Hunton Andrews Kurth’s trademark lawyers understand the strategic value of trademarks and the critical importance of thinking tactically about the complete life cycle of a mark within the context of each client’s business and legal goals. The team’s decades-long track record of success has shown that brand protection involves much more than just trademark registration, and we offer clients comprehensive services, including evaluation, selection, clearance, registration, licensing, enforcement and portfolio management. We partner with clients from the beginning of the branding process to evaluate the marketplace, register and protect marks, and ensure our clients establish their brands as revenue-generating assets that increase in value and add to their bottom line.
Members of our team understand that “one size does not fit all” in trademark matters and that different companies have different priorities and resources. The size and depth of our practice—more than twenty partners, associates and paralegals in multiple offices who focus their practices on trademark matters—allow us to tailor our trademark services to the unique needs of each client. Our approach to trademark management and protection has garnered significant praise from rankings organizations and publications such as Chambers USA, The Legal 500 United States and Managing Intellectual Property, which consistently recognize the firm in the top tiers of leading trademark firms. CSC® Trademark Insider® has recognized us as one of the top 30 firms by the number of USPTO trademark filings and Thomson Reuters recognizes our firm as a leader in trademark opinion work, rendering more opinions and doing more than four times as many online searches than any other firm in the United States. More significantly, our work has resulted in strong, defensible trademarks and brands for clients that generate revenue and help define their corporate identities.
Selection and Clearance
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.
Our lawyers guide clients in the selection of trademarks that will be strong, registrable and enforceable, and that will avoid disputes with other trademark owners. We advise clients on the availability of marks, conducting our own searches and reviews and conducting outside searches using sophisticated tools. Our lawyers provide solutions to overcome existing marks or other issues, including advice on when to change a mark or to acquire an existing mark owned by another entity. We employ a sophisticated strategy for evaluating the availability of proposed marks and titles, identifying potentially problematic third-party references as early as possible. For cost efficiencies, our paralegals, with the supervision of a lawyer, handle most of the trademark clearances. For broader international searching and investigation, we rely on our expansive international network of attorneys and agents.
We assist clients in registering their trademarks in the US Patent & Trademark Office, in state trademark offices, in foreign countries, in the European Community and using the Madrid Protocol. On behalf of hundreds of different clients, we have prepared and filed thousands of successful applications to register trademarks and service marks domestically with the US Patent and Trademark Office and with international tribunals. These include applications to register typed wordmarks, stylized print marks, slogans, design marks, color marks, trade dress and packaging configurations, as well as US applications with priority based on foreign applications or registrations.
We handle all aspects of the trademark registration process for many of our clients, including analyzing and responding to PTO office actions and other PTO communications. On behalf of our clients, we have responded to hundreds of office actions in recent years, helping them overcome a variety of PTO refusals, including those based on an alleged likelihood of confusion, mere descriptiveness, improper identifications of goods and services and improper specimens of use.
Our skilled 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. Lawyers and clients are supported by experienced and technologically savvy trademark paralegals, allowing us to prosecute trademark applications efficiently and cost-effectively.
As an integral part of a full-service intellectual property practice and international law firm, the firm’s trademark lawyers offer clients access to significant resources for portfolio management and maintenance. We manage trademark portfolios for hundreds of clients, totaling thousands of marks in nearly 200 countries around the world. Through our sophisticated trademark management system, we track prosecution and maintenance deadline dates for thousands of domestic and international trademarks for a diverse clientele. Lawyers and dedicated paralegals assist clients in maintaining their trademark registrations in the United States and worldwide, using sophisticated docket management software. We report upcoming deadlines to clients in a customized manner, follow up when necessary and ensure that maintenance filings are timely made. 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 work closely with clients to 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 ensure that trademark owners are presenting their marks consistently, are using proper trademark notice and are not using marks in a descriptive or generic manner.