Trademark Lawyer San Diego: San Diego, California Businesses Use Cohn Legal for Trademark Services
Serving San Diego, California companies, Cohn Legal, PLLC specializes in intellectual property protection and corporate law for startups, entrepreneurs, and small business owners. On the most fundamental level, our goal is to provide our clients with exceptional legal guidance and support at cost-effective rates.
How to Choose the Right Trademark for Your Business
Selecting the right trademark is one of the most important decisions a business owner can make. A trademark is not just a logo or a catchy name; it is a valuable asset that represents your brand identity, sets you apart from competitors, and helps you protect your reputation in the market. A strong trademark can elevate your business’s credibility and make it easier to attract loyal customers. Here’s how to choose the right trademark for your business:
Understand the Types of Trademarks
Before choosing a trademark, it’s essential to understand the different types of marks that are eligible for protection. These categories include:
Fanciful Marks: These are completely unique and made-up terms (e.g., “Xerox”). They are the strongest type of trademarks because they are distinctive and not descriptive of any product or service.
Arbitrary Marks: These marks use existing words but in a way that has no logical connection to the product or service (e.g., “Apple” for computers). Arbitrary marks are also strong trademarks due to their distinctiveness.
Suggestive Marks: Suggestive trademarks hint at the nature of the product or service without directly describing it (e.g., “Netflix” suggests an online service for movies and shows). These marks are protectable but less powerful than fanciful or arbitrary marks.
Descriptive Marks: These describe the qualities, features, or characteristics of a product or service (e.g., “Fast Food” for a restaurant). While these marks can eventually acquire protection, they are generally not eligible for trademark registration unless they have acquired distinctiveness over time.
Generic Marks: These are common terms that represent a type of product or service (e.g., “Computer” for a business selling computers). Generic terms cannot be trademarked because they are not unique.
Consider Distinctiveness
The strength of your trademark depends on how distinctive it is. Trademarks that are highly distinctive (fanciful, arbitrary, or suggestive) are easier to register and protect. On the other hand, descriptive or generic marks are more difficult to defend, as they may fail to differentiate your business from others in the market. Aim for a trademark that is memorable, unique, and able to stand out in the minds of consumers.
Ensure the Trademark is Available
Before finalizing your trademark, it is essential to check its availability. Conduct a thorough trademark search to ensure your chosen mark doesn’t conflict with existing trademarks. This will help you avoid legal disputes and costly rebranding efforts in the future. A trademark search involves reviewing the U.S. Patent and Trademark Office (USPTO) database and other online platforms to see if there are any existing registrations or common law marks that are too similar.
Reflect Your Brand Identity
Your trademark should accurately reflect the core values and message of your business. Whether it’s a catchy name, a meaningful logo, or a unique design, make sure your trademark resonates with your target audience and conveys your brand’s personality. A good trademark should evoke positive emotions and reinforce the trust that consumers place in your product or service.
Consider Future Growth
When selecting a trademark, consider the long-term potential of your brand. Choose a mark that can evolve with your business and apply to a range of products or services. Avoid overly narrow or limiting marks that might restrict your business’s future expansion. A broader trademark can accommodate new product lines, geographic areas, and markets, giving you more flexibility down the line.
Be Aware of Legal Requirements
When selecting a trademark, make sure that it complies with the legal requirements for trademark registration. For example, your mark must be used in commerce (i.e., in connection with actual goods or services). Additionally, certain marks, such as those that are immoral, deceptive, or disparaging, may be ineligible for protection. Consult with a trademark attorney to ensure your mark is legally sound and protectable.
Top 10 Questions San Diego Businesses Have About Obtaining a Trademark
What does the term “fanciful trademark” mean?
Fanciful trademarks are terms or words that are completely made up and have no meaning outside of their use as a brand or product name. Exxon is one example of a fanciful trademark. Doritos is another example. These brand names have no relevance other than acting as identifiers of certain products.
Can more than one person own a trademark?
Yes. Trademarks can be owned either by a single individual, multiple individuals or by corporate business entities. While it is quite common for single individuals to own trademarks, it is more common for multiple owners of a trademark to register the given trademark under the ownership of an official business entity like an LLC or C-Corp.
Can I trademark the design of my new car engine?
No. Trademarks do not extend to functional “tools” or products like a car engine. Instead, the owner of the car engine should seek patent protection in the USPTO.
Do I have to hire a trademark attorney near me?
There is no reason you need to hire a trademark attorney within your state or region. Trademark registration is a federal matter so you can hire a trademark attorney anywhere in the country to assist you.
What does it mean if the USPTO determines by trademark to be “generic”?
Generic terms are words that are so common that everyone uses them. For example, no one computer manufacturer is allowed to trademark the term “computers.” If a computer manufacturer was allowed to do that, it would mean that no other computer manufacturers would be able to use the word. It’s simply unreasonable and unfair to give one particular company the ability trademark a generic term.
What’s the difference between the ® and TM symbols?
Use of the ® symbol after your mark is only allowed after your mark is federally registered. Use of that symbol beforehand is unlawful.
The TM symbol can be used any time, even if your trademark application has not been approved yet.
Does my business need more than one trademark?
Most likely, you’ll need to submit more than one trademark application. For example, you may want to trademark your business name, your logo, and the name of your product. Consult with the trademark attorneys at Cohn Legal to determine a smart trademark strategy.
Can I register my trademark before I start to use it?
Yes, you can register your trademark before you start to use it. In fact, it’s better for you if you do so. Make sure you submit an “Intent to Use” trademark application to the USPTO. If the trademark is allowed, then the USPTO will give you 6 months to show that you are using the mark in commerce. However, if you’re not ready to use your mark in commerce after 6 months, then you can file for an extension which will give you another 6 months. The USPTO allows up to 5 extensions.
Does my U.S.-registered trademark protect my mark from infringement in other countries?
Your U.S. registered trademark gives you protection within the Unites States and its territories. Your mark won’t be protected in other countries unless you register your trademarks in those countries. Speak to a trademark attorney about how to ensure your brand is protected around the globe.
Is there a benefit to hiring a Trademark Lawyer?
Absolutely. There are many nuances involved in conducting a trademark search to filing the application to answering office actions to filing statements of use to…. Well, you get the idea. Save yourself the hassle and speak with a professional.
Why Trademark Registration Matters for San Diego Businesses
San Diego is the ideal place to start a new venture. The residents are friendly and love to support local businesses. The opportunity for success exists for those who are ready to work hard.
Some business owners in San Diego know that trademark registration is important and try to handle the registration process themselves. However, trademark registration isn’t a do-it-yourself task.
Imagine the following: Charlie and Alex are brothers who love fishing off the coast in their boat. They decide to start a business taking tourists out on fishing expeditions.
The brothers are excited to get started. They are expert sailors, knowledgeable fishermen, and are super friendly. What they aren’t experts in, however, is trademark registration. What they do know is that they can’t take the name of a business that already exists.
After much discussion, the brothers finally decide on a name for their business: Friendly Fishing Expeditions. A quick Google search reveals that no other fishing company in San Diego is using that name. They assume they’re good to go.
They create a website, order signs for the boat, and start advertising in local papers. The brothers’ business grows quickly as news spreads of their fishing expertise and friendly customer service. However, Charlie and Alex are about to encounter some frustrating news.
Another fisherman opened up a similar business in Panama City and plans on expanding into San Diego. The name of this business is Friendly Fisherman Expeditions. That name is trademarked and the business owner’s attorney sent a cease-and-desist letter to the brothers.
Charlie and Alex will need to halt operations until they can rebrand. It’s a financial setback that will be hard to recover from.
Never rely on Google to determine if a business name is available for use. A trademark attorney can conduct a thorough search to ensure the name you want is available.
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 San Diego and yet it can assist businesses from California in registering a federal Trademark because trademarks are governed under federal law.