What is the Process of Applying for a Trademark in California?


What is a Trademark

Designing a trademark is an integral component of a startup company’s branding and marketing strategy. A trademark associates a product or service with the source of the product of service.  The trademark helps potential consumers to recognize the company and associate the mark with the company’s products and services. Therefore, registering a trademark is incredibly important. Once registered, federal and state trademark laws protect the company’s rights in the trademark, making trademark infringement actionable in court.  Failure to register your distinct trademark can damage your company and its place in the market. The Silicon Valley business attorneys at Startup Company Counsel understand the importance of creating and protecting a startup’s trademark.

The United States Patent and Trademark Office (USPTO) approves or denies trademarks. Once approved, other companies may not infringe upon that trademark. The trademark holder can prevent other companies from using their mark or something similar so long as the mark is associated with their goods and services. The USPTO defines a trademark as a mark or logo associated with a company’s goods or services.  According to Forbes, Google, Microsoft, Walmart, Bank of America, GE, Apple, Wells Fargo, and AT&T are some of the most valuable trademarks of 2016.

Trademarks are different than other types of intellectual property. Patents protect infringement upon inventions. Copyrights protect original literary works or works of art, such as photographs, paintings, drawings, songs, television shows, and movies. As the USPTO explains, the startup’s domain name in its web address is not a trademark. Although a web address cannot be a registered trademark, a web address can infringe upon another’s trademark.  Additionally, a business name can infringe upon another’s trademark.

Applying for a Trademark

The USPTO has a searchable database which applicants must review before submitting their application.  The trademark registration process begins by designing a potential trademark. The USPTO indicates that some marks are not suitable for trademark protection. The USPTO can decline an application for a trademark because of similarity to an existing mark or similarity to an existing product or service already protected under a different trademark.  Additionally, the USPTO may decline an application to register a trademark because the mark is too vague or ambiguous. The mark itself must be unique and specifically identify the goods and services associated with the mark.  The USPTO can decline an application because the application fails to identify the good or service sufficiently.

The trademark application includes a filing fee. The filing fee ranges from $225 to $325 depending upon the specific application and this fee is non-refundable. Once the startup files the application, a trademark attorney employed by the USPTO reviews the application. The reviewing attorney will scrutinize the application, the proposed trademark, and the associated products and services to determine whether the mark can and should be registered. If the reviewing attorney finds any minor problems with the application, then they can speak with the applicant to correct those problems. However, if the USPTO determines the application must be denied, the reviewing attorney must notify the applicant in writing. The writing must specify the substantive and procedural reasons the reviewing attorney denied the application.

The USPTO will authorize the mark as a registered trademark after the applicant overcomes all objections from the reviewing attorney.  Once approved, the USPTO publishes the trademark in their weekly periodical. If a party believes that the trademark infringes upon their rights, they have thirty days to file an objection. A specialized tribunal called the Trademark Trial and Appeal Board hears aggrieved parties’ objections and rules on them.  Once the objection period lapses, the applicant must file a statement of use with the USPTO. If approved at this stage, then the trademark is registered. The applicant must maintain the status of the trademark by filing documents called “maintenance documents.”  Once registered, the USPTO may require additional filings in the fifth, sixth, ninth and tenth years from the registration date.

Trademarks With A Business – Silicon Valley Attorneys can Protect Yours

The Silicon Valley business attorneys at Startup Company Counsel understand all of the hard work and dedication required to start a company. Obtaining a trademark for your company can be a complicated, meticulous process.  There are many considerations and steps that must be taken in order to successfully register and retain your trademark. You must be proactive in protecting your investment, so call Startup Company Counsel today at 408-441-7555 to learn more about how to help secure a trademark for your business

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