Trademarks identify a business' unique goods or services, and prevent others from free riding on the hard work that businesses have put into making themselves stand out in the marketplace. California trademark registration can be highly useful and valuable for new businesses, businesses that do not expect to operate outside of California, and those that are not eligible for federal trademark protection, such as the many new cannabis businesses throughout the state.
California trademarks are much more economical, too. A single category registration in California costs $70, and $30 to renew every five years. In contrast, federal trademarks cost at least $225 to file (and often more), and require hundreds of dollars of maintenance fees over the life of the mark.
Gaining trademark protection under California law takes research and persistence, but the protections and legal remedies that a registered trademark offer usually make it worthwhile for business owners.
TL;DR (Too Long; Didn't Read)
Look in the United States Patent and Trademark Office's Trademark Electronic Search System, or TESS, database, and ask the California Secretary of State to search for your hoped-for trademark. Don’t forget to search online and in domain name registries, too.
Trademarks Protect Business Investments
From a business owner’s point of view, trademarks prevent competitors from getting a free ride on the goodwill that she has spent time, money and effort building. With a valid trademark, owners can:
- Take infringers to court and stop their use of the valid trademark;
- Seek damages (money) for lost profits and compensation for damage inflicted on the value of the trademark; and
- Seek destruction of infringing or counterfeit goods, in some cases.
State Law v. Federal Law Protections
Federal trademark law does give more protection to trademark owners than does California trademark law. The owner of a registered federal trademark immediately has an enforceable trademark in all 50 states plus the territories of the U.S. Plus, federal law usually offers more remedies to wronged business owners whose trademark has been infringed.
That doesn’t mean that, if you cannot get federal registration, you are without trademark protection. Each state, including California, allows for registration of trademarks for use within the state. That trademark is valid only in the state, but for businesses that do not anticipate operating outside state borders, it is an option.
Registering a trademark solely in California is much less expensive than a federal trademark registration. Federal trademark registration costs between $225 to $400 per category of goods or services, while California trademark registration costs $70 per category.
Beginning the Trademark Search Process
The first step in registering a trademark in California is finding out if that mark is already registered. If the mark you want is already registered in the class of goods or service in which you are applying, then you will be denied registration. If you use the mark – whether or not you knew it existed – you could also be on the hook for paying expensive damages to the trademark owner.
A “class of goods” is a category of the type of product or service your business offers. California trademark classification codes are the same classes of goods that federal law uses. The list of classifications is on the USPTO website.
Think of a class as a group of closely related goods and services. For example, Class 41 relates to education, providing of training, entertainment, and sporting and cultural activities. While many products and services can fall under this umbrella, they share a common thread of educating and entertaining people.
Special Library Resources
If you happen to live near a Patent and Trademark Resource Center (PTRC), you can search there for federal registrations, too.
These libraries have access to the TESS database, where all federal trademark registrations are stored. You can also search for pending trademark registrations, which are harder to find, but obviously very important to know about.
The staff at these libraries are trained in helping patrons search for similar-sounding or similar-looking marks. While those tools are available on the USPTO site, they are much easier to use once you’ve been taught how to use them. PTRCs also offer search tools that the trademark examiners use, which are not available on the PTO website.
California has six PTRCs, located mostly in the northern and southern parts of the state. If you live in or near Los Angeles, Riverside, Sacramento, San Diego, San Francisco or San Jose, you could benefit from a trip to the PTRC to assist you in your search.
Hiring a Firm for a California Trademark Search
Conducting a California trademark search is not as easy as you might expect. Unlike federally registered trademarks, California registered trademarks are not searchable online. But there are several ways to get the information you need.
The simplest way to search for a California trademark is to hire a professional search firm. These are companies that, for a fee, will do the legwork for you. These firms subscribe to annual (or more frequent) trademark registration updates from the California Secretary of State’s office. They maintain their own databases of California trademarks.
An online search for “California trademark search” will turn up many possible search firms. Their rates range from $0 to $200 and up. Before you hand over your payment, be sure the firm searches California trademark registrations, along with federal registrations. If you don’t see a specific mention of state searches on a search firm website, be sure to ask if they have the ability to search for California trademarks. If they don’t clearly say they do, keep looking.
Also, ask how often the firm gets updates from the California Secretary of State’s office, and when it received its latest update. If the firm does not subscribe to frequent updates, it could do a search for you that isn’t complete or helpful. Without frequent updates of its database, a search firm could miss a recent application or registration for the same or very similar mark that you want, but you wouldn’t know it. Then, you could be in a position of having paid for a search, plus the state filing fee, but still not be able to register your trademark.
As always when dealing with unfamiliar online businesses, it’s wise to look for reviews of the search firms you are considering hiring, even the free ones.
Searching the Secretary of State Trademark Database
Another option for conducting a California trademark search is to contact the California Secretary of State’s office. The Trademark and Service Mark office there will accept requests for up to two searches over the phone, per call.
Those who need more than two searches can submit each search request via the email form on the Secretary of State’s website. Or, you can go to the office in Sacramento, and get help in person. There are no limits on the number of searches you can request via email and in person.
It can be wise to search for your hopeful mark in all classes, regardless of what class you wish to register in. Trademark law offers protection for registered marks not only in their class of registration, but also for the “zone of natural expansion.” That means that a trademark registered in Class 25, Apparel and clothing, will very likely receive protection in Class 18, which covers Leather goods. It’s reasonable to think that a clothing manufacturer would naturally expand into items like leather jackets and boots, for example.
On the flip side, a mark registered in Class 2, Paints, varnishes and lacquers, would likely not benefit from zone of natural expansion protection in Class 10, Surgical, medical, dental and veterinary apparatus and instruments.
Along with a search of California trademarks, you will need to search the federal trademarks database, known as TESS. While it may seem odd that you need to search the federal database, here’s why: The California Secretary of State’s office will search both the California trademark registration database, and the federal database, to see whether your trademark can be registered. Because federal trademarks are valid in all 50 states, including California, it would be senseless to register a trademark that is already granted to someone else for use in all 50 states, or is very similar to a federal trademark.
Searching Registered Business Names for Trademarks
Another important step in your California trademark search is checking with the business name registry, also maintained by the California Secretary of State. There are a few strategies and methods you can use for these types of searches.
A simple Business Search on the Secretary of State’s website can give information about all corporations, LLCs, and non-profit companies that have information on file with the state. This search database does not check any trademark information; it will tell you what businesses have filed business organization papers, corporate minutes, abstracts of stock information, and similar corporate documents. The search is free, and available on the Secretary of State's website.
Checking the Business Name Availability registry can alert you to other businesses that may be about to launch. Companies use the Name Availability search to see if their desired corporate name is available to register.
This search also does not check against any trademark databases. The search is only for those business names on file or reserved with the Secretary of State. This search can only be requested via regular mail; no email or online search is available. Mailed requests are free, but obviously take time.
The Secretary of State also offers a Prepay Priority Telephone Service to check for business name availability. Account holders must first deposit $100 with the office; after that, each phone request search costs $4. If you need quick answers, this may be money worth spending.
Search Strategies Using Online Resources
Online searching is another strategy for discovering whether your hopeful mark is already being used by someone else. Be sure to search not only the exact mark you want to register, but also similar names. Look for plurals, non-standard spellings and homophones (sound-alike words), for example. Don’t forget about slang and word plays, too.
Search using at least two of the three main search engines, Google, Bing and Yahoo. Be sure to look at the first several pages of results, not just the first page of those results.
Consult news services, such as Nexis or PR Newswire. Search business databases such as Dun & Bradstreet. Many times, fee-based services like Nexis or Dun & Bradstreet can be accessed via your local library for free.
Telephone directories, such as AnyWho, can help find small businesses that may not have a web presence. Check industry publications and directories, as well.
Using Domain Names to Search
One final strategy for uncovering trademarks similar to your hopeful mark is to search the WHOIS database, where every domain name that is registered can be found.
Searches in WHOIS should be similar to those for a general online search—similar-sounding, similar-looking, and similar spelling to your hopeful mark.
Be aware that there are more than 1,500 top-level domains available, such as .ninja, .fun and .shop, in addition to the more common .com, .org and .net. Don’t despair at needing to search every domain, though. More than 50 of those 1,500 domains are non-English, and even the English language sites are based in countries like Great Britain, Australia and New Zealand. Plus, another very large chunk of domains are for existing, large trademark owners, like .target and .walmart.
The domains to search are those dedicated to your industry, or an industry segment that operates in close proximity, such as laundry detergent and laundromats. If you are unsure what business segment the domain serves, you can check that on most domain name registrar pages.
The key to good searching is persistence and thoroughness. If you need motivation, keep in mind that ignorance of a similar trademark’s existence will not save you from damages, if it comes to filing lawsuits.
- Justia: California Business & Professions Code,Trademark Law
- U.S.Patent & Trademark Office: Nice Agreement including International Classifications
- U.S. Patent & Trademark Office: Trademark Electronic Search System (TESS)
- U.S. Patent & Trademark Office: Patent and Trademark Resource Centers
- California Secretary of State: Business Search
- California Secretary of State: Trademarks and Service Marks
- ICANN: New Generic Top-Level Domains
- NameCheap: New Top-Level Domain registration
- AnyWho White Pages
- Whois database
- The US Acceptable Identification of Goods and Services Manual
- Trademark Manual of Examining Procedure
- United States Patent and Trademark Office: Design Code Manual
- United States Patent and Trademark Office: Trademark Electronic Search System
- United States Patent and Trademark Office: Trademark Applications and Registrations Retrieval