Practices |

Trademark

File. Register. Renew. Enforce.

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

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Trademark Screening

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

Trademark Application & Registration

We partner 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 with 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 appropriately report pending matters to our clients, submit filings to the PTO and instruct foreign associates as necessary, and effectively prosecute applicants to registration.

Trademark Renewals

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.  We are experienced in all aspects of adversarial matters, from investigating possible claims to preparing and responding to cease –and- desist letters, and are proficient in enforcing our clients’ rights before the Trademark Trial and Appeal Board at the PTO, as well as in courts 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 the 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 for a confusingly similar mark used by third parties, enabling you to take timely action.

Domain Name Services

As with trademarks, domain name Watch Services are a vital tool. We understand how to compel third parties to stop unauthorized use of your trademarks on the Internet, whether presented as a domain name or as a keyword. To terminate any unauthorized use of your trademarks, we pursue all available avenues, including cease- and- desist letters, claims under the Uniform Dispute Resolution Policy and under the Anti-Cybersquatting Consumer Protection Act.

Licensing

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

International Trademark Registration

Use and registration of a mark in the U.S. affords rights within the U.S. but not outside it.  Moreover, unlike in the U.S. where rights in a mark can be acquired by using (without registering) the mark, trademark rights in most other countries 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; we then work closely with the client to develop a strategy for prompt registration of selected marks in the target jurisdictions.