Trademark Law

Selecting, acquiring, maintaining and protecting trademarks and other branding elements are critical to success in the marketplace.  We help our clients make informed decisions in all phases of their trademark and brand strategy, including the following areas.

Trademark Screening

Careful pre-filing screening is often overlooked but is in many ways the most important step in the trademark process.  Our attorneys are skilled in all facets of trademark screening.  We conduct basic screening internally and we customize and analyze full searches that are conducted externally in order to help our clients assess the level of risk posed by potential conflicts.

Trademark Application & Registration

We work closely with our clients to prepare applications that are well-positioned to mature to registrations.  We work closely with Examining Attorneys at the United States Patent and Trademark Office (PTO) and our worldwide network of foreign associates to facilitate the prosecution and registration process. Our attorneys and trademark support professionals monitor our trademark docket continuously to ensure that we timely and effectively report pending matters to our clients, submit filings to the PTO and instruct foreign associates as necessary, and prosecute applicants to registration.

Trademark Renewals

Our trademark team assists our clients not only with registering their marks but with maintaining and renewing them. In addition to providing clients with timely reminders of pending trademark renewal deadlines, we help our clients assemble the information required to successfully and accurately renew and maintain their registrations.

Trademark Enforcement

To maintain your trademark rights you must protect and defend your mark.  Our attorneys are experienced in all facets of adversarial matters, from investigating possible claims, preparing and responding to cease and desist letters, and enforcing our client’s rights before the Trademark Trial and Appeal Board at the PTO and in court both in the U.S. and around the world.

Counseling & Review of Trademark Use

We review client marketing and promotional materials to ensure they are using their marks correctly, thereby preventing valuable rights from being lost. We also prepare written guidelines on the proper use of our client’s marks for reference by both internal and external groups.

Trademark Watch Services

The recognition and goodwill inherent in your trademark make it one of your most valuable assets.  Protecting that valuable asset with an effective Watch Service is a critical component of a well-managed trademark portfolio.  With a Watch Service subscription you can monitor the market for unauthorized use of your mark or a confusingly similar mark by thrid parties, enabling you to take timely action.

Domain Name Services

As with trademarks, domain name watch services are an invaluable tool. We understand how to force third parties to cease unauthorized use of your trademarks on the Internet whether as a domain name or as a keyword. We pursue all avenues available, including cease and desist letters, claims under the Uniform Dispute Resolution Policy, and the Digital Millennium Copyright Act to terminate unauthorized use of your trademarks.

Licensing

Whether you want to obtain a license to use a mark owned by a third party, or grant a license to a third party to use a mark that you own, our trademark attorneys will help you negotiate the most favorable terms and memorialize those terms in a license agreement that delivers value.

International Trademark Registration

Use and registration of a mark in the U.S. affords one rights in the U.S. but not outside the U.S.  Moreover, unlike in the U.S. where one can acquire rights in a mark by using (without registering) the mark, in most other countries trademark rights may be acquired by registration only.  While registering a mark in every country is neither cost-effective nor necessary, we encourage our clients to prioritize marks and jurisdictions and we develop a strategy to register those marks in those jurisdictions early.

To discuss your particular trademark and advertising needs, please contact Thomas Dunn.