Contact for free initial consultation:
mark@wisnoskylaw.com or phone: 858 663 7794

What is a trademark?

Choosing the mark.

The Process.

Trademarks

What is a trademark?

A trademark is a word, symbol or even a sound that helps consumers know the source of goods or services. It is intended to uniquely point to the source of the goods or services. It is not intended to describe the goods, only to indicate who makes them.

Trademarks are how you are known in your particular field of business. Just like your personal reputation they can be hugely valuable and should be protected. Consumer buying decisions are almost always based at least partially on brand. A well-developed and protected trademark can be used not just to influence your direct buyers but with appropriate controls can be licensed to others for a profit.

Our firm provides expertise in the registration process as well as licensing the brand to others.

Choosing the mark.

With the purpose in mind the mark you choose should not be similar to someone else’s mark, especially if they are in the same market. It is possible to have the same trademark registered in two different markets. Apple is the famous example of registration in two markets (electronic consumer goods and music publishing) and the conflict that happens when the companies enter the same market. A mark should also not simply describe your goods. Marks that are "merely descriptive" will be rejected. The strongest, easiest to register, marks are those that are nonsense words. The drug industry is the best practitioner of selecting nonsense words for their products.

The Process.

The registration process is straightforward and can be pretty simple. You first pick a candidate mark and then call me to discuss whether it might rejected as being merely descriptive. If we decide to proceed, I execute a search for the mark to see if it is similar to those already registered or applied for. You, too, can perform a search using Google (R) or other search engines as well as at the USPTO.gov site. If no other marks are found and we agree the mark is acceptable, I file an application. The Trademark office will take 3 to 6 months to respond with either an approval to proceed or a rejection. Most rejections occur either because a similar mark was found or the examiner thinks the mark is merely descriptive. We can make arguments as to why they are wrong to try to change their mind. Selecting the appropriate mark to register and preparing responses to the office actions are primary responsibilities of the trademark attorney. Once past the office action phase the mark is published to see if there are any other businesses or people who claim they would be harmed if the mark were registered. After publication and assuming no oppositions to the mark are registered, the process takes about 1 year in total. Office actions and handling oppositions can extend this time considerably. A well-chosen mark can save time and money down the line. Your application is visible to others within about 48 hours of filing an application. Marks must be periodically renewed but can remain registered forever as long as they are still used in the business.