Trademark Practice & Services

Trademark Counseling

Choosing a trademark, trade name, trade dress, slogan or logo that is inherently distinctive and not descriptive or generic is the first step in developing protectable rights. Our highly experienced attorneys, with their specialized knowledge, provide sophisticated advice as to whether the rights are strong and defensible against others.

Trademark Searching

We screen potential trademarks in-house using a state of the art online computer database to preliminarily determine their availability. Usually, the computer database search is a “knock-out” search limited to the federal register and covering only identical and very close marks.

Because the computer database search is restricted in searching strategy, and does not cover unregistered common law marks that may pose a conflict, we also order and review full trademark searches for those clients that wish to have a written formal opinion regarding the availability of the mark for use and registration in the U.S.

Trademark Filing

To obtain the benefits of registration, we file trademark applications on behalf of our clients with the U.S. Patent and Trademark Office. We actively utilize the electronic filing system of the U.S.P.T.O., where appropriate, to obtain discounted filing fees, the earliest possible filing date, and immediate confirmation of the application serial number.

Trademark Prosecution

Examining Attorneys in the U.S. Patent and Trademark Office may object to registration. Their objections range from minor technical objections like requiring greater specificity in the identification of goods or services to substantive refusals on the ground of mere descriptiveness or a likelihood of confusion. We timely report Office Actions to our clients and work with them on the most cost-effective way to respond to the Office Action and obtain registration.

Trademark Oppositions and Cancellations

Third parties may oppose registration during the opposition period following publication. Trademark oppositions are contentious administrative proceedings held before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office. Ostrolenk has a long history in successfully defending client’s applications from opposition. We also defend our client’s registrations once issued in cancellation actions.

Customs Recordation

Trademark recordation with U.S. Customs and Border Protection provides protection against the unauthorized importation of counterfeit and infringing goods. Our attorneys work at the instruction of our clients on recording their registered trademarks and trade names with Customs. When Customs notifies us that suspect goods have been detained or seized, we take steps to ensure their proper disposition.

Trademark Maintenance

Trademark registrations in the U.S. are subject to proof of use requirements between the fifth and sixth year after registration and every ten years from the date of registration. We monitor those deadlines using our state of the art computerized trademark management and docketing system. We notify our clients in advance of the deadlines and work with them to take the action necessary to maintain their registrations.

Trademark Watching

Trademark monitoring is an important part of any trademark vigilance program. When clients wish to police their marks, we order watching services from third party vendors. This permits us to learn about the publication for opposition of marks that are confusingly similar to those owned by our clients. We review the watch notices received and notify our clients about potentially problematic marks. We also often work with outside private investigators to try to learn as much information as possible about the third party use before deciding whether to oppose registration or challenge use.

Trademark Litigation

Opposing third party applications does not prevent the unauthorized use of a mark because the U.S. Patent and Trademark Office only decides the right to register. It is often necessary to sue for infringement in federal court in order to obtain an injunction against future use. Before filing any such lawsuit, where appropriate, we send a cease and desist letter to the infringer or their counsel. When the infringer fails to cooperate, and litigation is unavoidable, we bring an enforcement action in federal court or before the International Trade Commission. Those enforcement actions include ones for trademark infringement, trademark counterfeiting, parallel importation, unfair competition, trademark dilution, false advertising, trade secret misappropriation, violations of rights of publicity, and related causes of action. Our representation spans the many different stages of litigation including handling applications for temporary restraining orders, preliminary injunctions, seizures, declaratory judgment proceedings, motions for dismissal and summary judgment, pre-trial motions, trials and appeals.

Trademark Settlements

Like most civil litigations, trademark cases often settle before trial. Where settlement is possible, and in the best interest of our client, we make every reasonable effort to negotiate an amicable resolution with the other side. Ostrolenk has lengthy experience in drafting the settlement agreements, co-existence agreements, assignments, and licenses that typically resolve trademark disputes. We also have substantial experience in recording such agreements, transfers, and other changes in the chain of title with the U.S. Patent and Trademark Office and foreign trademark offices.

Trademark License Agreements

We represent both licensors and licensees in negotiating and drafting licenses and related agreements. From sophisticated product merchandising agreements to simpler one time trademark license agreements, our attorneys are conversant in the terms of trademark licensing and able to effectively represent out clients with a practical and business-oriented approach in reaching and writing their agreements.

Domain Name Disputes and Other Internet Matters

Trademark rights extend to the internet. Since the first days of the internet, Ostrolenk has zealously represented our clients in safeguarding their trademarks on the web. Our services include assisting clients in acquiring and registering domain names, filing domain name arbitrations under the Uniform Dispute Resolution Policy, and filing civil actions in federal court for cybersquatting. We can also advise clients on issues and litigate cutting edge matters relating to domain name abuse, framing and linking, traffic diversion, diverted sales, and related activities.

International Trademark Services

Trademarks is a worldwide practice. Our global services extend from computer database searching for countries whose trademark registries are accessible online to foreign trademark filing, prosecution and maintenance, to managing international trademark oppositions, cancellations and litigation. We have an extensive network of local counsel in most every commercialized country in the world. They assist us in obtaining and protecting trademark rights on behalf of our clients. To minimize costs, we also utilize paralegal support where appropriate to handle routine administrative work. This allows us to cost-effectively manage even large global trademark portfolios on behalf of our U.S. clients.