits come as a result of the defendant not even appearing in the case to defend itself. These types of cases result in hundreds of millions of dollars in awards each year.
This teaches us a few things:
- Many infringers realize they’ll lose in court and don’t bother.
- U.S. courts take violations of trademarks very seriously.
- If you’re facing a trademark lawsuit, mounting a proper defense is essential or a large award may follow.
Remedies for Cases of Proven Trademark Infringement
If a trademark owner succeeds in proving a case of trademark infringement, the defendant may face the following consequences:
- An injunction that precludes the defendant’s use of the trademark in question
- A court order mandating that infringing articles be destroyed or forfeited
- Damages sustained by the plaintiff, a surrender of defendant’s profits, and payment for the costs of the action itself
- An award of plaintiff’s attorneys’ fees in exceptional cases
Defending a Trademark Lawsuit
If our client is sued or being threatened with litigation, we aggressively defend our client’s rights. As a defendant we will consider whether the complaint is defective in some way which would provide an opportunity for a motion to dismiss. We will also consider a counterclaim against the plaintiff. If a lawsuit has not yet been filed, we will advise you as to the possibility of filing a complaint for declaratory relief. If filed before a plaintiff, such a case can secure jurisdiction in your home state.
The Trademark Trial and Appeal Board (the TTAB)
Every U.S. trademark application is published for opposition prior to registration. During this 30 day opposition period, a third party can file a Notice of Opposition to prevent the trademark from registering. Also, at any time a plaintiff can file a Petition to Cancel an existing trademark registration.
If a trademark confusingly similar to yours has been filed with the Trademark Office, as soon as possible you should have a trademark attorney file either a Notice of Opposition or Petition to Cancel. For more information about Trademark Trial and Appeal Board cases, please see our U.S. Trademark Trial and Appeal Board page.
Mandour & Associates – San Diego Trademark Lawyers
Issues related to trademarks have the power to make or break your business. If you are seeking trademark protection or have a trademark infringement or litigation issue, we are highly experienced in these areas and we can assist you.
For assistance with your trademark issue in San Diego, please complete our contact form.