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Trademark

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Your business uses a name, logo, brand or other image to help your clients and customers distinguish your business, goods and services from the crowd. Effectively choosing and maintaining your trademarks and preventing others from piggybacking on your success will help keep your business one step ahead of the competition.  Our assistance to you begins at square one, with the necessary guidance to help you choose the most protectable marks for your business. We can also search for possible competing marks to determine the most effective way to register your mark and to avoid pitfalls of infringement. We continue to the federal registration process to secure the marks for your continued, unfettered use. At all times, we provide thorough advice and guidance on an appropriate branding and use strategy to maximize the efficacy and protectability of your marks as you use them in your day-to-day business to identify your goods and services to others.

What is trademark protection?

Generally speaking, a trademark is a word, symbol, or phrase, used to identify a particular manufacturer or seller’s products to build that seller’s brand and distinguish them from the products and services of others. Trademark protection functions as a source identifier to assist consumers and hold manufacturers and seller accountable for the quality of their goods and services, and is an integral part of establishing and protecting your brand.

Can I protect my product's packaging?

In some cases, trademark protection can extend beyond the words, symbols and phrases to include a product’s color or its packaging–known as “trade dress.”  The trade dress of a seller or manufacturer’s product or services may be protectable if it can be demonstrated that consumers associate specific features with a particular source rather than the product or services generally, though there are other limitations that apply.

What characteristics must a protectable trademark have?

The trademark must be distinctive, meaning it must be capable of functioning as a source identify of the particular good or service with which it is used.  There is a spectrum of “distinctiveness” that applies to trademarks ranging in descending order of distinctiveness from fanciful, arbitrary, suggestive, descriptive, and generic.  Descriptive and generic marks are not granted trademark protection, though descriptive marks can acquire distinctiveness if they achieve secondary meaning in the marketplace.  Let us help you determine where you mark falls on the spectrum, and assist you in re-branding your mark to give you the best chance at federal registration of your mark.

Do I have to register my trademark?

Trademark receive some protection simply by use.  At common law, the owner of the mark is afforded limited protection in the geographical area in which the owner uses the mark in commerce in connection with the goods and services with which it is associated as long as the owner is the first to use the mark in commerce.  If, for example, the owner of a mark only uses the mark in commerce in connection with the specific goods and services in Virginia, the owner would only have rights to use of the mark in Virginia.

Why should I register my trademark?

Registration of a mark is not required, but generally is highly advisable as it affords a number of benefits to the registrant.  Registration of a mark at the federal level gives that individual or entity the right to use the mark nationwide, subject only to an individual or entity with common law rights in a the same or a confusingly similar mark for which that common law rights owner can demonstrate  that it was using the mark in commerce before the federal registrant’s use or registration.  Registration allows a party to potentially recover treble damages, attorneys fees, and other remedies provided for by statute.

Can a trademark be lost?

The owner of a mark can lose a trademark in various ways, which is why it is important to protect and maintain your brand and associated marks.  Generally speaking, the rights to a trademark can be lost through abandonment, improper licensing or assignment, or through genericide.  Abandonment can happen in the event of non-use for three consecutive years which constitutes prima facie evidence of abandonment; however, a mark is abandoned when its use is discontinued with an intent not to resume its use, which can be inferred from the circumstances.  Improper licensing or assignment demonstrates a failure to police the use of the mark, which is a common way to inadvertently abandon a mark.  We can help ensure that you properly protect your mark and the goodwill you have spent time, money and resources to develop.
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