*Please note that while Gerben Law Firm, PLLC is not located in Santa Ana, it can assist businesses from California in registering a federal trademark because it is a federal matter.
Santa Ana, CA is home to some major brand names, from paint companies to guitars. Each of those businesses, like many others, has a trademark that was built up by the company’s reputation, and now plays a big role in their success. As a business looking to file a trademark in Santa Ana, CA, you’re taking a well-advised first step not only toward building that success of your own, but also ensuring that your efforts are protected against potential infringement by competitors.
As the owner of a federal trademark, you’ll be entitled to the maximum trademark protections under U.S. law, including a presumption of priority usage, and increased legal leverage in comparison to a non-trademark holder. In order to reach that status, though, you’ll need to submit a successful federal trademark application – a process with several steps. Let’s look at the process, and what you can do to make it easier.
1) Trademark research. Filing a federal trademark means that your Santa Ana, CA business intends to do business nationwide. That means that you’ll need to do trademark research on the Principal Register of the United States Patent & Trademark Office (as opposed to a local search through the California Secretary of State’s office). Under U.S. trademark law, a name not only cannot be identical to a business already operating in the same industry, but it also cannot be “confusingly similar.” This is to ensure that the buying public doesn’t get your product or service mixed up with another one, and it’s designed to protect you, other businesses, and consumers. If your trademark will include a logo or a stylized version of your name, you’ll need to research those, too.
Although the USPTO offers a public search tool through its website, many users find that they’re unpleasantly surprised when the tool doesn’t turn up results that later lead to a returned or rejected application. It can be difficult to research through all the potential iterations, spellings, designs, and other elements of a mark that can lead to it being determined “confusingly similar” to another one. With logos, for instance, you need to search through a database of design descriptions determined by the USPTO. If you’re not accustomed to, or familiar with, these designations, you may not see a similar mark that yours may be confused with. It’s a good idea to retain a trademark attorney to assist in the research process – their experience in dealing with the requirements of the USPTO can help put your application in a better position for success.
2) Submitting the trademark application. Your trademark application requires all the relevant information about your mark and your product or service: a thorough description, the USPTO trademark classes under which your mark will fall, and how your mark will be used in commerce. Two critical elements of your trademark application can delay its approval: completeness, and accuracy. A trademark attorney who is widely experienced with trademark applications before will be well-equipped to make sure that you meet those two standards, and that your application will give you the maximum protection that you’re looking for. Gerben Law Firm, PLLC, is experienced with assisting businesses nationwide with successful trademark applications, and can assist Santa Ana, CA businesses in that area, despite not being based in California.
3) After submitting your trademark application. Once you submit your trademark application, it goes into a USPTO examining attorney queue, where it will work its way through the government trademark review process for several months. This is why the research stage is so important – you need to anticipate any potential challenges or oppositions from the USPTO, or from other businesses. Your trademark will be published for a review and challenge period during this time, so you want to be sure that no other business would have a valid claim to oppose your mark.
Overall, the entire trademark application process typically takes six to eight months, provided that the application is not returned or questioned by the USPTO. During this time, your Santa Ana, CA business is free to use the mark – both locally and nationwide – with the “TM” designation. This is your notification of ownership of the mark, and affords you some protections, although not to the extent of those offered by federal registration.
Once your application is approved by the USPTO, you’ll then be entitled to those legal protections. You’re also responsible for proper usage and policing of your mark. That means using it with the circled “R” symbol to indicate a registered mark, and also ensuring that it’s in continuous use in commerce – it can be challenged if not, despite being registered. It’s also your responsibility to be on the lookout for other businesses using your mark, or a similar one, and to ensure that your mark doesn’t fall into what’s called generic usage – that is, used to refer to an entire class of goods, rather than just your specific brand. These responsibilities are all part of successful trademark ownership, and will play just as big a role in establishing and protecting your brand as the application process itself.