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Trademark Services

We counsel clients in all aspects of trademark matters, from the selection of trademarks to the maintenance and enforcement of trademarks.

Trademark Selection

Trademarks identify the source of goods and services.  They can be in the form of words, phrases, graphic designs, or combinations of these elements.  There are trademarks, service marks, and trade names.  Trademarks can be fanciful, arbitrary, suggestive, and under some circumstances, descriptive.  We aid clients in selecting and strengthening marks.

Trademark Availability

We conduct and/or order a trademark search to determine the availability of marks for registration, and provide availability opinions.  We can conduct a knockout search, which is a search for federal trademarks using the Trademark Electronic Search System (TESS) at the USPTO, or order through a reputable search service a comprehensive search, which is a search for state and federal trademarks, as well as common law trademarks.

US Trademark Protection

We prepare and file trademark applications.  Filing a trademark application is just the beginning of the legal process towards obtaining a registration.  The process could go smoothly, without a hitch, or it can have many traps.  We counsel clients about the potential pitfalls of trademark prosecution and assist clients in developing a trademark filing strategy that will aid in avoiding the pitfalls.

Marks are often subject to refusals based on existing registrations, referred to as blocking registrations.  These refusals can often be overcome by filing coexistence agreements, or under some circumstances, seeking cancellation of the blocking registrations.  We assist clients in obtaining coexistence agreements and initiating cancellation proceedings.

Trademark Appeals

Applications can be subject to final refusals.  We counsel clients about the risks of appealing refusals, the likelihood of succeeding on appeal, and appeal refusals before the Trademark Trial and Appeal Board.

Post Allowance Proceedings

Once a trademark application has been allowed, it is published in the Official Gazette for Trademarks and subject to opposition in which a party is seeking to prevent registration of the published trademark.  Once the trademark is registered, a party may file a petition to cancel the registration.  We respond to Notices of Opposition and cancellation petitions.

Foreign Filings

Trademark protection is territorial.  US trademark protection does not extend beyond the borders of the United States.  If protection beyond the United States is desired, applicants must seek foreign trademark protection.  We aid clients in developing foreign filing strategies.  We maintain records of US filings and remind clients of foreign filing deadlines.  We have a network of foreign associates through which we coordinate foreign trademark filings, and standby ready to file foreign priority applications in the US.

International Applications

We counsel clients in making international filing decisions.  We prepare and file international applications through the Madrid system.  The application is subject to refusal in each country where registration is sought.  We have a network of foreign associates through whom we coordinate responses to refusals and obtain foreign registrations.

International registrations may often require additional measures to enforce the registrations, such as obtaining certification of registrations in the trademark office of the country where the registrations are obtained.  We aid clients in meeting additional requirements for enforcing trademark registrations abroad.

Portfolio Management

Participate in strategic development meetings and management meetings with directors, officers, and general counsel, to discuss trademark portfolios and develop strategies for building and maintaining portfolios.  We counsel clients about maintaining trademarks throughout product life cycles to assist clients in budgeting for their trademark portfolios.