Trademark Law


ELO’s trademark practice provides a comprehensive range of services for clients, including brand counseling, trademark strategy, clearance of marks, U.S. and foreign prosecution, and policing and enforcement of marks.


A trademark –or service mark— is any word, symbol, design, slogan, logo, etc. which serves to identify or distinguish the source of a product or service from another's within the stream of commerce. A mark that identifies the source of certain goods or a product is called a trademark, while a mark that identifies the source of a service, rather than goods, is called a service mark. Although these most often consist of a word, logo, or combination of both, a mark can be anything that may be used to identify and distinguish a specific product or service. These may include colors, such as the widely recognized “Tiffany Blue” color, such 3D marks as Coca-Cola’s bottle shape, Netflix’s intro sound, and even the “flowery musk scent” found inside Verizon stores.




The prosecution of applications for trademark registration and trademark searching are essential elements of ELO’s practice and can often form a crucial part of your brand’s growth strategy. As a preliminary step to a full availability search, ELO is able to assist clients through online screening searches.


Trademark rights in the U.S. accrue essentially from the actual use of a mark in commerce, and not from registration –as most people often assume. However, there are distinct advantages to federal registration, which in turn requires use of the mark in interstate commerce. Basically, a federal registration constitutes prima facie evidence –i.e. provides a presumption– of the validity of a registration, of ownership of the mark, and of the owner’s exclusive right to the use of the mark in commerce. Consequently, a federally registered trademark owner acquires the right to use the ® symbol with the mark, which provides constructive notice of a claim of ownership to the public. Thus, another party that adopts a mark after it has been registered will not be able to argue that it was adopted in good faith.


The Lanham Act provides for a national system of trademark registration and protects the owner of a federally registered mark against the unauthorized use of the same or similar mark. The owner of a federally registered trademark may recover defendant’s profits, any damages sustained by the plaintiff and –in extraordinary circumstances– the costs of litigation, including attorney fees. Although an unregistered mark is afforded certain “common law” protections, federal registration offers far more powerful rights and avenues of enforcement against potential infringers.


Once you have decided on a trademark for your business, it is important to determine whether this mark could be viable for unincumbered use in interstate commerce and for federal registration. Conducting a comprehensive search and applying a proper interpretation of the search results is essential, as a main basis for refusal by the Trademark Office is often due to confusion with other similar marks.


It is good practice that only after a mark has been thoroughly searched and determined to be viable for use and registration, should the application for registration be prepared. Once an application is filed, a Trademark Office Examining Attorney will closely scrutinize the proposed trademark. Interaction with the Examiner typically involves complex legal issues and procedural rules. Precise statements during such interactions may prove critical, as to avoid not only a denial of the registration, but also any limitations in the scope of the application by the Examiner. Such restrictions can potentially render any resulting registration with little to no value in terms of practical trademark protection.


ELO can assist you in determining the overall strength of your mark in order to best ensure your brand enjoys continued success and protection, while preventing unnecessary entries in the application record that can lessen the strength and breadth of a registration.


ELO strives to best advise clients on the intricacies of trademark practice – contact the office directly for additional information or to schedule a consultation today!



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Legal Notice: Any information herein does not constitute legal advice or endorsement.  All posts are for informational purposes only, as there are many factors and complexities that come into any legal matter, including patenting an idea.  ELO always recommends you consult with a qualified attorney if you want legal advice for your particular situation.
No attorney-client or confidential relationship exists by simply reading and applying the information or steps stated in any article herein.




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