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Porter Law Group
Bulletin Newsletter
October 2016
Construction Forms

Trademarks and Service Marks: An Often Overlooked Method of Business Asset Protection

One of the most overlooked methods of asset protection for small businesses is found in the registration of trademarks and service marks with the United States Patent and Trademark Office (“USPTO”). Many business owners might presume that their legal rights are fully protected by the mere use of their business name for years. After all, if you’ve been using the name for decades without issue, no one can suddenly come along and force you to stop using the name, right? Well...not necessarily.

You’re probably asking yourself: “Do I have to register a trademark/service mark in order to have any legal rights in my business’ name? If I don’t have to, then why should I?” And finally, “If I do decide to proceed with registering, how much is this going to cost me?”

Below is a brief overview of some of the important benefits of trademark/service mark registration and why it is recommended that you hire professional assistance to help you with the process as an initial matter and into the future.

Benefits:

According to the USPTO, “although federal registration of a mark is not mandatory, it has several advantages, including notice to the public of the registrant's claim of ownership of the mark, legal presumption of ownership nationwide, and exclusive right to use the mark on or in connection with the goods/services listed in the registration.”

What this means in a very basic sense is that federal registration gives you an advantage, especially if another business is using your mark or a mark that is very similar to yours. A trademark/service mark is often times a business’ most valuable asset. Just like any worthwhile investment, taking a proactive approach in protecting your legal rights can yield substantial dividends in the future.

How We Can Help:

Prior to using a mark, a thorough trademark/service mark search should be conducted to assess the availability of the preferred mark. Beyond that, there are numerous other fundamental considerations that applicants need to be mindful of when selecting a trademark/service mark that can be both federally registered and legally protected. It’s also worth considering whether a state registration is appropriate. Every situation differs, so it’s important to consult an attorney who is familiar with trademark practice to ensure peace of mind and rest assured that what you’re doing is what’s best for your business.

Our office can assist you before, during, and after the trademark application process. This tends to help shorten the overall registration process, helps to avoid difficulties along the way, increase your likelihood of obtaining a registration, and help you police and enforce the trademark rights.

Selecting a mark is one of the most crucial steps in establishing a brand for your business. It's the most visible aspect of your company and it represents the intangible value created by your dedication and hard work. You want to be sure that it’s done correctly. Though there are many reasons why registration may ultimately be refused, hiring an attorney will help you avoid and overcome many potential pitfalls. As part of our service, we will conduct a “pre-filing mark clearance” search for you, as navigating the USPTO’s database can be tricky and the USPTO will not advise you as to whether a particular mark or type of mark is eligible for federal registration. Final approval of trademark or service mark will require a complete legal review of your application ahead of time. Also, it is very common for the USPTO to require a formal response from the applicant before the Office decides whether to allow registration of your mark.

We have assisted numerous clients, including nonprofit organizations and trade associations, in the selection and clearance of their trademarks. The filing fees start at $225 per application and can go up from there depending on the circumstances. Many law firms have a set price for the general trademark filing process with an hourly fee for continued/additional services. For more information about how our trademark services can assist you or your company, please email us at: bhaefele@porterlaw.com or call (916) 381-7868.

info@porterlaw.com
Tel 916-381-7868 Fax 916-381-7880
7801 Folsom Boulevard, Suite 101 Sacramento, California 95826

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