Trademark Attorney Services for Your Modesto Business

The top 4 questions Modesto businesses have about obtaining a trademark.

What qualifies as a trademark?

A trademark can be anything that will represent your brand in the marketplace. Common trademarks include business names, product names, and logos. However, many businesses have other brand identifiers, as well, like slogans, colors, and even smells. If you are unsure about what your brand’s trademarks are, Gerben IP can help.

Do I need to register my trademarks with the USPTO?

Because the U.S. is a common law country, you’ll have some basic, limited protections as soon as you use your trademark in public, whether it’s registered with the USPTO or not. However, these protections might not be enough to protect your brand. For instance, you’ll only be protected in disputes that arise in the small geographic region where your business is based. If you plan to expand outside the Modesto area in the future, you could actually be restricted from using your mark in certain areas where confusingly similar marks are already in use. In order to have the presumption of validity nationwide, you need to register your trademarks with the USPTO.

What are trademark classes?

Trademark classes categorize the goods or services you plan to use in association with your trademark. When you submit your application to the USPTO, you’ll need to include the trademark classes that represent your goods or services. There are 45 classes to choose from, 34 for goods and 11 for services. It can be challenging to determine the best classes to match your business needs. Gerben IP can assist you in making the best decisions for your brand.

When will my trademark expire?

It’s possible to maintain your trademark ownership indefinitely, as long as you continue to use your trademark in public and meet renewal deadlines set by the USPTO. For new trademark owners, you’ll need to renew your trademark between the fifth and sixth year, and then again between the ninth and tenth year. After that, you’ll need to renew your trademark every ten years to maintain your valuable trademark protections.

Common misperceptions about trademarks heard around Modesto, CA.

I should trademark my business name, but copyright my logo.

Both your business name and your copyright represent your brand, so both should become registered trademarks. But don’t stop there. Anything that represents your brand in public should be registered with the USPTO, including slogans, colors, and even sounds. Copyrights don’t protect brand identifiers, but rather works of authorship. Consider copyright protections for creative works like art, novels, and song lyrics.

Once I register my business name, no one else can use it.

Registering a particular word does not give you exclusive use to it. While the USPTO will reject other applications that are considered confusingly similar to your mark, other businesses may still be able to use the name. For example, Delta is the registered business name of an airline and a faucet manufacturer. Because consumers aren’t likely to confuse the two brands, both are able to use the name.

Trademark registration is easy, so I can do it on my own.

It’s possible to register your trademark without the assistance of a trademark attorney, but it isn’t ideal, especially for new business owners with endless to-do lists. Partnering with an experienced trademark attorney allows you to remain focused on your business while your attorney handles the registration process from start to finish, including conducting a comprehensive trademark search, drafting your application, and responding to non-substantive Office Actions on your behalf. Working with an attorney could also increase your chances of being approved! A study by the University of North Carolina found that applications submitted with the help of an attorney were up to fifty percent more likely to be approved by the USPTO. 

Someone from the USPTO will let me know if another business is using my trademark.

The USPTO will review your trademark application and make a determination about its approval, but once your trademark is registered, it will be your responsibility to monitor its use. While this is an extremely important task for every trademark owner, it can also be time-consuming. Fortunately, many trademark attorneys, including those at Gerben IP, offer monitoring services and will assist you in taking legal action when infringement is found.

My registered logo will be protected no matter what product I put it on.

Your logo will only be protected in association with the trademark classes you’ve included in your trademark application. For instance, if you make jewelry, you should have included Class 14 in your trademark application, and your logo will be protected in association with any jewelry you’ve made. If you decided to expand your product line to include clothing, however, your logo will not be protected. You’ll need to register for Class 25 for protection on those products as well.