Trademark Attorney Services for Your Santa Ana Business

The top 5 questions Santa Ana businesses have about obtaining a trademark.

How is a trademark different than a copyright?

A trademark indicates that a certain product or service is associated with a specific brand or business. Common trademarks include words, colors, and logos, but even sounds and smells can be protected through trademark registration. A copyright, on the other hand, protects works of authorship, like novels, art, music, and poetry. Learn more about the differences here.

Can I register my trademark without the help of an attorney?

U.S. citizens are not required to work with a trademark attorney, but it is strongly encouraged. Unlike DIY trademark registration, which takes valuable time away from building your brand, working with an attorney allows you to remain focused on your business while your registration is being handled with experience and professionalism. Trademark attorneys will ensure that the process runs smoothly, from conducting a comprehensive trademark search to drafting the application, and they’ll even respond to non-substantive Office Actions on your behalf. You’ll also have an increased likelihood of approval. A study by the University of North Carolina found that applications submitted with the assistance of an attorney were up to 50% more likely to be approved by the USPTO.

When should I register my trademark?

Ideally, trademark registration should be one of your first priorities when planning to open a new business. Before you invest money into signage, product labeling, website design, and more, it’s critical to know that the business name, product name, or logo you are using does not infringe on other businesses. Failing to do so could cost more in the long run, if you are forced to rebrand your business. In addition, you’ll be protected from others infringing upon your brand.

What is a priority date?

The date you submit your application to the USPTO will become your priority date. Anyone looking to register a similar U.S. trademark after that date will not be approved. This is another reason to start the registration process early, as it locks in some limited protections, even while your application is pending.

How do I register my trademark outside the United States?

If you conduct business outside the U.S., you should strongly consider seeking international trademark registration. To register outside the United States, you have two options. First, you can submit an application directly to each country’s trademark office. The other option utilizes the Madrid Protocol. This international treaty allows registrants to submit a single application, in their home language, which can then be applied to more than 90 member countries. Each member country, then, makes its own determination about approval.

Common misperceptions about trademarks heard around Santa Ana, CA.

I registered my trademark with the State of California, so I don’t need to register with the USPTO.

Your registration with the State of California won’t hinder your trademark protections, but you will only be protected within the state. While the process to apply for a federal trademark is more detailed, your mark will have more comprehensive protections and give you the presumption of validity in all fifty states.

The USPTO will let me know if someone is infringing on my trademark.

The United States Patent and Trademark Office, or USPTO, examines applications and makes determinations of approval for both trademarks and patents. They don’t, however, monitor your trademark or alert you to potential infringement. Trademark monitoring is the responsibility of the trademark owner. Fortunately, many trademark attorneys, including those at Gerben IP, provide trademark monitoring services. If infringement is suspected, your attorney will then determine the best course of legal action to take.

I registered my business name, so my brand should be protected.

While registering your business name is certainly a part of protecting your brand, it likely isn’t enough. It’s important to register anything that represents your brand, which includes your business name, but also your product name, logo, slogan, signature color, or even sound. If you are unsure about which aspects of your business could benefit from trademark registration, contact Gerben IP.

The USPTO will conduct a trademark search, so I don’t need to do one myself.

Once you’ve submitted your application to the USPTO and paid the filing fees, your examiner will conduct a trademark search. However, if the examiner finds your mark, or something confusingly similar, is already in use, your application will be rejected and your fees lost. Conduct a trademark search before your submit your application to be sure that the mark you wish to register is available for registration.