Trademark Counseling and Litigation

Trademark Counseling and Litigation

Protecting Brand Equity

A trademark can be a company's most valuable and long-lived asset. But if a company fails to exercise sufficient care in selecting and clearing a mark, then the brand that it seeks to build its business around may be weak and difficult to enforce, and may even subject the company to infringement claims from other parties. In addition, a once-powerful trademark can be weakened or even lost if the owner uses the mark incorrectly, licenses it improperly, or fails to police or enforce it.

Hunton & Williams LLP's trademark lawyers understand the value of trademarks and the importance of thinking strategically about them throughout the trademark "life cycle," from selection to registration to maintenance to enforcement. We also understand that "one size does not fit all" in trademark matters, and that different companies have different priorities and resources in this area. The size and depth of our practice — twenty partners, associates, and paralegals in multiple offices who focus their practices on trademark matters — allow us to tailor our trademark services to the needs of each client in a way that is not only effective, but also cost-effective.

Perhaps this is why our clients and peers have consistently selected our trademark lawyers as leaders in their field in such publications as Chambers USA, Benchmark Guide to America's Leading Lawyers for Business, Legal 500, Super Lawyers®, The Best Lawyers In America® and IP Law & Business magazine. It is also why clients — from start-ups to the Fortune 100 — have called on us to assist them in significant trademark matters, including: U.S. and international clearance and registration for company-wide name changes; maintenance of large U.S. and international trademark portfolios; strategies for protecting non-traditional brand identifiers, such as product configurations and packaging; negotiation of standard and non-standard trademark licenses and transactions; and representation in trademark and domain name disputes, in the federal courts, in the Trademark Trial and Appeal Board, in UDRP proceedings, and in private and court-sponsored alternative dispute resolution.

Selection and Clearance
A trademark that is overly descriptive of goods or services may be weak, difficult to register, and difficult to enforce. And a trademark that is too similar to others’ prior marks could result in demand letters, litigation, injunctions, and damages. We guide clients in selecting trademarks that will be strong, registrable, and enforceable, and that will avoid disputes with other trademark owners. And we assess prospective trademarks for our clients in an understandable and cost-effective manner, using experienced trademark paralegals where appropriate, taking advantage of volume discounts with the major trademark search vendors, using investigators where appropriate, working with our network of foreign agents for international searches and clearance, and communicating search results and our assessments in a manner tailored to the needs of each client.

We assist clients in registering their trademarks in the U.S. Patent & Trademark Office, in state trademark offices, in foreign countries, in the European Community, and using the Madrid Protocol. Our experienced and technologically-savvy trademark paralegals allow us to prosecute trademark applications efficiently, saving costs by using electronic filing and other means. And our experienced lawyers use their knowledge of trademark principles, PTO practices, and PTO Examining Attorneys to address office actions and other issues when they arise during the registration process — including through requests for reconsideration and appeals to the Trademark Trial and Appeal Board where appropriate.

Portfolio Management
Trademark registrations can be canceled if maintenance filings are not timely made and filing deadlines can be five or ten years apart. We assist numerous clients in maintaining their trademark registrations in the U.S. and worldwide, using sophisticated docket management software administered by skilled trademark paralegals and our network of foreign trademark agents. We report upcoming deadlines to clients in a customized manner that works best for each one, we follow up when necessary, and we ensure that maintenance filings are timely made. We manage trademark portfolios for hundreds of clients, totaling over 4,000 marks in over 100 countries around the world. Our trademark docketing system also allows us to efficiently provide trademark information to our clients for various business purposes, such as mergers, acquisitions, and security agreements.

We also help clients use their marks in a manner that will prevent unintentional loss or weakening of trademark rights. We audit and review websites, advertising materials, and other communications to make sure that trademark owners are presenting their marks consistently, are using proper trademark notice, and are not using marks in a descriptive or generic manner.

Licensing and Transactions
Many of our clients obtain value by licensing their trademarks to others, by licensing others' trademarks for their own use, or by selling or buying trademarks. We help clients in structuring these transactions, in drafting appropriate agreements, and in negotiating the deals. We have drafted and negotiated numerous trademark agreements, from straightforward assignments and licenses to co-branding agreements, private label agreements, assignments and licenses back, security agreements, coexistence agreements, and concurrent use agreements. Where appropriate, we work with our colleagues from other practice areas, such as our bankruptcy and creditors’ rights attorneys, to address or anticipate special issues, such as bankruptcy or potential bankruptcy for licensors or licensees. We also work with our transactional attorneys in the trademark due diligence aspects of mergers, acquisitions, asset sales, and other transactions. And we do trademark deals across a range of industries, such as food and beverage, gaming, energy, banking, healthcare, and airlines.

Trademark owners can lose profits, goodwill, and even their trademark rights if they cannot effectively enforce those rights. We assist our clients in policing their trademark rights, using watching services and investigators where appropriate. We also assist our clients when they are the targets of enforcement efforts by other parties. Our goal is to resolve trademark disputes efficiently, using demand letters, response letters, and negotiation to reach positive business solutions. When trademark issues cannot be resolved in this manner, however, we use our experience and resources to represent our clients effectively in a variety of forums.

We have represented trademark plaintiffs and defendants in numerous federal courts around the country, in cases involving federal (and state) claims of trademark infringement, trade dress infringement, unfair competition, dilution, and cybersquatting. We have helped those clients obtain (and defeat) TROs and preliminary injunctions, win on summary judgment, prevail in bench and jury trials, and get district court decisions upheld (and overturned) in the U.S. courts of appeal. We help position our clients to succeed in litigation by using survey experts, marketing experts, and damages experts where appropriate, by using litigation technology, and by staying ahead of the game in discovery and motions practice.

Opposition and Cancellation Proceedings
We have also represented clients in hundreds of opposition and cancellation proceedings before the U.S. Patent and Trademark Office's Trademark Trial and Appeal Board, obtaining favorable decisions and settlements while managing the process to minimize expenses where possible.

UDRP Proceedings
When cybersquatters and others register domain names that infringe or misappropriate our clients' trademarks, and federal court litigation is not the most strategic option, we have brought domain name arbitration proceedings against those infringers using ICANN's Uniform Dispute Resolution Policy. In many cases, our knowledge of UDRP procedures and dispute resolution providers has allowed us to quickly and efficiently obtain orders transferring the hijacked or infringing domain names to our clients.