Irvine Trademark Lawyers

Experienced Irvine Trademark Attorneys Help You Protect the Marks That Identify Your Brand

With a population of over 300,000 people and thousands of businesses, Irvine, California is a bustling place. Cutting through the “noise” of daily life to have your brand recognized can be a challenge. 

Trademarks help businesses communicate clearly with customers. With trademark protection, you can tell a unique brand story to clarify the value of your offerings – and prevent others from hijacking your work to sell their wares.

Registering a trademark offers several benefits, but it also poses several challenges. Work with an experienced Irvine trademark lawyer to overcome hurdles and secure the protection your trademark needs. The team at Cohen IP can help. 

What is a Trademark?

A “trademark” identifies the source of a product or service. Trademarks are a form of intellectual property; as such, they carry certain legal protections for the owner of the mark. Businesses use trademarks to distinguish their goods and services from those of their competitors, while consumers use trademarks to determine if their purchase came from a reliable source. 

The USPTO allows a trademark to include “any word, phrase, symbol, design, or a combination of these things that identifies your goods or services.” 

When you register your trademark:

• You create a record in the publicly searchable USPTO database showing that you are the owner of the mark and the source of goods and services branded with that mark. 
• You receive legal protection of your mark, so you can fight counterfeit goods, fraud, and infringement. 

Am I Required to Register a Trademark?

Some rights associated with trademarks are automatic. They apply as soon as you begin using your mark in commerce. 

These rights are limited, however. One limitation is that these rights only apply in the locations where you offer products or services. If you only sell your product in Irvine, for example, you can only enforce your rights in Irvine. Infringement that occurs elsewhere, such as in the Bay Area or another state, falls outside your rights.

The same doesn’t apply for a registered trademark, however. Once your trademark is registered with the United States Patent and Trademark Office (USPTO), you can enforce your rights throughout the United States – whether or not you sell your product nationwide. Registering a trademark also provides other benefits, discussed below. 

What Items Does Trademark Registration Protect?

A person or business may apply for trademark protection for any distinctive mark that:

• Identifies specific goods or services, 
• Distinguishes those goods or services from similar ones offered by other sources, and
• Communicates the source of the goods or services to consumers. 

When asked to envision a trademark, most people imagine a logo or distinctively styled name or slogan. The McDonald’s golden arches, the Nike swoosh, and the Coca-Cola font are all examples of items a trademark registration can (and does) protect. 

Yet trademark protection applies to other distinctive “marks” as well. Distinctive sounds like the Microsoft Windows start-up chime can also receive trademark protection. Even distinctive smells can receive trademark protection if they meet the three criteria above. 

A business’s trademarks are often a concern of its branding teams. “Trademark” and “brand” are not identical, however. A trademark is a tool incorporated into an overall branding strategy. 

Trademark registration won’t give your brand an automatic boost. It will, however, help protect the work you’ve put into creating that brand. 

What Benefits Come With Registering a Trademark?

The benefits of registering a trademark with the USPTO include:

• Inclusion in the USPTO database. The database can be searched by the public, allowing others to see you own the trademark as applied to your goods or services. Notice of registration can stop an infringement situation before it starts.
• Use of the federal trademark registration symbol (®) to communicate to the public that you’ve registered the trademark. This communication can also stop potential infringement by warning others the mark is registered.
• Rights to bring lawsuits in federal court if you discover counterfeiting, fraud, or other forms of trademark infringement. 
• Access to the legal presumption that you own the mark and have the exclusive right to use it. Your registration certificate serves as evidence of your ownership and rights. 
• Registration of your mark with U.S. Customs and Border Patrol (CBP), who can then watch for counterfeit goods entering the country.
• Expedited registration of your trademark internationally. Some countries accept US trademark registration as evidence of ownership, making it easier to register your trademark in those nations. 

Trademarks may also be registered with the state government in some US states. State registration, however, applies only within that state’s borders. Some US states do not maintain trademark registration databases. A federal registration provides a single registration that applies in all fifty US states. 

How Can I Create a Strong Trademark?

The USPTO  more readily accepts trademark applications for a “strong” trademark. A “strong” trademark is “inherently distinctive,” standing out at a glance. 

What makes a strong trademark? The USPTO prioritizes three factors. Strong trademarks are fanciful, arbitrary, and suggestive.

Fanciful

A “fanciful” trademark uses invented words or names – words that don’t exist in any language, and that thus could only apply to the product. Well-known examples include “Kodak” for film, “Exxon” for petroleum, and “Pepsi” for soft drinks. The name is unique to the brand, making it difficult or impossible for audiences to confuse it with another brand. 

Arbitrary

An “arbitrary” trademark is a word or name that already exists. What is “arbitrary” is the application of that word or name to a product that isn’t related to the word’s meaning. “Apple” used as a trademark for computers and technology is arbitrary: the English language connects the word “apple” to fruits, not computers or smartphones. These trademarks stand out because the word doesn’t match its ordinary daily meaning when it’s applied to the product. “Caterpillar” brand heavy machinery is another example. 

Suggestive

A “suggestive” trademark implies some quality of the good or service, but it doesn’t directly state what the item is. One example of a suggestive trademark is the “Yankee Flipper” bird feeder, which includes a motorized, pressure-sensitive feeder bar. Birds don’t weigh enough to activate the bar when they land on it, but larger animals like squirrels will activate the bar, causing it to spin and “flip” the squirrel off the feeder. The name suggests the Yankee Flipper’s ability to deter squirrels from eating the bird food. 

In addition to making sure your trademark meets the fanciful, arbitrary, and suggestive criteria, the USPTO also recommends:

• Checking on translation. Make sure your trademark’s words or phrases don’t translate to an offensive or otherwise unwanted meaning in another language, especially if you plan to market your offerings in a place where that language is in common use.
• Avoiding mere descriptions. A word or phrase that merely describes the product is rarely a strong trademark. For instance, calling a potato chip brand “Crunchy” or a dress line “Women’s Clothes” creates a weak trademark. 

The name “Women’s Clothes” for a dress line is also an example of a generic trademark. The USPTO generally does not accept registrations for generic trademarks. Generic trademarks name the item, but they do not distinguish it from competitors. Thus, calling your dress line “Women’s Clothes” or your line of screwdrivers “Screwdrivers” will not qualify for trademark registration. (Calling your dress line “Screwdrivers” or your screwdrivers “Women’s Clothes” might qualify, however, as both names would be arbitrary.)

Can I Trademark a Creative Work or Design?

Trademarks often include creative elements. Shapes, fonts, colors, sounds, and words are chosen or created to convey a specific message. 

Since trademarks often include expressive and design elements, it can seem difficult to determine whether trademark law applies – or whether the work should be registered under copyright or design patent rules. 

U.S. copyright law covers creative or expressive works “fixed in a tangible medium of expression.” Copyright protection applies when a work is first fixed in a tangible medium. Like trademark protection, however, copyright protection is limited unless the work is registered. 

U.S. patent law protects inventions – both their useful elements and certain design elements, like the unique shape of the buttons on a vehicle’s radio. 

Trademarks protect a mark’s expressive, creative, or design elements as those elements apply in commerce. In some cases, trademark protection is enough to meet your business’s goals concerning its marks. In other instances, copyright or design patent protection may be part of a comprehensive intellectual property protection strategy. An experienced Irvine trademark, copyright, and patent lawyer can answer your questions and help you secure the proper protections. 

Talk to an Experienced Irvine Intellectual Property Attorney Today

Navigating intellectual property law can be challenging. With an experienced attorney on your side, you’ll have the advice and support to work smoothly through trademark registration, infringement claims, and other related issues. 

The dedicated team at Cohen IP has prosecuted and managed over 1,000 trademarks. These cases have raised a wide range of issues before the United States Patent and Trademark Office, giving our attorneys deep experience and a track record of success in protecting our trademark clients. 

For more information about trademarks and other forms of intellectual property, talk to the team at Cohen IP today. We offer strategic legal advice and focused trademark services.