*Please note that while Gerben Law Firm, PLLC is not located in Oakland, it can assist businesses from California in registering a federal trademark because it is a federal matter.
Gerben Law Firm was founded by trademark attorney Josh Gerben in 2008. Since that time, Gerben and his team of experienced attorneys have registered thousands of trademarks for individuals and businesses of all sizes. We work with clients across the country, including the Oakland area. Whether you want to open a boutique in Rockridge or a design firm in Berkeley, Gerben Law Firm is here to assist you.
Federal Trademark Registration for Your Business
Top Questions Oakland Businesses Have About Obtaining a Trademark
- What does a registered trademark protect?
- A federally registered trademark protects the things that represent your brand in the marketplace. Most businesses will trademark their business or product names, logos or slogans, but sounds, colors, and even smells can all be registered trademarks.
- When should I start the process to register my trademark?
- The process to register a trademark should be one of the first acts you take as a new business owner. Before you invest in signs, labels, uniforms, and other products that include your trademark, you need to know that you will not be infringing on another mark. You’ll also want to lock in a priority date, which is given on the day you submit your application. Anyone looking to file a similar trademark after that date will be rejected, allowing you to keep your brand’s trademark in your control. Waiting to register your trademark could lead to infringement and other legal issues later on.
- Will the USPTO let me know if someone is infringing on my mark?
- The USPTO reviews applications and grants approval of registrations. They don’t, however, monitor your mark’s use or alert you to potential infringement. These responsibilities fall on the trademark owner. Fortunately, many trademark attorneys, including those at Gerben Law Firm, offer monitoring services and can take the appropriate legal action if potential infringement is found.
- When will my trademark expire?
- As long as you continue to use your trademark and meet renewal deadlines, your trademark protections will never expire! For new trademarks, the first renewal occurs between the fifth and sixth year, and then again between the ninth and tenth year. After that, renewals will be every ten years. Failing to meet renewal deadlines could result in your trademark being cancelled, so be sure to start the process early.
Common Misunderstandings about Filing Trademarks for Oakland Businesses
- I have trademark rights as soon as I use it, so I don’t need to register with the USPTO.
- The United States is a common law country, which means you will have some basic trademark protections once you use the mark in public, even if it isn’t registered. However, it’s important to know how limited these protections are. For instance, your mark will only be protected in the Oakland area. This could restrict you from expanding into Los Angeles or San Diego in the future, if a similar mark is already in use there. You’ll also have a more challenging time asserting your trademark rights in legal proceedings. In order to have the presumption of validity nationwide, you must register your trademark with the USPTO.
- I can’t afford to register my trademark.
- It’s understandable to be concerned about the budget when starting a new business. However, in most cases, you can’t afford not to register your trademark. If you move forward, investing in product labels, signs, marketing, and more, only later to find out that you are infringing on another business, you will likely spend more in lost revenue and the cost to rebrand the business than you would have if you had registered your trademark right away. Gerben Law Firm offers reasonable, flat rate trademark registration services for budget conscious business owners.
- Trademark attorneys only help with trademark registration.
- Most trademark attorneys provide a wide variety of trademark services, extending well beyond the registration process. Your attorney can conduct a comprehensive trademark search, draft the application, and even respond to non-substantive Office Actions on your behalf. Once your trademark is registered, your attorney may offer monitoring services to ensure that your mark isn’t being infringed upon. If potential infringement is found, they will determine the best legal course of action to stop it as soon as possible. Contact us to learn more about our monitoring and enforcement services.
- Another business is using my trademark, so I cannot use it.
- This is not necessarily the case. The USPTO will reject any trademark applications that might be confusingly similar to an existing trademark, but not all similar marks could cause the likelihood of confusion. For example, Dove Chocolate and Dove Soap both use the trademark ‘Dove,’ because consumers aren’t likely to confuse chocolate and soap. However, another candy company that wished to use the same trademark could be rejected. Contact Gerben Law Firm if you are unsure about the availability of a particular mark.
- I should select as many International Classes as possible on my application.
The Number of Trademarks Registered by Oakland Businesses (by Year)
How many trademarks have Oakland, CA businesses registered over the years? Gerben Law Firm collected the following data.
|Year||# of Trademarks Registered|
*data was gathered from the USPTO’s public database
Types of Trademark Services We Offer
Additional Information on Trademark Registration for Oakland Businesses
It’s an exciting time to open a new business in Oakland, California! If you’ve decided to join in the Bay Area’s business boom, don’t forget the importance of trademark registration.
Consider this scenario: Dan, who has been working in a tire shop across the bay for the last ten years, decides to branch out and open his own shop closer to home in Oakland. He finds the perfect location and immediately begins investing in inventory, hiring employees, and creating an email marketing campaign. He even designs the perfect sign bearing the shop’s name, Bayside Tires. Dan has heard of the importance of trademark registration, but he decides he’s simply too busy to start the process now.
Dan is excited to open his doors and see some initial success in his neighborhood. Unfortunately, though, less than a year after opening his doors, he learns some devastating news. A group of tire stores in the San Diego area has been using the same name for several years, and they are now expanding into Oakland. Because they registered the trademark, they are well within their rights to ask Dan to close his shop and rebrand his business, a costly and time consuming setback.
As a new business owner, you have many priorities, but don’t overlook one of the most critical: trademark registration. Contact Gerben Law Firm today to start the process to protect your business.