About us

Your content goes here. Edit or remove this text inline or in the module Content settings. You can also style every aspect of this content in the module Design settings and even apply custom CSS to this text in the module Advanced settings.

Read More

Our Trademark Services

Selection

Selecting a strong trademark is the corner stone of building a valuable brand. Strong trademarks forge a connection between the company and consumers and

Read More

can grow in value, adding another valuable asset to a company’s portfolio. We help clients in the selection process by reviewing and identifying existing intellectual property that would benefit from trademark or service mark protection. Alternatively, when a company is considering trademark protection for a product or service, knowledgeable trademark counsel is essential to ensure that the name is eligible for trademark registration and can safely be used in the marketplace. Additionally, we classify trademarks on the spectrum of strong-to-weak, and allow clients to select those marks that would function as strong trademarks.

Search and Clearance

Once a trademark is selected, conducting due diligence is essential to identify potential risks to trademark use. To mitigate these risks, we conduct availability searches using
Read More

federal and internet databases and render clear, practical opinions as to whether a proposed mark can be registered. This means carefully evaluating the goods and services provided under the mark, and searching a variety of databases to identify all potential risks to the mark.
Moreover, if we find any marks that may pose a problem to use or registration, we investigate these marks and determine the nature and extent of any rights their owners may possess. Our extensive trademark search experience allows us to provide comprehensive opinions on a mark’s availability, as well as practical tips on using and registering the mark to avoid or minimize potential problems.

Filing

Before filing a trademark application with the U.S. Patent and Trademark Office (PTO), we work closely with the mark owner to develop a strategy regarding the form of the mark
Read More

and how broadly or narrowly to describe goods or services. We use a detailed questionnaire to answer the questions required by the PTO, taking into account our research results in order to avoid potential problems with the PTO examination as well as third party registrations. Further, we understand that products and services under the mark may change after filing, and ensure that future products and services are also covered by the application.
Our trademark filings extend to international applications as well. This includes filing international applications through multilateral treaties to give clients the benefit of registration in multiple countries through one application. For countries not covered by international agreements, we work directly with foreign trademark counsel to file applications in foreign trademark offices, and stay in close contact through registration and maintenance filings.

Office Action Response

Office Actions are initial administrative refusals by the U.S. Patent and Trademark Office (PTO). We counsel clients who have received Office Actions after filing applications on their own,
Read More

or who require assistance in responding to Office Actions received with previous counsel. Each Office Action is different and requires a thorough review of the grounds of refusal.
We carefully review each Office Action, identify the issues, and propose response options in a simple summary. Some refusals require a substantive legal brief with supporting evidence. In these cases, we draft a comprehensive response, and gather all supporting evidence such as affidavits or specimens of the mark in use. Other Office Actions can be resolved through a simple administrative response and simply require a brief follow up with the PTO examiner. In these cases, we rely on our experience and relationship with the PTO to resolve issues in the most cost effective way.

Office Actions need to be resolved promptly in order to minimize potential problems with registration. The grounds for Office Actions may vary but each one requires a thorough review and a concise explanation of the response options.

Renewals & Registration Maintenance

After a mark is registered, we continue to closely monitor all additional renewal and maintenance deadlines to ensure that trademark rights are
Read More

maintained and strengthened. We manage all U.S. Patent and Trademark Office (PTO) deadlines to ensure all filings are timely and properly submitted. This means no missed deadlines and no wasted money reviving abandoned marks.
Our maintenance process includes providing advance notice to clients of upcoming deadlines, summarizing required evidence, and conducting research to submit proof of continued trademark use. Additionally, we conduct periodic checks to ensure that the mark is being properly used for the goods and services in the registration. This ensures that the mark is protected against possible cancellation filings and further strengthens the connection between the mark and the registered goods or services.

Enforcement & Monitoring

Enforcement and monitoring efforts are critical brand-protection steps after a mark is registered. While they do necessarily involve time and effort, they are part of the cost of
Read More

maintaining a strong brand. We work diligently to minimize these costs by selecting a strong mark. After a mark is used in commerce or registered, we work closely with the mark owner to ensure that infringing uses of the mark are promptly brought to the owner’s attention and effectively resolved.
We help clients set priorities for enforcement efforts by developing specific guidelines to flag potentially infringing marks and set strategies to resolve conflicts before they escalate. When infringing mark uses are identified, we present clients with a full range of strategies and options to enforce trademarks rights and stop the infringing use. These efforts are intended to prevent a loss of trademark rights by a third party’s use of the mark, and to prevent unfair competition and the dilution of client brands.

Alternatively, clients may be faced with a cease & desist letter or other claim of trademark infringement. In these cases, we carefully evaluate the claims and associated trademarks, take into account our client’s position and goals, and present a full range of options to respond and to resolve the conflict.

TTAB Proceedings

Trademark Trial and Appeal Board (TTAB) proceedings are similar to civil litigation proceedings, and include discovery, expert testimony, and pretrial disclosures.
Read More

We work closely with clients to set initial priorities for litigation efforts and work towards achieving their litigation and business goals.
Our TTAB work focuses on trademark oppositions (preventing registrations of confusingly similar marks), cancellations (canceling registrations that have been improperly registered or abandoned), and defending applications against opposition by third parties.

Frequently Asked Questions

What is a trademark?
A trademark (or “mark”) is any word, phrase, symbol, or design that identifies and distinguishes your goods from those others. The term “service mark” is also sometimes used in the context of trademark rights but it means the same thing except that it identifies or distinguishes services instead of goods.
How is a trademark different from a copyright?
A trademark is a word, phrase, symbol, or design that identifies and distinguishes your goods from those others. A copyright is used to protect original works of authorship such as books, paintings, songs, and even computer software.
Copyright registrations are handled by the US Copyright Office, you can learn more about copyright registration here.
Do I need to file a registration with the USPTO to have trademark rights?
No. Trademark rights in the US are established as soon as you start using the mark in commerce to identify your goods or services. The rights you have simply by virtue of using the mark are called “common law” trademark rights because they are not based on registration but on use in commerce. Common law rights are usually limited to the geographic area where you operate. Common law rights also protect your trademark from trademark infringement by similar marks used for similar goods/services that started in use after your use of the mark.
How long does it take to register a trademark?
It depends. In an application based on “use” of the mark in commerce, assuming there are no initial refusals or other obstacles, you can expect a registration in 7 – 12 months. An application based on “intent to use” is similar in length of time to a “use” application. It will also require a showing of the mark in use before the application can proceed. From the point that you can show the mark in use, you can expect a registration in 2 months.
What’s the difference between “use” and “intent to use” trademark filings?
As the name implies, a filing based on “use” means that you are currently using the mark on your goods or services in commerce. “Intent to use” means that you have a “bona fide intent” to use the mark in commerce at a later date. The USPTO allows you to file a trademark application based on intent to use as long as you genuinely intend to start using the mark. The USPTO cannot grant a registration until you submit proof of use, but will grant you up to 5 extensions of 6 months each to give you time to start using the mark in commerce. If you cannot show use of the mark within that time, the application will be deemed abandoned.

Get in Touch

Recent Articles

Amazon Brand Registry – blog post_FINAL

Amazon Brand Registry – blog post_FINAL

Apr 11, 2024 |

Amazon is taking over the world, but that's no surprise to retailers.  Amazon knows that to entice sellers to list their products and to ensure buyers the goods they're seeing are legitimate, it needs to control the problem of counterfeit goods. The company launched...

read more

Get In Touch With Us

Get Free Quote