Trademark Attorney Los Angeles | Trademark Lawyer

What is a Trademark?

A trademark is a symbol meant to represent your product or service. These “symbols” can be:

• words,
• slogans,
• phrases,
• logos,
• “trade dress” including color schemes.

A trademark essentially represents a business’s goodwill and brand identity. It deserves the best protection possible to protect the investments made in your business’s reputation.

Basics of Trademark Law

There are multiple types of trademark rights in the United States and in each state, including but not limited to the following:

• Unregistered trademarks;
• State registered trademarks; and
• Federally registered trademarks.

Unregistered Trademarks

Unregistered trademarks are not filed with a governmental agency but instead may be indicated by the ™ symbol. Unregistered trademarks have protection under both federal and state common law.

Under California and United States law, trademark rights are established by the “first use rule.” The first company to use a trademark in commerce has the right to use it and exclude others from using it. However, when the trademark is unregistered, its protections are generally limited to the geographical locations of its use if another company registers the same trademark. This means that in other areas, where you do not conduct business, your trademark may be unprotected.

For this reason, registration of your trademark is generally highly recommended. Contact our office to set up a consultation and begin the registration process.

State Trademark Registration

Registration can occur at the state or federal level. In Los Angeles, a business can register its trademark with the California Secretary of State. However, this does not afford nationwide protection, and the business will only have legal recourse for trademark infringement in the State of California.

Federally Registered Trademarks

By far, the best way to protect your trademark is to register it with the U.S. Patent and Trademark Office (USPTO). When a trademark or other intellectual property is registered with the federal government, it is afforded the best protection the law has to offer, albeit only in the United States. Registrations in the European Union and other countries are also a good idea if you’re planning to exploit your product internationally. Also, some countries have treaties with the United States to provide protection for United State’s copyrights but not necessarily trademarks.

The USPTO carefully considers each proposed application to determine if a trademark registration is appropriate. The office considers whether:

• it is likely to be confused with a prior trademark;
• it is simply a generic or merely a descriptive term;
• it is geographically descriptive of the origin of the goods or services;
• it is a surname; or
• an individual’s name or likeness is used without his or her permission.

Businesses should have their attorney conduct a trademark search prior to filing with the U.S. Patent and Trademark Office. A trademark search looks for similar business names that are already being used. This provides intelligence as to whether a slight or major name change might be appropriate. Working with a lawyer during this process can save time and money in making the application and investing in your brand and intellectual property as a whole.

Benefits of Federal Trademark Registration

Federally-registered trademarks receive the best and most comprehensive protection. It offers many advantages over state-registered trademarks, including:

• The trademark office will not allow registration of confusingly similar trademarks in the future;
• You will have exclusive rights nationwide to the trademark;
• There is presumptive legal ownership of the trademark;
• The trademark is listed on the USPTO online database thereby giving notice to the world; and
• You have the right to use the ® symbol.

Time Limits on Registration

After a trademark is registered with the USPTO for the first time, it will remain registered nationally for a period of 5 years. To continue the registration of the trademark, it must be renewed between the 5th and 6th year after the registration date. Failure to renew can result in the cancellation of the trademark, leaving it open to use by other businesses.

After the first time it is renewed, a trademark must be renewed every 10 years. An experienced Los Angeles trademark lawyer will ensure that trademarks are properly and timely renewed.

Primary Trademark Categories

Trademarks play an essential role in brand recognition, allowing businesses to distinguish their goods and services from those of competitors. While many types of trademarks exist, they can be broadly categorized into five main classes.

• Generic Marks are common words or terms that directly describe a product or service, such as “Cold Drink” for a beverage. Generic marks are typically not allowed registration with the USPTO because they do not distinguish one product from another. As a result, no entity can claim exclusive rights over these terms.
• Descriptive Marks directly describe the features, qualities, or ingredients of a product or service, like “Smooth” for a shaving product. Descriptive marks can be difficult to protect unless they have acquired a secondary meaning over time, signifying a particular brand in the minds of consumers rather than merely describing its features.
• Suggestive Marks are slightly more abstract than descriptive marks; suggestive marks hint at a product’s nature or features without directly describing them. For instance, “Airbus” for airplanes. They require some imagination on the part of the consumer to identify the product’s nature. These marks are inherently distinctive and are generally easier to protect than descriptive marks.
• Arbitrary Marks are existing words that have no direct relation to the product or service they represent. An example would be “Apple” for computers. Because they don’t inherently describe the product, arbitrary marks are strong trademarks and enjoy a wide range of protection.
• Fanciful Marks are invented words with no dictionary or common usage meaning. They are coined for the sole purpose of serving as a trademark, like “Kodak” for cameras. As they are inherently unique and distinctive, they offer one of the strongest degrees of protection among the various categories of trademarks.

Examples of Trademarks in the Entertainment Industry

From movie and TV show titles to band name, trademarks are instrumental in ensuring that a brand’s distinct identity remains uncompromised. They not only prevent unauthorized use or potential infringement but also help to maintain the reputation, quality, and integrity of the brand.

Here are some examples of where trademarks are used in the entertainment industry:

• Band and artist names
• Titles of TV series
• Titles of book series
• Logos and symbols associated with artists or entertainment groups
• Slogans or catchphrases

Another example is the iconic lion’s roar associated with Metro-Goldwyn-Mayer (MGM). It is more than a cinematic prelude; it’s a trademarked asset. This emblematic roar, protected under trademark law, allows viewers to immediately recognize the quality and legacy associated with MGM productions.

Trademark Registration Process

The trademark registration process in the United States involves several steps, ensuring that brands can protect their unique marks effectively. However, this process is nuanced and generally requires the help of a lawyer.

1. Initial Assessment: Before starting the application process, it’s essential to determine whether the desired mark is unique and not merely descriptive of the goods or services in question. The U.S. Patent and Trademark Office (USPTO) typically rejects applications for generic or merely descriptive marks on the Principal Register.
2. Comprehensive Search: Our firm hires a vendor to prepare a comprehensive report of all uses of the tradename and potentially similar tradenames. Not only within the USPTO database, but each state’s Secretary of State and the Internet as well.
3. Filing the Application: Once confident in the mark’s likelihood of successful registration, an application is filed with the USPTO. There is also an intent to use application (“ITU”) that allows the applicant to stakeout the tradename for up to two and a half years.
4. USPTO Examination: After submission, a USPTO examining attorney reviews the application. This review checks for compliance with regulations and ensures no conflicts with existing registered marks.
5. Publication and Opposition: If approved by the examining attorney, the mark gets published in “The Trademark Official Gazette,” a weekly publication by the USPTO. At this stage, third parties have 30 days to oppose the registration if they believe it infringes on their rights. However, if the examiner has a problem with the trademark, the USPTO gives an Office Action to the applicant to which they have six months to respond.
6. Registration: If no opposition arises or if any opposition is resolved in favor of the applicant, the USPTO then proceeds to register the mark. To achieve registration, every applicant must prove that they use the mark in interstate commerce.
7. Maintenance: After registration, periodic maintenance filings are necessary to keep the trademark registration active. This includes submitting statements of continued use and periodic renewals. Our Los Angeles trademark lawyers will ensure that your marks are properly maintained.

Trademark Application Strategies

Trademark strategy is relatively straightforward but can be nuanced at times and usually requires the help of a Los Angeles trademark attorney. It’s important to define the scope of your application; while a broad one offers extensive protection, it also poses higher chances of clashing with existing marks.

In contrast, a more narrow focus, specific to certain goods or services, might meet less resistance but limits protection. For trademarks with design elements, you may consider separate applications for the design and wordmark, ensuring protection even if a part of the mark changes.

Schedule a consultation to get started with our trademark services.

How a Lawyer Helps with Trademark Enforcement

Any misuse or unauthorized misappropriation of a trademark or a mark that is confusingly similar not only dilutes the strength of your trademark and other intellectual property but can also confuse consumers. Active and consistent enforcement can serve as a deterrent, sending a clear message to potential infringers that unauthorized use will be met with legal recourse, something our attorneys in Los Angeles have extensive experience with.

Here are some methods our attorneys use to enforce trademark protections for our clients:

• Cease and desist letters are often the first step in addressing infringement. This involves sending a letter to the infringing party explaining the violation and demanding corrective action.
• In the event of a dispute, if a peaceful resolution is not possible and mediation, if any, fails, our attorneys can engage in litigation.
• It’s worth noting that not all disputes have to see the inside of a courtroom. Our attorneys have a strong track record of negotiating favorable settlements that respect and uphold our clients’ trademark rights.
• Opposition and cancellation proceedings with the USPTO come into play when another party tries to register a trademark that conflicts with yours. In such cases, we can represent your interests before the Trademark Trial and Appeal Board to oppose or cancel these registrations.

Remedies in Infringement Cases

There are a variety of remedies that a successful trademark owner can recover, including:

• an injunction against further use of the infringing trademark;
• a court order requiring the destruction or forfeiture of anything containing the infringing trademark;
• a monetary payment including loss of profits, damages, and, in some cases, treble (triple) damages; and
• an order for payment of the costs of the lawsuit and, in egregious cases, attorney fees.

Significant damage awards can result from a trademark lawsuit. Contact our office to schedule a consultation.

Consult an Experienced Los Angeles Trademark Attorney

Trademark protection is an essential part of protecting your business’s goodwill and brand. With the proper protection at the front end, your business can save time and money. Then, when another individual or business violates your rights, you have legal recourse to protect your trademark.

An experienced Los Angeles trademark attorney at Lowe & Associates can protect and enforce your trademark rights. Our firm has years of experience handling intellectual property, trade secrets, copyright, and trademark disputes. Our law office has the experience and intellectual property (not including patent) law expertise to confidently protect your property and work.

Contact our office today for a consultation.