Trademark Services

We offer a full spectrum of trademark services designed to protect your brand identity and intellectual property in today’s competitive marketplace. Our experienced team, led by Robert McConnell, provides strategic guidance through every step of the trademark process, from initial conceptualization to long-term protection and enforcement. With nearly two decades of experience in intellectual property law, we understand that your brand is not just a name or logo—it’s a valuable asset that deserves robust protection.

Our comprehensive approach ensures that your trademark rights are secured, maintained, and enforced effectively. We tailor our services to meet the unique needs of businesses across various industries, from startups to multinational corporations. Our goal is to provide you with a strong foundation for building brand recognition and loyalty while preventing others from capitalizing on your hard-earned reputation.

Trademark Applications

Our team guides you through the entire trademark application process, from selecting the strongest mark to securing registration. We help determine the appropriate classes for goods and services, prepare and file your application with the United States Patent and Trademark Office (USPTO), and handle all communication with trademark examiners.

Our application process includes:

  • Conducting a comprehensive search and clearance of your proposed mark
  • Advising on the selection of the strongest, most protectable mark
  • Determining the appropriate goods and services classifications
  • Preparing and filing a strategically crafted trademark application
  • Monitoring the application’s progress through examination
  • Responding promptly to any office actions or examiner inquiries

The goal is to maximize the chances of approval while establishing the broadest protection possible for your mark. We leverage our extensive experience with the USPTO to anticipate potential objections and address them proactively, streamlining the registration process.

Trademark Clearance Searches

Before investing time and resources into a new brand, it’s crucial to ensure it’s available for use and registration. Our thorough clearance search process is designed to identify potential conflicts with existing trademarks, reducing the risk of infringement claims and application rejections.

We employs advanced search techniques and utilizes comprehensive databases to conduct multi-tiered searches:

  • Federal searches: We scour the USPTO database for federally registered marks and pending applications.
  • State searches: We examine state trademark registrations across all 50 states.
  • Common law searches: We investigate unregistered trademarks that may have acquired rights through use.
  • Domain name searches: We check for potentially conflicting domain names and online use.
  • International searches: When relevant, we extend our search to international trademark databases.

After conducting these searches, we provide a detailed analysis of the results, including an assessment of potential risks and recommendations for moving forward. This thorough approach helps you make informed decisions about your brand strategy and reduces the likelihood of costly legal disputes down the line.

Responses to Office Actions

If the USPTO issues an office action refusing your application or raising objections, we’re here to help. With extensive experience in crafting persuasive responses, we can assist in overcoming a wide range of issues, including:

  • Likelihood of confusion refusals
  • Descriptiveness objections
  • Genericness rejections
  • Specimen refusals
  • Requests for disclaimers
  • Geographic descriptiveness issues

We analyze each office action thoroughly, develop a strategic response, and work diligently to address all concerns raised by the examiner. Our goal is always to secure your trademark registration while maintaining the broadest possible protection for your mark.

Multi-Jurisdictional Protection Strategies

In today’s global marketplace, protecting your trademark internationally is often crucial. We develop comprehensive strategies for multi-jurisdictional trademark protection level.

Our international trademark leverage international treaties and our network of foreign associates to secure your rights worldwide.
services include:

  • Developing global filing strategies tailored to your business needs
  • Utilizing the Madrid Protocol for streamlined international registrations
  • Coordinating with trusted foreign associates for country-specific filings
  • Monitoring and maintaining international trademark portfolios
  • Advising on international enforcement strategies

We guide you through the complexities of international trademark law, making sure your brand is protected in important markets around the world.

Trademark Infringement Analysis

Assessing trademark infringement involves a complex analysis of various factors to determine the likelihood of consumer confusion. Our experts conduct comprehensive infringement analyses to help you understand potential risks or build a strong case if your trademark rights are being violated.

Key factors we consider in our infringement analyses include:

  • Similarity of the marks (visual, phonetic, and conceptual similarities)
  • Relatedness of the goods or services
  • Strength of the senior mark
  • Evidence of actual confusion
  • Marketing channels used
  • Sophistication of the target consumers
  • Intent of the alleged infringer
  • Likelihood of expansion into other markets

We provide a detailed report of our findings, including a risk assessment and strategic recommendations. Whether you’re considering adopting a new mark or defending your existing rights, our infringement analyses give you the insights needed to make informed decisions.

Cease and Desist Letters

When your trademark rights are infringed upon, a cease and desist letter is often the first step in enforcing those rights. We craft clear, legally sound cease and desist letters that effectively communicate your position and demands. Our approach is tailored to each situation, balancing assertiveness with professionalism to achieve the best possible outcome.

These letters typically include:

  • A clear statement of your trademark rights
  • Details of the alleged infringement
  • Demands for the cessation of infringing activities
  • A deadline for compliance
  • Potential consequences of non-compliance

While cease and desist letters aim to resolve disputes without litigation, we’re prepared to escalate if necessary. Our team can guide you through subsequent steps, including negotiation, mediation, or litigation, always focused on protecting your trademark rights effectively and efficiently.

Trademark Litigation Support

When trademark disputes escalate to litigation, our team provides robust support and representation.

Our litigation support services include:

  • Case assessment and strategy development
  • Filing or defending against trademark infringement lawsuits
  • Representing clients in TTAB proceedings, including oppositions and cancellations
  • Negotiating settlements and licensing agreements
  • Pursuing or defending against preliminary injunctions
  • Conducting discovery and depositions
  • Representing clients at trial or in appellate proceedings

Our goal is to vigorously defend your trademark rights while seeking the most cost-effective resolution possible. We keep you informed throughout the process and work closely with you to ensure our litigation strategy aligns with your business objectives.

About Trademark Law

Why Trademark Protection Matters

Trademarks are essential for building and maintaining brand identity. They serve several crucial functions:

  • Distinguishing your goods or services from competitors
  • Building consumer trust and loyalty
  • Protecting your market share
  • Becoming valuable assets in their own right
  • Preventing others from capitalizing on your reputation
  • Maintaining the integrity of your brand

Strong trademark protection is an investment in your brand’s future, helping to secure your place in the market and build long-term value for your business.

Strategy and Guidance

Effective trademark protection requires a strategic approach that aligns with your overall business goals. We work closely with you to understand your unique needs and develop a tailored strategy that supports your brand vision.

Our strategic guidance covers:

  • Brand development and selection of strong, protectable marks
  • Comprehensive search and clearance strategies
  • Filing strategies to maximize protection and minimize costs
  • Portfolio management and maintenance
  • Enforcement strategies to protect against infringement
  • Licensing and monetization opportunities

We ensure that your trademark strategy not only addresses legal considerations but also supports your broader business objectives, helping you build a strong, recognizable, and legally protected brand.

Process Overview

The trademark process typically involves several key steps:

  • Clearance search: Ensuring your proposed mark is available for use and registration
  • Application preparation and filing: Crafting a strong application that maximizes protection
  • Examination by the USPTO: Responding to any issues raised by trademark examiners
  • Publication for opposition: Monitoring for any third-party oppositions
  • Registration: Securing your federal trademark registration through an appropriate declaration of use
  • Maintenance and renewal: Ensuring ongoing protection through proper maintenance filings

Throughout this process, we provide clear communication and expert guidance, ensuring you understand each step and are well-positioned to build and maintain strong trademark rights.

We’re committed to providing comprehensive trademark services that protect your brand and support your business growth. With our expertise and client-focused approach, you can trust us to safeguard your valuable intellectual property assets, allowing you to focus on what you do best—growing your business and building your brand.

FAQ’s

What trademark services do you offer?

We offer a full range of trademark services, including clearance searches, applications, infringement analysis, cease and desist letters, office action responses, multi-jurisdictional protection strategies, and litigation support.

Why should I hire a trademark attorney instead of filing myself?

Trademark attorneys provide expertise in navigating complex trademark laws, increase the chances of successful registration, and offer strategic guidance to protect your brand effectively. With guidance from a trademark expert, costly mistakes can often be avoided making representation by a trademark attorney a more cost effective solution.

What is a trademark clearance search?
It’s a comprehensive search to determine if your proposed mark is available for use and registration without a significant risk of consumer confusion between your proposed trademark and existing trademarks.
Why is a clearance search important?
It helps identify potential conflicts early, reducing the risk of infringement claims and application rejections, saving time and money in the long run. It also helps avoid investing in a brand name that cannot be fully owned by the business.
What does the clearance search process involve?
We search federal and state databases, common law sources, and domain names, then provide a detailed analysis of the results and recommendations.
How is trademark infringement assessed?
Infringement is assessed by analyzing factors such as the similarity of marks, relatedness of goods/services, strength of the senior mark, and likelihood of consumer confusion.
What's the likelihood of confusion analysis?
It’s an assessment to determine if a mark is too similar to an existing mark, potentially causing consumer confusion.
Can you help if I suspect someone is infringing on my trademark?
Yes, we can conduct a thorough infringement analysis and advise on the best course of action to protect your rights.
What is a cease and desist letter?
It’s a formal letter demanding that an infringing party stop using a trademark that violates your rights.
When should I send a cease and desist letter?
When you’ve identified a clear infringement of your trademark rights and want to resolve the issue without immediate legal action. It is important to defend your trademark rights as failure to police your trademark can result in loss of rights.
What should be included in a cease and desist letter?
It typically includes details of your trademark rights, the alleged infringement, demands to cease the infringing activity, and potential consequences of non-compliance.
What's the process for filing a trademark application?
The process involves clearance searches, preparing the application, filing with the USPTO, responding to any office actions, and then publication and registration if approved.
How long does the trademark registration process take?
Typically, it takes 12-18 months from filing to registration, assuming no significant issues arise during examination.
What's the difference between use-based and intent-to-use applications?
Use-based applications are for marks already in use in commerce, while intent-to-use applications are for marks not yet in use but intended to be used.
What's an Office Action?
It’s an official letter from the USPTO raising issues or objections to your trademark application that need to be addressed.
How do you respond to Office Actions?
We analyze the objections, develop strategic responses, and may submit evidence or legal arguments to overcome the examiner’s concerns.
What are common reasons for receiving an Office Action?
Common reasons include likelihood of confusion with existing marks, descriptiveness issues, amendments to identification of goods/services, and requests for disclaimers or additional information. A pre-filing search and analysis aims to avoid more difficult to overcome rejections such as for a likelihood of confusion and descriptiveness.
How can I protect my trademark internationally?
We can help file applications in specific countries or use international systems like the Madrid Protocol for broader protection.
What's the Madrid Protocol?
It’s an international treaty that allows trademark owners to seek protection in multiple countries through a single application.
Do I need separate trademark registrations for each country?
Generally, yes. Trademarks are territorial, but international agreements can simplify the process of obtaining protection in multiple countries.
What does trademark litigation involve?
It can involve federal court lawsuits, Trademark Trial and Appeal Board (TTAB) proceedings, or alternative dispute resolution methods to resolve trademark conflicts.
How do you approach trademark disputes?
We assess the strength of your case, explore settlement options, and if necessary, associate with litigation counsel, always aiming for the most cost-effective resolution.
Can you help with TTAB proceedings?
Yes, we represent clients in TTAB proceedings, including oppositions to trademark registrations and cancellation actions.
Why is trademark protection important?
Trademark protection helps distinguish your brand, prevents others from capitalizing on your reputation, and can become a valuable business asset.
What's your approach to trademark strategy?
We develop tailored strategies that align with your business goals, considering factors like brand development, filing strategies, and enforcement plans.
Can you outline the trademark process?
The process typically involves clearance searches, application filing, USPTO examination, publication for opposition, registration, and ongoing maintenance and enforcement.
How often do I need to renew my trademark?
You must file a maintenance statement between the 5th and 6th year after registration, then a renewal every 10 years thereafter.