As trademark lawyers Malibu CA trusts will tell you, only protectable trademarks are registrable. Trademarks are divided into four categories, with fanciful/arbitrary marks being the strongest (such as Kodak® for cameras or Apple® for computers), followed by suggestive marks (Coppertone® for sunscreen). Descriptive marks are not federally registrable without proof of secondary meaning, or acquired distinctiveness (Sharp® for televisions, or surname marks like Chanel®). Generic marks are not protectable due to use as the generic word for certain goods or services (aspirin).
In the US, trademark rights are based on use. Thus, registration with the United States Patent and Trademark Office (USPTO) is not necessary, but does provide many benefits including nationwide notice to others, enhanced damages, a basis for registration in other countries and use of the ® symbol.
Fanciful, arbitrary and suggestive marks are theoretically capable of registration once used, assuming the mark is not likely to cause confusion with a previously used or registered mark (the standard for trademark infringement). The best way to ensure there are no confusingly similar trademarks with prior rights is to order a professional trademark search through trademark lawyers Malibu CA respects.
Once a search has come up clean, it is time to file a USPTO application. A trademark application can be filed for a word mark or a design mark, or for a specialized trademark such as a sound or color. Selecting and drafting the specification of goods and/or services is an essential element in registering a trademark with the broadest protection, and as many of the clients who rely on us will tell you, Holmes Weinberg is the place to find trademark lawyers Malibu CA can count on to file your trademark application.
During the application process, the USPTO may issue one or more “office actions,” which run the gamut from simple requests, such as disclaiming the descriptive word “Airlines” in the mark SOUTHWEST AIRLINES, or claiming ownership of a prior registration, to more complicated matters such as registration refusals based on descriptiveness or likelihood of confusion. Conducting a thorough search of the USPTO register before filing an application is filed can minimize such refusals, which are difficult to overcome. If you are issued an office action by the USPTO, you should contact Holmes Weinberg to be put in touch with the best trademark lawyers Malibu CA has to offer.
If an Opposition to registration is filed by a third party, the matter is decided by the Trademark Trial and Appeal Board (TTAB), the USPTO’s administrative court. While discovery in a TTAB proceeding is governed by the FRCP, trial is less involved, with testimony taken by deposition, and oral hearings only available upon request. However, these proceedings can be expensive and unpredictable to litigate, another reason to thoroughly vet a mark before applying to register or otherwise investing in it. Holmes Weinberg’s experienced trademark attorneys Steven Weinberg and Michael Salvatore are trademark lawyers Malibu CA relies on to win tough fights in TTAB Opposition and Cancellation proceedings, and have a long record of success.
For marks that do attain registration, periodic maintenance filings are required. Between the fifth and sixth year from the date of registration, a Declaration of Continued Use must be filed to prevent cancellation. If the mark has been used for five consecutive years, a Declaration of Incontestability removes several grounds on which a registered mark may be attacked in a Cancellation proceeding (like an Opposition, but pertaining to registered marks). Finally, ten years from registration, and every ten years thereafter, a Declaration of Continued Use and Application for Renewal must be filed to prevent cancellation. Please do not hesitate to call Steve Weinberg and Mike Salvatore of Holmes Weinberg PC so that you too can be represented by trademark lawyers Malibu CA can count on.