Our services include:
Trademark (pre-filing) Clearance Searches
Every trademark application must begin with a Clearance Search. We use the Corsearch online screening database to review U.S. Trademark Office records, as well as trademark records in each state. The success of a trademark application lies in the thoroughness of the Clearance Search. Once a potential trademark is thoroughly searched, the application preparation can begin.
Once a trademark is searched and cleared, the process of drafting the application is next. They key portions of the application include: ownership (entity or individual), actual mark (block letter or with a design), description of goods and/or services, use-based or intent-to-use application, and development of the specimen for use-based applications.
Office Action Responses (substantive and non-substantive)
Occasionally, the Trademark Office issues an Office Action regarding pending trademark applications. There are a few different kinds of Office Actions that can issue:
Non-substantive Office Actions are those actions related to issues with failure to disclaim a portion of your mark, descriptions of logos, or improper entity type.
Substantive Office Actions are those actions related to issues with the identification of goods or services, improper specimens, or improper dates of use. The US Trademark Office may also issue office actions that characterize your mark as merely descriptive, misdescriptive, merely a surname, or immoral or scandalous matter. Or, you may get a refusal of your application based on “likelihood of confusion.” These actions are more difficult to overcome, depending on the specific nature of your case.
Statement of Use and Extension Filings
Sometimes, you can file a trademark application for a mark that you have not yet used, and that you are intending to use over the next 1-3 years. If this situation applies to you, an “Intent-to-Use” application can be filed. If there is no use yet of the trademark at the time of filing the application, a Statement of Use will be required before the trademark can register (fees will apply).
If there is still no use of the trademark once the trademark is allowed by the USPTO, then the Applicant can extend the time to file the Statement of Use over the course of the next 3 years in 6-month intervals, with fees being due at each interval.
We offer trademark monitoring services. Please call with specific needs or for more details.
Trademark Change of Ownership (Assignments)
If you are selling or buying a business, you may need to assign trademarks, and record those assignments in the Trademark Office (U.S. and elsewhere).
Filing a Section 8 Affidavit between years 5-6 after registration OR
Filing a combined Section 8 &15 Affidavit between years 5-6 after registration
Trademark registrations are required to be renewed every 10 years, calculated from the date of the registration.
Trademark Oppositions / Trademark Cancellations
Trademark oppositions and cancellations are administrative proceedings within the US Patent & Trademark Office.
Trademark Infringement / Trademark Litigation
If you believe that a third party is infringing your trademark, we can prepare and send a Cease & Desist Letter. In the event that a 3rd party believes you are infringing their trademark rights, you may receive a Cease & Desist letter, which we can help you answer and defend.
Sometimes, these situations can escalate into trademark litigation, if the parties cannot agree to a settlement. These cases are often brought in federal court in your jurisdiction.
Trademark Portfolio Management
Let us manage your global portfolio of trademarks – no matter how many marks or the number of countries covered.
Trademark filing outside of the US
If you want to extend your trademark rights outside of the U.S., please advise which countries are of interest to you.
Global IP Licensing Transactions / Trademark License Agreements
We can assist you in negotiating and drafting IP/trademark license agreements that can include trademarks, patents and/or trade dress, whether the agreements are only for the US or for multiple countries. We will assist you with implementing strict controls around quality, distribution and brand protection.
Domain Names / Typo-squatting
If you believe that a third party is infringing your domain name and/or trademark, or that the third party has filed a very similar domain name in bad faith, we can prepare and send a Cease & Desist Letter or file a UDRP proceeding with WIPO.
If you are interested in protecting original works of authorship including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture, you may want to file for copyright protection. A Copyright Application can be filed with the Copyright Office, which is part of the Library of Congress. (The Copyright Office is not part of the USPTO.)
Contracts – We can help you with all kinds of contracts
IP licensing transactions and agreements, marketing, simple and complex commercial contracts, sponsorship/ promotional agreements, and more.
In-house Trademark Department creation
If you want to develop an in-house trademark department, we can help guide you through the process.