Resources and Experience

Our trademark team has deep experience and resources.

• We can file applications on a same-day basis with the U.S. Patent and Trademark Office ("PTO").
• We maintain an electronic database of all of our clients' applied for and registered trademarks.
• We provide reminders of important, upcoming deadlines in the registration process as well as for registered trademarks.
• Our firm has submitted hundreds of trademark registration applications and coordinated numerous foreign trademark filings.

For more information, contact:

Dominic P. Madigan
804.775.3858
dmadigan@lawmh.com

What is a Trademark?

A trademark is a word, phrase or symbol used to identify the origin of goods or services. (Actually, a service mark applies to services, and a trademark applies to goods, but we'll call it a "trademark" for both goods and services for simplicity's sake.)

Generally, you gain common law rights to a trademark just by beginning to use it on goods in conjunction with performing services. Yet, these rights only extend to the geographic area of your use. Also, you must be the first in your area to use that trademark. If another entity began using a confusingly similar trademark for similar goods and services before you begin, then it may have superior rights to the trademark, thereby preventing you from using your trademark.

To become confident of your right to use your trademark, so that you do not infringe on the trademark rights of another, you should conduct trademark research. We can perform this service for you quickly and for effectively.

Furthermore as explained below, you can strengthen your trademark rights tremendously by registering it federally with the PTO.

Once you establish a valid trademark, you can prevent others from using a confusingly similar trademark for similar goods and services. You should do so in order to defend your trademark. We can assist with watching for infringers.

Frequently Asked Questions about Trademarks:

What Can Serve as a Trademark?

A trademark can be a name, a logo, a character, a domain name, a tagline, a sound, a color, or a shape. Famous trademarks include the golden arches used by McDonalds® and the curvy-shaped Coke® bottle.

My Company Has a Registered Corporate Name - Doesn't That Protect Me?

No. A corporate name issued by a state is not a trademark and does not create any trademark rights. Even "trade names" or "doing business as" names registered with a state or on the local level are not trademarks. Only a trademark allows you to prevent others from using a confusingly similar name for similar goods and services.

Why Federally Register a Trademark with the PTO?

Registering your trademark with the PTO creates many advantages for you:

• Registration can give you nationwide rights to your trademark. It reserves your right to use it across the country, so that you can push out most imitators as you roll out your products and services across the country or on the Web. On the other hand, if you rely on your common law rights, you may not be able to use your trademark elsewhere as you expand
• The registration process may uncover big problems with your choice of trademark that may be much more costly to address later. Companies have come to us too late -- after running into obstacles over using or registering trademarks - and after spending a lot of money building recognition in their trademarks. Usually these companies face a future without attractive trademark options and with high legal bills.
• Registration puts others on notice of your trademark allowing you access to a powerful set of remedies against infringers that you do not have without trademark registration.
• If you use your Web domain name also as a trademark, registration helps to protect against someone taking away your domain name in the future. It also prevents cybersquatters from registering, trafficking in or using an overly similar domain in bad faith.
• A registered trademark is more easily sold or licensed to other users than a common law trademark. If you ever intend to sell your business or product line, being able to convey solid trademark rights will be important to the prospective buyer.
• A registration helps create some very helpful presumptions about your trademark. If you have to go to court to stop someone from infringing on your trademark, a court will assume the validity of your trademark as a registered trademark - a major advantage.
• When no longer in use, a trademark may be abandoned and you may be able to deduct the value of the associated goodwill for tax purposes.

Why Perform Trademark Research Before Applying to Register a Trademark?

• The trademark research and clearance process that you undertake before registration can alert you to many problems that will be quite costly if discovered after you begin using the trademark. While you may spend money researching and registering a trademark, you can lose many times that initial expenditive if you are forced to cease using your trademark in the future by someone with superior rights.
• Failure to perform trademark research before using a trademark may expose you to greater damages should you infringe on someone else's trademark.

How to Choose a Prospective Trademark:

If Possible, Choose a Strong Trademark

A pecking order exists for the strength of trademarks. All other things being equal, choosing a trademark higher in the pecking order will allow you to keep your competitors further away from imitating your trademark:

• The strongest trademarks are fanciful trademarks, which are made-up words (for example, EXXON for gasoline).
• The next strongest trademarks are arbitrary trademarks, which are words that have nothing to do with the product or service (for example, AMAZON for book selling).
• The next strongest trademarks are suggestive trademarks - words that suggest but don't describe the goods or services (for example, CHAMPION for sporting goods).
• Next in the order of strength are descriptive trademarks - words that describe the goods or services (for example, US NEWS AND WORLD REPORT for a newsmagazine). Descriptive trademarks do not afford any trademark protection, and cannot be registered in the Principal Register of trademarks maintained by the PTO, unless you can prove that consumers recognize that trademark as identifying your goods or services. This is generally an expensive proposition.
• Next come generic trademarks - words that state what the goods or services are (for example, CAR for an automobile). You can never register a generic trademark and using it gives you no rights to stop others from using it too.

Don't Get Attached to a Trademark Too Soon

Often someone will come to us committed to using a particular trademark after having made a substantial investment in it. Sometimes that person unfortunately learns from us that the proposed trademark is weak, potentially infringing on the trademarks of others, or faces other serious legal obstacles.

If possible, come to us early with a short list of trademark candidates. We can advise you on the comparative strength of the trademarks and do preliminary research on your candidates in order to identify the best candidate for full trademark research and possible registration.

What We Can Do for You

McCandlish Holton has substantial trademarking experience at the international, federal and state levels. Our trademark services include:

• Trademark selection counseling.
• Preusage and preregistration trademark research and clearance.
• Registration with the PTO and state trademark offices.
• Web domain name protection.
• Coordination of foreign registrations.
• Post-registration trademark maintenance.
• Monitoring for potentially infringing federal trademark applications submitted by others.
• Infringement representation.
• Trademark licensing, assignment, franchise and merchandising agreements.
• Counseling regarding tax issues raised by trademark ownership and transfer.
• Web site audits.

Procedures for Registering a Trademark:

Preliminary Trademark Research

A preliminary search consists of consulting the PTO Internet database, checking the availability of a domain name with the domain name registry, and checking the corporate records of the State Corporation Commission if you will be forming a Virginia corporation or other entity (we can check other states too if you will be incorporating elsewhere). We prepare a short written report with analysis for your review.

We recommend conducting preliminary research first because it's a comparatively inexpensive way of finding the biggest obstacles to trademark usage and registration. Also, it's a good way to narrow down a list of candidate trademarks.

Trademark Research Report

Once a trademark clears the preliminary trademark availability analysis, the next step is to obtain a trademark research report from a commercial research service (such as Thomson CompuMark). We review the report and prepare a letter advising you on whether you likely can register the trademark and use it without infringing on the rights of others.

Trademark Registration Services

If a trademark clears the preliminary and research report stages, then we apply for registration of the trademark. In rush situations, we can prepare and file an application with same-day service, skipping temporarily over the trademark research stages if you so decide.

Comprehensive US Watching Service

Once you commit to using a trademark after conducting research to clear it, we recommend subscribing to a trademark watching service. Such a service will watch for potential infringement of your trademark. You should conduct such watching to preserve the power and potential fame of your trademark and to prevent others from encroaching on your trademark rights thereby damaging them.