These frequently-asked questions (FAQ's) are intended to provide business owners, managers and in-house counsel with general information about the legal aspects of their business, so they may better understand and work with an intellectual property attorney.

These FAQ's are not legal advice. You should consult an attorney for legal advice if you have questions about your particular situation.

We have selected a new name for our product or business. Should we have a trademark search performed before we start using it?

Yes. A trademark search can save you time and money by avoiding trademark conflicts. Many businesses have selected a great new name, only to find on the eve of their business or product launch -- and after they have printed packaging and marketing materials and/or bought advertising -- that the name is owned by someone else who is threatening to sue for trademark infringement.

To do a very basic search for your exact trademark, you can try the United States Patent and Trademark Office website at www.uspto.gov. Click on "Trademarks," then "Search," and then "New User Form Search."

Keep in mind that your search will find only exact matches for your trademark among federal trademark applications and registrations. There may be other marks that could prohibit use of your proposed trademark, such as state trademark registrations, unregistered trademarks, and trademarks that may be similar in appearance, sound or meaning but that are not exactly the same.

You can also perform a detailed search on internet search engines such as Google.  Internet searches can often reveal conflicting trademarks immediately, without legal fees.

We have discovered that a competitor has filed a U.S. trademark application for a very similar trademark to ours. We want to stop this competitor, but our budget for trademark enforcement has been cut. What do you suggest?

In prioritizing enforcement, it is important to remember that trademarks are a long-term investment.  It takes years or decades to build a brand.  Consistent enforcement is key, and enforcement of trademark rights, from time to time, is simply part of the investment. Once built though, a brand can be enormously valuable.

The second point is to consider the importance of the mark. Is this a "bet the company" type of situation? A serious infringement of your company's well-known and most important brand?  Is actual confusion occurring?  Or does this merely involve a minor mark for your sideline product that isn't doing very well anyway? This will guide the level of resources you want to devote to this problem.

Finally, it may be possible to use the trademark opposition procedure, mediation and/or businessperson-to-businessperson contact to help resolve the matter.  These are significantly less expensive than pursuing a lawsuit through trial.

We are going to be launching a new product soon, and we want to pick up some key domain names related to the new product before doing anything else. We want to do this in-house before doing any kind of trademark searching. What's the best tool to use to search for these domain names and variations?

While you can visit any domain name registrar such as Godaddy, it may also be helpful to visit the Domain Tools site. This site contains a tool that lists the status of various top-level domains for your chosen words, and it may help you select another related domain name if your first choice is not available. Go to www.domaintools.com, and click on "Domain Search."

If you search for a domain name and think you might want it, you should try to purchase it immediately. Some businesses have apparently figured out a way to monitor traffic to domain name registrar sites. If you look up a domain name but do not purchase it, and then go back later to purchase that name, you may find that it has suddenly been registered by one of these companies who would be happy to sell it to you for hundreds of dollars.

Our business is doing well, and there is demand for our product in other countries. Do we have trademark rights in those countries if we register our mark in the United States?

No.  With the notable exception of the European Union's Community Trademark registration that can give you trademark rights in all European Union countries, trademark rights are generally obtained on a country-by-country basis. Unfortunately, this means that it is necessary to do a clearance search and file for a trademark registration in each country in which you plan to do business before expanding into that country.

We have been using a trademark overseas for a while, but we don't have a trademark registration in those countries. Now someone else is using our mark there. Do we have "common law" trademark rights to it?

Companies can establish widespread trademark rights in the United States simply through use of a trademark (without a registration), but this is not the case in most other countries. Most countries operate on a "first-to-file" system, meaning that the first party to file for a trademark application is granted exclusive rights to it.  It is occasionally possible to claim some trademark rights based on use even in ostensibly first-to-file countries though. It would be advisable to retain counsel in the relevant countries to advise you on your specific situation.

Should we use the Madrid Protocol system to file international trademark applications ourselves, rather than using your firm? Our budget for outside counsel is limited.

The Madrid Protocol system offers a significant cost savings for filing foreign trademark applications compared to using overseas counsel in each country to file such applications. It is subject to some significant limitations that must be considered though. These can include required use of the relatively limited U.S. goods and services description, dependence of the foreign applications upon the success and validity of the underlying U.S. registration, and the difficulty in getting status updates on the foreign applications. Depending on the status of the U.S. registration/application and the importance of the mark, the Madrid Protocol does not make sense for all clients. Nonetheless, the upfront cost savings are so compelling that it is often used for foreign trademark filings.

For smaller businesses in Washington:  We registered a "trade name" with the Washington Secretary of State.  Do we have all rights to use that name now?

No.  The very confusingly-named "trade name" registration does not give you any legal rights to use your name or trademark, or the right to stop others from using it.  A "trademark" registration is necessary to do that.

We sometimes get invoices referring to our trademarks from the United States Protection Agency, United States Trademark Watching Administration and other bodies with important-sounding names. They look rather like junk mail though. What are these notices?

They are junk mail.  The invoices may have official-sounding names or display public information about your trademark registration, but the only official notices regarding your U.S. trademark registration will come either from the United States Patent & Trademark Office or your attorney.

© 2008-2009 Wright Law PLLC. All rights reserved.