Registering a trademark, or service mark, is an important part of any marketing strategy of any San Diego business. Trademarks identify your business as the unique commercial source for a product or service and the mark helps retain customer loyalty. Registration of your mark is crucial to protect your marks from being taken by competitors. The process is complex and you should retain an experienced San Diego corporate attorney for advice and counsel leading up to your attempted registration. Here is a quick summary of the process.
Create a unique trademark or service mark. Your mark cannot be the same or confusingly similar to an existing mark. As such, your mark must be unique. There are many ways to search existing trademarks to ensure that yours does not infringe another.
Create a strong trademark. Your mark must also be strong enough to survive the Trademark Office’s review. When you file your application for trademark registration, your application will be reviewed by a trademark examiner who works for the US Patent and Trademark Office (“USPTO”). The examiner will check to ensure that your proposed mark is not the same as another mark that is already registered. The examiner will check your proposed mark against the various statutory rules. Certain marks are not allowed. For example, generic or descriptive word trademarks are also not allowed and registration will be denied if the trademark is not strong enough to work as a trademark. These generic or descriptive trademarks are routinely denied. As an example, “San Diego Seafood Shop” is too generic and descriptive because it merely describes the location and type of business, which is not a source identifier. Likely, if you apply to register that trademark, your application will be denied. Given the many rules, it is important to create a strong trademark that will pass the examiner’s scrutiny. An experienced San Diego corporate attorney can help with this step.
In addition to creating a unique and strong trademark, you must now use the mark in commerce (or plan on using the mark within the next year). Trademarks are based on use. If you have not been using a trademark, it cannot be registered. If you stop using the trademark, then your trademark can lapse or be affirmatively canceled. As such, the next step is to actually begin using your mark in your day-to-day business activities. There is a process of applying for an “intent-to-use” trademark. As the name implies, your application for registration is based on expected future use (within a year), not based on past use. Again, an experienced San Diego corporate attorney can help advise on ways to begin using your mark as part of an intent to use application.
The next step is to file an application and pay the requisite fees to register your mark with the USPTO. The application must be accurate and complete. If there is missing information, correspondence will be sent asking for the missing or incomplete information. Fees charged are based on the number of categories of goods/services for which you are applying. There are thousands of categories and you need a registration for your mark for each category in which you are using your mark. As noted, after your application is filed, your application is reviewed by a trademark examiner. If your mark satisfies the various statutory rules, your mark will be published for public review. The examination generally takes about six months. The public review is to allow holders of existing registrations to examine and potentially challenge your registration. For example, if a current trademark owner believes your new trademark is confusingly similar to theirs, a challenge can be raised.
If, on the other hand, the examiner is not satisfied, then correspondence will be sent asking for more information, such as more proof that the mark has been used in commerce. If registration is denied, there are various appeals that can be taken. But the deadlines are strict and must be followed.
As can be seen, the process is complex. But, at the same time, the process of applying for a trademark registration pays huge dividends because trademarks are so valuable. The key is to have help from an experienced San Diego corporate attorney so that the application succeeds the first time.
Contact San Diego Corporate Law
For more information, contact Michael Leonard, Esq., of San Diego Corporate Law. Mr. Leonard focuses his practice on business law, transactional, and corporate matters, and he proudly provides legal services to business owners in San Diego and the surrounding communities. Mr. Leonard can be reached at (858) 483-9200 or via email. Like us on Facebook.