I run a marketing agency and I’m thinking about trademarking my company name. I also have a client who wants to file a few trademarks or an intent to use. The trademarks don’t seem too complicated, though one includes a logo. I’d love some recommendations for attorneys or firms in California—preferably smaller, more personal ones than the big firms.
I do know a few good firms here, but I’ll start with a quick note. My trademark professor always used to say: “Trademark is not a verb!” He’d probably be turning in his grave if he saw how often we say things like, “Let’s trademark this.” But here’s the deal—trademark rights come from actual use, not just filing paperwork. To earn trademark rights, you need to use it as a trademark.
For example, putting your logo on a T-shirt for decoration? That’s not trademark use. It’s ornamental. Real trademark use happens when it’s on things like invoices, storefront signs, or labels on products. Remember when brick-and-mortar stores used to be everywhere? That’s the kind of trademark use I’m talking about.
As for intent-to-use applications, that’s a good route if you’re not yet using it in commerce. You get six months, with possible extensions up to three years, to start using it before you need to prove that you’re actively using the trademark.
But here’s the first thing you need to do before filing for registration: a proper search. Some people call it a “knockout” search, and that’s a step beyond just Googling the name. Doing your own online search is a fine place to start, but you’ll want a competitive analysis of the trademark. You need to know who else is using it or something similar. Even if you sell bike horns, you need to check if someone else is selling snow tires with the same or a similar name.
Don’t spend money on anything—like wraps for your delivery van—until you’re sure the trademark you’re thinking of is one you can actually keep. Understand the competitive landscape before you commit to anything.