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Biotech Beach Law Group, PC
(619) 238-1179

Patent and Trademark Attorneys

Intellectual Property Law


Experienced and Affordable IP Protection

Introduction to Trademarks - "TM" vs. ®

Biotech Beach Law trademark attorney

A Trademark is a distinctive word, name, symbol or device that indicates the source of goods. Similarly a Service Mark is used to indicate the source of a service. In other words, trademarks allow businesses to identify its goods and servces from others. Trademark protection may be available for your company's brandname, catch phrase, logo, symbol, design, image or website domain name.

By merely adding a "TM" or a "SM" in your everyday use, you may already be asserting your common law Trademark rights. Common law rights are typically limited to geographical use. So if you mark your product with a "TM" and only sell in San Diego, the mark may or may not be protectable San Francisco. However, a "TM" or "SM" may assist you in preventing others from using your Mark within your region of use.

A Federally Registered Trademark is signified by a "®" and provides protection nationwide. To qualify for a registered trademark the mark has to be used in interstate commerce. A Federally Registered Trademark results in a greater variety of remedies for enforcement than a common law trademark. Some advantages to a Federally Registered Trademark are that a Registered Trademark:

  • Provides access to federal courts
  • Allows for the collection of money damage$
  • Provides constructive prior use in actions

Trademark Applications

Our trademark service begins with a discussion of what products or services are to be associated with the mark. The trademark attorney researches the appropriate class(es) and provides a recomendation. Depending on your current and future plans, we can prepare:

  • Use based trademark application
  • Intent to use trademark application
  • Madrid Protocol (international) trademark application

The attorney will also indicate how to use the trademark while it is pending with the U.S. Trademark Office and will provide suggestions of appropriate specimens to demonstrate use.

Trademark Examination

Trademark Applications are reviewed according to statutory requirements. The Trademark Examining Attorney will frequently reject a Mark over one or more of these statutory requirements. Rejections are provided in Office Actions. The rejections may include:

  • The mark is merely descriptive
  • The mark is generic
  • The mark is geographically descriptive
  • Others. . .

Responses can be provided to the examining attorney's evaluation. Our Attorneys can can evaluate a trademark application, provide suggested arguments or counter arguments to the Examining Attorney's position and can prepare a Response to a variety of rejections.

Trademark Search

While considering one or more potential trademarks, it is often a good idea to have a trademark search conducted. Although the Applicant is not required to search prior trademarks before applying for a federal trademark, it can be cost effective in the long run. For instance, a trademark search may:

  • Determine whether the desired trademark is already federally registered
  • Determine whether the there is a pending trademark application for the same mark
  • Identify the current classes of goods or services with federally registered or pending trademarks
  • Identify whether there is a mark that is confusingly similar to the desired mark

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Biotech Beach Law Group PC
5677 Oberlin Dr, Ste 204
San Diego, CA 92121

Phone: (858) 587-2510
Toll Free: (866) 875-9562
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The materials provided within this website are for general information and educational use only. No attorney-client privilege is established by visiting this web site. These materials should not be construed as legal advice. You should discuss your specific facts with a licensed attorney.