Trademark Attorney Services for Your San Jose Business

The top 4 questions San Jose businesses have about obtaining a trademark.

What is a trademark?

A trademark is anything that shows that a particular product or service is associated with a specific brand. Business owners commonly trademark business or product names, slogans, and logos. Some also choose to register less traditional trademarks, including sounds, smells, and colors.

Will working with an attorney increase my chance of approval?

Yes! Engaging an attorney early on will help the process to run smoothly, from conducting a trademark search to selecting International Classes and responding to Office Actions. But don’t just take our word for it. A study conducted by the University of North Carolina found that trademark applications submitted with the help of a trademark attorney were up to 50% more likely to be approved by the USPTO.

Can I register a trademark if someone else has already done so?

It may be possible for you to register a trademark that is in use by another business if there is no likelihood of confusion between the two brands. For example, both a healthcare company and an airline have registered the word ‘United,’ because it’s unlikely that consumers will confuse the two companies. If you are unsure about the availability of a particular mark, contact Gerben IP.

What does the USPTO do?

The United States Patent and Trademark Office, or USPTO, is a division of the Department of Commerce. Examiners at the USPTO review applications for both trademarks and patents, then make determinations about approval. The USPTO also maintains the records for both registered trademarks and patents.

Common misperceptions about trademarks heard around San Jose, CA.

I can’t afford to register my trademark.

It’s understandable for new business owners to be concerned about costs. However, in many cases, you can’t afford not to register your trademark. If you postpone trademark registration, you could find yourself unknowingly infringing on another business’s mark. This could lead to costly legal proceedings or lost time and revenue if you are forced to rebrand your business. In addition, you may not have protections in place if you find another business is infringing upon you.

I should file for as many international classes as possible to get the broadest protections.

The USPTO has 47 classes of goods and services to choose from. Choosing a large number of international classes could be grounds for application rejection. It could also greatly increase the overall cost of your trademark registration, because fees are determined based on the number of classes selected. Choose only the classes of goods and services that you are currently offering or plan to offer in the near future. Find out more about international classes here.

I only need one trademark registration to protect my brand.

Each aspect of your brand will require a different trademark registration. For example, your business name, product name, and logo would all need separate trademark applications. Be sure to register each trademark separately to ensure your brand is protected.

I will have common law trademark rights when I use my trademark, so I do not need to register with the USPTO.

The United States is a first-to-use country, so you will have some narrow rights to your trademark once you use it in public. However, these rights will limit your ability to expand to other regions, and they will be more challenging to assert in legal proceedings. In order to have strong protections and the presumption of nationwide validity, register your trademark with the USPTO.

I do not need to register my trademark in other countries if my business is based in the United States.

Once your trademark is registered with the USPTO, you will have valuable trademark protections in disputes that arise within the U.S., but they will not apply to issues in other countries. If your U.S.-based brand reaches other countries, whether through online sales, manufacturing, or distribution, you should strongly consider international trademark registration.