Newport Beach Trademark Attorney

Newport Beach Trademark Lawyer

When your business invests time and money into developing and marketing a service or good, you want assurances that consumers will easily recognize where the good or service originates. Establishing your brand as recognizable among your consumers is laborious, but it is vital to retaining current consumers and helping your brand travel through word of mouth. If a competitor markets a similar product or good in such a way that makes it difficult to distinguish from yours, it will negate the time and energy you spent to create your brand.

Consumers may be confused by the competitor’s marketing and assume a connection between your business and theirs, reducing your sales and profits. A trademark is one way to keep your brand unique and recognizable among your consumer base.

Filing for a trademark and protecting it are parts of trademark law that can be complex to navigate. The Kinder Law Group can provide the necessary legal guidance that filing and protecting a trademark will require. With over a decade of experience in intellectual property and trademark law, our firm can handle all aspects of brand recognition on both a national and global scale. We have successfully litigated cases before Federal District Courts, the Trademark Trial and Appeals Board (TTAB), and World Intellectual Property Organization (WIPO); therefore, working with our team is an irrefutably favorable choice to make.

What Is a Trademark?

A trademark is a name, word, device, symbol, or any combination used to identify yourself and/ or your products within the market. A trademark is typically a company’s logo, name, or slogan, but it can be any identifying feature that consumers associate with a specific seller. This could be a color, such as the shade of orange used by Home Depot; shape, like the shape of a Hershey’s kiss; a sound, like the 5-note chime that plays with McDonald’s logo; or even a smell, such as the scent used in Flip Flop Shops locations. A service mark is a type of trademark that applies to services but is typically referred to as a trademark.

Trademarks are meant to identify your or your business as the source of the goods or services and differentiate them from those marketed by others. They also act as guarantees of the quality of the product and, through advertising, act to create and maintain demand. Though a trademark’s primary function is to denote the origin of the goods or services, there are other purposes.

Types of Trademarks

There are multiple types of trademarks, and each type is afforded different levels of protection under the law. The types, in increasing order of protection, are:

• GenericGeneric trademarks are common words or words that are the same as the name of the product. These types of trademarks offer the weakest level of protection. They often get no protection at all because it would cause too much confusion with common words and would allow companies to monopolize language. Some exceptions rely on how the term is used, but most generic trademark requests get denied by the US Patent and Trademark Office (USPTO).

  One notable example of a generic term that was trademarked is ‘the’ used by The Ohio State University. The college worked around the exclusion of common words in trademarks because they emphasize ‘the’ in their name.

• DescriptiveDescriptive trademarks are words that describe the product or company it represents and are offered more protection, but there are conditions to approval for a trademark. The term must have at least one additional secondary meaning beyond describing the product. The USPTO will not approve any application that does not meet this standard.

  For example, the term ‘fast car’ could not be trademarked, but Dodge received a trademark for ‘Charger’ because the term describes both the strength and speed of the car and the established model of the vehicle with a distinct design.

• SuggestiveSuggestive trademarks are comparable to descriptive trademarks, but they lack the requirement of secondary meaning. They are able to avoid the requirement because they describe the product or service in an indirect way, forcing the consumer to use their imagination to bridge the gap between the product and the trademark.

  An example of a suggestive trademark is the Nike brand. The brand is suggestive because Nike was the Roman god of athletics, connecting the brand to sports and sports gear.

• Fanciful or Arbitrary TrademarksFanciful or arbitrary trademarks apply when the term used has no connection in meaning or description to the mark. The term will either be fanciful, meaning it is entirely made up, or arbitrary, meaning there is no direct association with the company or product.

  A fanciful trademark example is the oil and gas company name Exxon. This term is not used in English outside of reference to this company. An example of an arbitrary trademark is the online marketplace Amazon. Amazon is a word in other contexts, but none of those contexts relate to an online marketplace.

Unregistered Versus Registered Trademarks

The main difference between unregistered and registered trademarks is the security afforded to each. Though a registered trademark will have more protection, there are some protections afforded to an unregistered trademark under common law.

An unregistered trademark has not been registered with the USPTO or any state trademark office. They are denoted with the ^TM symbol, and the rights are established once the trademark is used in commerce. Both California and US laws operate under a first-use rule, meaning the company that first used the trademark will generally have a superior claim to the trademark rights. When the trademark is unregistered, the protection offered is limited to the specific geographic area where the trademark is being used. For example, if your business name is an unregistered trademark, it may have protection under common law where your business is located and does business. However, there will be no protection outside of your business area, and you may not have grounds for a trademark infringement lawsuit.

On the other hand, registered trademarks have been registered at either the state level or federal level with USPTO. These trademarks are afforded more protection under state laws and the Trademarks Act.

State Versus Federal Trademark Registration

Once you have decided to register your trademark, it can be registered at either the state or federal level. Registering your trademark with California will allow marginally more protection than leaving it unregistered. If another company or individual infringes on your California trademark, you have the right to take legal action against that company; however, this protection only applies in California. Some other limitations will also apply, including not having the right to use the federally registered ® symbol. Registering your trademark on a federal level allows you to use that symbol, hey Cortana, and affords it protections that are not limited to state lines.

Can a Trademark Application Be Rejected?

Your trademark application will be evaluated by a Trademark Examiner who can deny the application for several legal and technical reasons. The USPTO will conduct a thorough search to ensure your desired trademark does not violate any conditions of approval. A knowledgeable trademark attorney can help you anticipate and mitigate any potential issues with your trademark. The most common reasons for rejection include the following:

• Likelihood of ConfusionMany existing trademarks must not be infringed upon with new trademarks. The USPTO will ensure your trademark does not violate any existing trademarks through the similarity of sound, appearance, meaning, or commercial impressions with related goods or services. If your application is denied on the basis of confusion, the applicant will provide the applicant with the conflicting trademark.
• Merely Descriptive and Deceptively MisdescriptiveThe examining USPTO attorney will refuse registration on the grounds of being merely descriptive if the mark describes a quality, ingredient, feature, characteristic, use, or purpose of the specified goods or services. A trademark will be refused on the grounds of being deceptively misdescriptive if it describes a quality, ingredient, feature, characteristic, use, or purpose of the specified goods or services and the misrepresentation suggested by the mark is plausible.
• Primarily Merely a SurnameThe trademark application will be rejected if the primary significance to the consumer is a surname- a family name or last name.
• OrnamentationThe examining USPTO attorney will reject an application if the trademark is considered merely a decorative part or feature of the goods. In these instances, the trademark will not accomplish its purpose of distinguishing and identifying the applicant’s goods or services from others.

Newport Beach, CA Trademark Attorney

Trademark law is not a simple area of law, so it can be time-consuming and costly to approach it without the knowledge and experience of a skilled trademark lawyer. Protecting your intellectual property is vital for the success of your business, but even a simple error can cause a trademark registration rejection.

The adept team at The Kinder Law Group can help you anticipate any legal difficulties your preferred mark may encounter, register your trademark with California or the USPTO, and protect your trademark from infringers. Contact our office today for more information on how we can help you protect your intellectual property and keep your business distinct from others.