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Anaheim, California Businesses Use Cohn Legal for Trademark Services
Cohn Legal started as branch of an international Intellectual Property firm that focused on providing legal protection and counsel to the some of the biggest names in the technology industry. Now its own trademark law firm, Cohn Legal is providing outstanding service to clients in Anaheim, around the country, and indeed, around the globe.
Top Questions Anaheim Businesses Have About Obtaining a Trademark
If I Only Provide My Services in Anaheim, California, Can I Still Obtain a Federal Trademark?
This is an excellent question. Ultimately, to obtain a federal trademark, it must be used in “interstate-commerce” meaning that your services must be provided in at least two States. If you are presently only providing your services in Anaheim, California, we can simply file an Intent to Use application; The intent-to-use application allows the applicant to reserve the right to use the trademark once it is ready to be used in inter-state-commerce.
What is a trademark?
A trademark is a legal term that refers to any word, phrase, symbol, design, or combination thereof that is used to distinguish and identify the source of goods or services in the marketplace. Essentially, a trademark serves as a brand identifier, allowing consumers to recognize and associate specific products or services with a particular business or organization. It helps protect the unique identity and reputation of a company or its products, and it can include various elements such as logos, slogans, product names, or even distinctive packaging.
By registering a trademark, a business or individual gains exclusive rights to use that mark in connection with the specified goods or services. This means that others cannot use a similar mark in a way that may cause confusion among consumers. Trademark rights are territorial in nature, meaning they are typically limited to a specific geographic region, such as a country or a group of countries.
Is there a difference between a trademark and service mark?
Yes, there is a difference between a trademark and a service mark. While both serve the same fundamental purpose of identifying the source of goods or services, the distinction lies in the nature of the offerings.
A trademark is used to distinguish and protect the source of goods, which can include physical products such as clothing, electronics, or food items. For example, when you see the “Nike” logo on a pair of sneakers, it indicates that the shoes come from Nike, Inc.
On the other hand, a service mark is specifically used to identify and protect services offered by a business. It applies to intangible services such as banking, legal advice, advertising, or consulting. For instance, the logo and name of a law firm can serve as its service mark, distinguishing its legal services from those of other firms.
In practice, the term “trademark” is often used generically to encompass both trademarks and service marks, but legally speaking, they are separate concepts that pertain to different types of offerings.
How do I register a federal trademark?
In order to trademark a name, you need to first file a trademark application with the United States Patent and Trademark Office, or USPTO. The trademark application should include your name and address, the piece of intellectual property you want to be trademarked, the goods or services you want the trademark for, and a specimen. You should also indicate if the logo or name is “in commerce” or if you are filling it with “intent to use.”
Once received by the USPTO, an examining attorney will thoroughly evaluate the application and search the USPTO database to verify that your mark is not too similar to other trademarks that already exist.
If no similar trademarks are found and the examiner approves your application, the trademark will be published in the USPTO’s Official Gazette for 30 days. During that time, anyone can come forward and “oppose” the application. If no oppositions are submitted, then your trademark will go to final registration.
Is there such a thing as an “International Trademark”?
While there is no such thing as a single “International Trademark” that grants worldwide protection, there are mechanisms available to protect your trademark in multiple countries.
1. Madrid System: The Madrid System for the International Registration of Marks allows trademark owners to seek protection in multiple countries through a single international application. It is administered by the World Intellectual Property Organization (WIPO). By filing an international application under the Madrid System, you can designate multiple member countries where you seek trademark protection. This simplifies the process by reducing the need to file separate applications in each country.
2. Regional Trademark Systems: There are regional trademark systems that provide protection across a specific geographic region. For example, the European Union Intellectual Property Office (EUIPO) allows for the registration of European Union Trademarks (EUTMs), which provide protection in all EU member states. Similarly, the African Regional Intellectual Property Organization (ARIPO) and the African Intellectual Property Organization (OAPI) provide regional trademark protection in Africa.
3. National Applications: If you wish to protect your trademark in a specific country or countries that are not covered by international or regional systems, you can file separate national trademark applications in each country of interest. This involves complying with the trademark laws and regulations of each country and following their application procedures.
It’s important to consider your target markets and the countries where you plan to do business to determine the most appropriate approach for protecting your trademark internationally. Consulting with a trademark attorney who specializes in international trademark law can help you navigate the complexities of global trademark protection and develop a strategy that aligns with your business objectives.
How can I determine if a trademark is available?
Before proceeding with the registration of a trademark, it is essential to ensure its availability to avoid potential conflicts with existing marks. Here are some steps you can take to determine if a trademark is available:
1. Preliminary Search: Conduct an initial search to identify any identical or similar trademarks that are already registered or in use. This can be done by searching online trademark databases provided by the trademark offices of the relevant jurisdiction, such as the United States Patent and Trademark Office (USPTO) or the European Union Intellectual Property Office (EUIPO). Additionally, searching internet search engines and business directories can help uncover unregistered marks.
2. Comprehensive Search: Consider conducting a more thorough search, preferably with the assistance of a professional trademark search firm or an intellectual property attorney. They have access to specialized databases and resources that can uncover potential conflicts, including similar marks in different industries or jurisdictions. A comprehensive search helps minimize the risk of infringing on someone else’s trademark rights.
3. Consult an Attorney: Consulting an intellectual property attorney is highly recommended, especially for complex cases or if you have concerns about potential conflicts. They can provide legal advice tailored to your specific situation and assist in conducting a comprehensive search.
4. Trademark Office Examination: Once you file a trademark application, the relevant trademark office will conduct its own examination to determine the mark’s availability and registrability. They will review existing registrations and pending applications to assess any conflicts. If there are no objections or oppositions, the mark can proceed to registration.
Remember, conducting thorough research and seeking professional guidance are crucial steps in determining the availability of a trademark. This helps minimize the risk of potential legal disputes and ensures that your chosen mark is distinctive and protectable.
If I only provide my services in Anaheim, California, can I still obtain a federal trademark?
Yes, even if you only provide your services in Anaheim, you can still obtain a federal trademark in certain circumstances. Trademark rights in many jurisdictions, including the United States, can be acquired either through actual use of the mark in commerce or by filing an intent-to-use application.
If you have been using a mark in connection with your services within a specific geographic region, you may qualify for what is known as common law trademark rights. Common law rights arise automatically from the use of a mark in commerce, even without formal registration. These rights can provide some level of protection against others using a confusingly similar mark in the same geographical area, but they are generally limited in scope and enforceability compared to registered trademarks.
On the other hand, filing for a federal trademark registration with the United States Patent and Trademark Office (USPTO) offers several advantages. While it provides nationwide protection, it also establishes a legal presumption of ownership and exclusive rights to use the mark in connection with the specified goods or services throughout the entire United States. Additionally, federal registration allows you to use the ® symbol, providing notice to others that the mark is registered and legally protected.
To qualify for federal trademark registration, you need to meet certain requirements set by the USPTO, such as using the mark in interstate commerce or having a bona fide intent to use the mark in commerce. Interstate commerce generally refers to any commercial activity that involves goods or services in more than one state or U.S. territory, including online services accessible beyond your local area.
Therefore, if you can demonstrate that your services have a connection to interstate commerce or that you have a genuine intent to use the mark in such commerce, you may be eligible for federal trademark registration, regardless of whether your services are primarily local in nature.
How long does the trademark application process take?
The trademark application process duration can vary depending on various factors, including the jurisdiction in which you are seeking registration, the complexity of the application, and the backlog of pending applications at the relevant trademark office. In general, the trademark application process can take several months to multiple years to complete. Here is an overview of the main steps involved in the U.S. trademark application process:
1. Filing the Application: The first step is to prepare and file a trademark application with the United States Patent and Trademark Office (USPTO). The application should include information about the mark, its associated goods or services, and the basis for filing (either actual use or intent to use).
2. Initial Review and Examination: After filing, the USPTO conducts an initial review to ensure that the application meets the minimum filing requirements. If any deficiencies are found, the applicant is usually given an opportunity to correct them. Once the application passes the initial review, it moves on to substantive examination.
3. Substantive Examination: During this phase, a trademark examiner at the USPTO reviews the application in detail. They assess the mark’s registrability, including its distinctiveness, potential conflicts with existing marks, and compliance with trademark laws and regulations. The examiner may issue an office action if they have concerns or require additional information.
4. Office Actions: If the examiner issues an office action, the applicant has the opportunity to respond within a specified period, usually six months, addressing the examiner’s concerns or arguments. This back-and-forth correspondence can extend the application process, as multiple office actions may be issued before reaching a resolution.
5. Publication: If the application is approved by the examiner or the applicant successfully overcomes any objections, the mark is published for opposition. During this period, third parties who believe they would be harmed by the registration of the mark have an opportunity to oppose its registration. If no oppositions are filed within the designated time frame, the application moves forward.
6. Registration: Once the mark has cleared the opposition period and all outstanding requirements have been met, the USPTO issues a notice of allowance or registration, depending on the basis of the application. The applicant must then pay the required fees, and if it was an intent-to-use application, provide evidence of actual use in commerce.
Overall, the entire process, from filing to registration, typically takes around 12 to 18 months for straightforward applications without any major obstacles. However, it’s important to note that the duration can be longer if complications arise, such as office actions, opposition proceedings, or delays in responding to requests from the USPTO.
Do I need to have a registered trademark before I start selling my goods or services?
You can start selling a product or service before obtaining a registered trademark. However, keep in mind that doing business without registering your trademark first, means that a third party can not only use your trademark, but become the rightful owner by registering it with the USPTO before you do. If you are serious about your business, then take the proper steps to ensure that your trademark is properly protected against infringement.
Can I use a trademark without registering it?
Yes, you can use a trademark without registering it. Trademark rights can be acquired through common law use, meaning that simply using a mark in commerce grants you some level of protection in the geographic areas where you are using the mark. Common law rights arise automatically, but they are generally limited to the specific geographic region where the mark is being used and may be more challenging to enforce compared to registered trademarks.
However, there are several advantages to registering a trademark:
1. Nationwide Protection: A registered trademark provides exclusive rights to use the mark nationwide, giving you broader protection and the ability to expand your business into new markets.
2. Legal Presumption: Registration creates a legal presumption of your ownership and exclusive rights to the mark, making it easier to enforce your rights in case of infringement.
3. Deterrence: A registered trademark serves as a deterrent to others who may consider using a similar mark, as they can easily identify your registered status and the associated legal protections.
4. Statutory Damages and Attorney’s Fees: If you need to take legal action against an infringer, having a registered trademark can provide advantages such as the possibility of recovering statutory damages and attorney’s fees in certain cases.
5. Use of ® Symbol: Only registered trademarks can use the ® symbol, which notifies others of your registered status and helps establish your brand’s credibility.
While registration is not mandatory, it offers significant benefits in terms of protection, enforcement, and establishing your ownership rights. Therefore, it is generally advisable to seek trademark registration whenever possible.
What is a trademark’s specimen?
A trademark’s specimen is a sample of how the mark is actually used in commerce on or in connection with the goods or services it represents. It serves as evidence to show how the mark is being presented to consumers. Specimens play a crucial role in the trademark registration process, as they help demonstrate that the mark is being used in a consistent and appropriate manner.
The specific requirements for a trademark specimen can vary depending on the jurisdiction, but generally, a valid specimen should meet the following criteria:
1. Actual Use: The specimen must show that the mark is being used in commerce. It should demonstrate that the goods associated with the mark have been sold or transported, or that the services have been rendered to customers.
2. Proper Mark Placement: The specimen should display the mark in a manner that consumers can readily perceive it as a source identifier. The mark should be prominently displayed and not obscured by other elements.
3. Association with Goods or Services: The specimen should establish a clear association between the mark and the goods or services it represents. This can be achieved through labels, tags, packaging, advertisements, or other materials used in connection with the goods or services.
4. Representative Sample: The specimen should represent the ordinary commercial use of the mark, reflecting how the mark is typically displayed to consumers.
Common examples of acceptable specimens can include product packaging, labels, tags, brochures, catalogs, website screenshots showing the mark in use, or photographs demonstrating the mark’s placement on physical goods.
It’s important to note that different jurisdictions may have specific requirements for specimens. For example, the United States Patent and Trademark Office (USPTO) has specific guidelines regarding the format and acceptable types of specimens. Therefore, it is crucial to review the requirements of the relevant trademark office to ensure compliance when submitting a specimen as part of the trademark application process.
Can I request an expedited approval of my trademark registration?
Yes, in certain circumstances, you may request an expedited or accelerated examination of your trademark application. Expedited examination, also known as “fast-track” or “priority” examination, allows for a quicker review of your application by the trademark office.
and requirements for expedited examination vary depending on the jurisdiction. Here are a few examples:
1. United States: In the United States, the United States Patent and Trademark Office (USPTO) offers a program called the “TEAS Plus” that provides a faster examination process for applicants who meet specific requirements and follow a strict set of filing guidelines. Expedited examination is also available under the USPTO’s “TEAS RF” (Reduced Fee) program, which requires applicants to submit their application electronically and pay reduced fees.
2. European Union: The European Union Intellectual Property Office (EUIPO) provides a “Fast Track” service that allows applicants to request expedited examination. To qualify, applicants must meet specific criteria, such as having a pending legal dispute related to the mark or requiring a registration for customs enforcement purposes.
3. Canada: The Canadian Intellectual Property Office (CIPO) offers a program called the “Advanced Examination” option, allowing applicants to request expedited examination. To be eligible, applicants must demonstrate a legitimate reason, such as pending litigation or potential infringement issues.
Can I trademark a phrase?
Yes, it is possible to trademark a phrase, provided that the phrase meets the requirements for trademark registration. To be eligible for trademark protection, a phrase must typically meet the following criteria:
1. Distinctiveness: The phrase should be distinctive and not generic or descriptive of the goods or services it represents. Distinctiveness can be categorized into four levels: arbitrary or fanciful (highly distinctive, such as “Apple” for computers), suggestive (suggestive of the goods or services without directly describing them, such as “Microsoft” for software), descriptive (describes the goods or services directly, but has acquired secondary meaning through extensive use, such as “Vision Center” for an eyewear store), or generic (common terms that cannot be trademarked, such as “Computer” for computers).
2. Use in Commerce: The phrase should be used in commerce or have a bona fide intent to use in commerce. This means that the phrase must be associated with the sale or provision of goods or services.
3. Non-Confusion: The phrase should not create a likelihood of confusion with existing trademarks. This means that it should not be similar to another registered or pending mark in the same industry or related field.
It’s important to conduct a comprehensive search to ensure that the phrase you want to trademark is not already in use or registered by someone else. Additionally, working with an intellectual property attorney who specializes in trademarks can help you navigate the process, determine the distinctiveness of your phrase, and increase your chances of successful registration.
Can I trademark a logo?
Yes, you can trademark a logo. Logos are commonly registered as trademarks because they can serve as distinctive visual representations of a business, brand, or product. Trademark registration provides legal protection and exclusive rights to use the logo in connection with the goods or services it represents.
To successfully register a logo as a trademark, it must meet certain requirements:
1. Distinctiveness: The logo should have a distinctive design that sets it apart from common or generic symbols. A unique and creative logo is more likely to meet the distinctiveness requirement for trademark registration.
2. Use in Commerce: The logo should be used in commerce or have a bona fide intent to use in commerce. This means that the logo must be associated with the sale or provision of goods or services.
3. Non-Confusion: The logo should not create a likelihood of confusion with existing trademarks. It should not resemble or be similar to another registered or pending mark in the same industry or related field.
When applying to register a logo as a trademark, you will typically need to submit a clear representation of the logo in the application. This representation can be in the form of a digital image or a physical specimen, depending on the requirements of the relevant trademark office.
Can I trademark a color?
Yes, it is possible to trademark a color under certain circumstances, but it can be more challenging compared to traditional trademarks such as words, phrases, or logos. Trademarking a color typically requires the color to have acquired distinctiveness or secondary meaning in the context of the goods or services it represents. In other words, consumers should associate the specific color with a particular brand or source of goods or services.
To successfully register a color as a trademark, you will need to demonstrate that the color has acquired distinctiveness through extensive use and promotion. This can be achieved by providing evidence of long-term and exclusive use of the color in connection with the goods or services, extensive advertising and marketing efforts, and consumer surveys or other evidence showing the color’s association with your brand.
It’s important to note that color trademarks are subject to strict scrutiny by trademark offices, and the registration process can be complex and time-consuming. Additionally, color trademarks are generally limited in scope and protection, as they only apply to the specific use of the color in connection with the goods or services specified in the registration.
Can I transfer my trademark to someone else?
Yes, trademarks can be transferred or assigned to another party. Trademark assignments involve the transfer of ownership rights from the current owner (assignor) to another party (assignee). The assignment can be total or partial, depending on whether the entire trademark or only specific rights are being transferred.
Here are some key points to consider when transferring a trademark:
1. Assignment Agreement: The transfer of a trademark typically requires a written assignment agreement between the assignor and assignee. This agreement should outline the terms and conditions of the transfer, including the specific rights being assigned, any restrictions or limitations, and any financial considerations, such as payment or royalties.
2. Recordation: It is advisable to record the trademark assignment with the relevant trademark office. Recording the assignment provides public notice of the transfer and ensures that the assignee’s ownership rights are properly documented. In some jurisdictions, recordation may be mandatory for the assignment to be effective against third parties.
3. Due Diligence: Before transferring a trademark, it’s essential to conduct due diligence to ensure that the mark is free of encumbrances, such as conflicting rights or pending legal disputes. This includes conducting comprehensive searches and reviewing the trademark’s status and history.
4. Rights and Obligations: Assigning a trademark transfers the associated rights, such as the right to use and enforce the mark, but it may also transfer certain obligations, such as maintaining the mark’s registration and using it in accordance with applicable laws and regulations.
5. International Considerations: If the trademark is registered in multiple jurisdictions, the assignment may need to comply with the requirements of each jurisdiction. International trademark transfers often involve different legal frameworks and procedures, so it’s crucial to consult with intellectual property professionals with expertise in the relevant jurisdictions.
It’s recommended to consult with an intellectual property attorney who specializes in trademarks to ensure a smooth and legally compliant transfer of your trademark rights.
Can I license my trademark to others?
Yes, trademark owners have the right to license their trademarks to other parties for use in connection with specific goods or services. Licensing allows the trademark owner (licensor) to grant permission to another party (licensee) to use the mark, while still retaining ownership and control over the mark.
Here are some important considerations when licensing a trademark:
1. License Agreement: A trademark license requires a written agreement between the licensor and licensee, commonly known as a license agreement or trademark licensing agreement. This agreement defines the rights and responsibilities of both parties, including the scope of the license, quality control measures, payment terms, duration, and any territorial restrictions.
2. Quality Control: Trademark owners have a legal obligation to maintain quality control over the goods or services associated with their mark. This means that the licensor must ensure that the licensee uses the mark in a manner consistent with the licensor’s standards of quality. The license agreement should include provisions that allow the licensor to monitor and enforce these quality control measures.
3. Fee Structure: The license agreement should clearly outline the financial arrangements, including any upfront fees, ongoing royalty payments, or other forms of compensation to be paid by the licensee to the licensor. The agreement may also address how the fees are calculated, frequency of payments, and any reporting requirements.
4. Termination and Renewal: The license agreement should specify the terms for termination, including circumstances under which either party can terminate the agreement. It should also address options for renewal or extension of the license if desired.
5. Recordation: In some jurisdictions, it may be advisable or necessary to record the trademark license with the relevant trademark office. Recordation provides public notice of the license and ensures that the licensee’s rights are protected. However, the requirements for recordation vary by jurisdiction, so it’s essential to consult with legal professionals familiar with the relevant laws and procedures.
What is a trademark office action?
A trademark office action is a written communication from the trademark office, usually the result of a preliminary examination of a trademark application. The purpose of an office action is to notify the applicant of issues or deficiencies in the application that must be addressed for the application to proceed towards registration.
There are two main types of office actions:
1. Non-Substantive Office Action: This type of office action typically addresses administrative or procedural issues in the application. It may request corrections or clarifications regarding the applicant’s contact information, the identification of goods or services, the classification of goods or services, or the format of the application itself. Non-substantive office actions are generally less complex and can often be resolved by providing the requested information or making the necessary amendments.
2. Substantive Office Action: A substantive office action raises objections or refusals based on the substantive examination of the application. These objections are typically related to the registrability of the mark, including issues of distinctiveness, descriptiveness, confusion with existing marks, or compliance with statutory requirements. Substantive office actions often require a more detailed response from the applicant, including legal arguments and evidence to overcome the objections.
Receiving an office action does not mean automatic rejection of the application. It provides an opportunity for the applicant to address the issues raised and provide a satisfactory response to the trademark office. Failure to respond to an office action within the specified timeframe can result in abandonment of the application.
What should I do if I receive an office action on my trademark application?
If you receive an office action on your trademark application, it’s crucial to carefully review the document and understand the objections or requirements raised by the trademark office. Here are some steps to consider:
1. Read the Office Action: Carefully read and understand the content of the office action. Identify the specific objections, requirements, or deficiencies outlined by the trademark examiner.
2. Consult with an Attorney: Consider seeking advice from an intellectual property attorney experienced in trademark matters. They can provide guidance on how to respond to the office action and help you understand the best course of action based on the specific issues raised.
3. Analyze the Objections: Evaluate the objections or refusals stated in the office action. Assess the validity of the objections and determine if there are grounds for overcoming them. An attorney can assist in conducting a thorough analysis and provide advice on the best strategies for addressing the objections.
4. Prepare a Response: Prepare a detailed and persuasive response to the office action. Address each objection or requirement individually, providing legal arguments, evidence, or supporting documentation to support your position. Depending on the complexity of the issues, your attorney may assist in drafting the response.
5. Submit the Response: Ensure that you meet the deadline for responding to the office action. Submit your response along with any requested amendments, evidence, or arguments to the trademark office.
6. Follow Up: After submitting your response, monitor the progress of your application. The trademark office will review your response and either accept your arguments and proceed with the registration process or issue another office action with further requirements or objections.
How do I enforce my trademark rights?
Enforcing your trademark rights is crucial to protect your brand and prevent others from infringing upon your mark. Here are some steps you can take to enforce your trademark rights effectively:
1. Monitor for Infringement: Regularly monitor the marketplace for any unauthorized use of your trademark. This can include conducting online searches, monitoring social media platforms, and keeping an eye on relevant industry publications. You can also consider employing professional trademark watch services that provide comprehensive monitoring and alert you to potential infringements.
2. Gather Evidence: If you identify potential trademark infringement, gather evidence to support your claim. This can include screenshots, photographs, product samples, packaging materials, advertisements, or any other documentation that demonstrates the unauthorized use of your mark.
3. Consult with an Attorney: Seek advice from an experienced intellectual property attorney to assess the strength of your case and determine the best course of action. They can guide you through the enforcement process, evaluate the evidence, and provide legal strategies to protect your trademark rights.
4. Cease and Desist Letter: In many cases, sending a cease and desist letter to the infringing party is the first step in enforcing your trademark rights. The letter should clearly state your trademark rights, describe the infringing activities, and demand that the infringer immediately cease using your mark. A well-drafted cease and desist letter from an attorney carries more weight and can help demonstrate your seriousness in protecting your trademark.
5. Negotiate Settlements: In some instances, negotiation with the infringing party may be possible. This can involve discussions on ceasing the infringing activities, modifying the use of the mark, or reaching a licensing agreement. An attorney can represent your interests during these negotiations and help you achieve a favorable resolution.
6. Administrative Actions: Depending on the jurisdiction, you may have the option to file administrative actions with the relevant trademark office. These actions can include opposition proceedings, cancellation proceedings, or invalidation proceedings against conflicting or infringing marks. An attorney can guide you through the specific procedures and requirements for these actions.
7. Litigation: If informal negotiations and administrative actions do not yield the desired results, you may need to consider filing a lawsuit to enforce your trademark rights in court. Litigation can be a complex and costly process, but it may be necessary to protect your mark from continued infringement. An attorney specializing in intellectual property litigation can provide representation and guide you through the legal process.
8. Ongoing Protection: Trademark enforcement is an ongoing process. Continuously monitor the marketplace, take swift action against infringement, and enforce your rights to maintain the strength and exclusivity of your trademark.
Enforcing your trademark rights requires vigilance, prompt action, and the assistance of a qualified intellectual property attorney. They can provide the expertise needed to navigate the enforcement process, protect your brand, and safeguard your trademark rights.
Remember that the enforcement of trademark rights can vary depending on the jurisdiction and the specific circumstances of each case. It’s advisable to consult with an attorney who specializes in trademark law to ensure compliance with the applicable laws and regulations in your jurisdiction.
Do I need to conduct a trademark search before filing my application?
There’s nothing that says you have to conduct a trademark search, but it’s a good idea to do so. The USPTO has a huge database of registered trademarks and pending trademarks that you can search through.
If your search reveals that someone already registered the name you wanted, it can be frustrating. However, it’s better to have this information now rather than later. Without searching the potential name before submitting a trademark application, you run the risk of having it rejected by the USPTO.
Do I need to sell a product or service to obtain a trademark?
No, you do not necessarily need to sell a product or service to obtain a trademark. While the primary function of a trademark is to identify and distinguish goods or services in the marketplace, it is not a requirement that you have an existing product or service at the time of filing a trademark application.
In many jurisdictions, including the United States, you can file a trademark application based on an “intent to use” the mark in commerce. This means that you have a bona fide intention to use the mark in the future for the goods or services specified in the application.
Filing an intent-to-use application provides you with certain advantages. It allows you to secure a priority filing date for your mark while you are in the process of developing your product or service. This can be particularly beneficial if you anticipate delays in bringing your product or service to market but want to protect your brand in the meantime.
However, it’s important to note that for an intent-to-use application, you will eventually need to provide evidence of actual use of the mark in commerce before the trademark can be registered. This evidence usually takes the form of a specimen, which is a sample of how you are using the mark in connection with your goods or services. Once your product or service is ready to be launched and you have started using the mark in commerce, you will need to submit this evidence to the trademark office.
It’s worth mentioning that some jurisdictions may have specific requirements or time limits for filing proof of use after the initial application. Therefore, it’s essential to consult with an intellectual property attorney to understand the specific requirements and deadlines applicable to your jurisdiction.
In summary, while it is not mandatory to have a product or service already on the market, you should have a genuine intention to use the mark in commerce when filing an intent-to-use application. This allows you to secure your trademark rights and provides a pathway for registration once you have begun using the mark in connection with your goods or services.
How long does a trademark last?
Trademarks never expire, but you do need to renew the trademark. Renewal deadlines are set by the USPTO. The first renewal will be required approximately 5 years from the date of registration, and then 5 years after that. The USPTO will require renewals every 10 years thereafter. Please note that you run the risk of having your trademark cancelled if you miss a renewal deadline.
Why Trademark Registration Matters for Anaheim Businesses
Millions of tourists flock to Anaheim each year to visit the home of the Disneyland Resort, The Anaheim Convention Center, The Anaheim Duck ice hockey club, and more. It’s truly one of the most beautiful and awe-inspiring cities in the nation, perhaps even the world.
Entrepreneurs who are ready to start a new business venture in Anaheim know that there’s plenty of work to be done before they can open their doors. Far too often, however, they put off trademark registration either because they don’t think it’s important, or they assume it’s something they can take care of at a later date.
Imagine the following: Samantha and Laura are lifelong friends who grew up together in the Anaheim area. They’re looking forward to pooling their resources and opening up a yoga studio in Anaheim. They’ve already found a location and signed the lease. Now they need to renovate the space, set up a website, start social media accounts, create a marketing plan. There’s so much to be done it feels like it’ll never end.
When Laura’s mother suggests that they trademark the name of their studio, they know she’s right, but they make the decision to put that task on the back burner for now.
Unfortunately for the two friends, not registering their trademark is going to cost them in the long run. It turns out that there’s already a yoga studio in Orlando that has a similar name. The Orlando studio, however, had registered their trademark with the USPTO over 4 years ago. Once they find out about Samantha and Laura’s studio, they will certainly send a cease-and-desist letter requesting that Samantha and Laura close their doors and rebrand.
Starting a new business can be a hectic time, but trademark registration must remain a priority if you truly want your venture to be successful.
If you have questions about trademark registration, then contact the attorneys at Cohn Legal for a no-cost trademark consultation.
** Cohn Legal, PLLC is not located in Anaheim and yet it can assist businesses from California in registering a federal Trademark because trademarks are governed under federal law.
Trademarks Services for Anaheim Businesses
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Complete the Trademark Registration Form.
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We File the Application with the USPTO.