An integral part of our representation of businesses is counseling relating to branding and, consequently, trademark law. Many businesses today are based or built not on traditional assets, like inventory and land, but on intellectual property, the most important of which is often trademarks. Trademarks are a “designation of origin” for goods or services and are often a key asset of a business, necessary for the operations of the business and comprising a significant asset of the business.
As part of our practice in start up and emerging businesses, we encourage clients to adopt a branding strategy from the inception. That strategy can be a key component in the success of the business. That strategy involves identifying the marks that will be used by the business, having those marks “tested” within the company and vetted by marketing experts and tests, “testing” the marks to ensure they will receive approval from the Patent & Trademark Office (PTO), and then “practically” testing the mark. That testing involves ensuring the mark is distinctive, that is, not merely descriptive, and that it provides the type of branding reference desired by the company. See trademark clearances. The second part of the “practical” test is testing the mark in the marketplace, to ensure that it is not confusingly similar to existing marks or pending marks. As part of trademark prosecution practice, we obtain comprehensive reports (see trademark clearances) for each mark we prosecute so that we can effectively assist our clients in their marketing and to allow us to develop an effective and comprehensive prosecution strategy.
While the PTO now makes the filing of marks fairly simple through the use of software accessible and useable by all, the proliferation in the number of applications has created an environment where PTO examiners (young trademark attorneys in Washington, D.C.) routinely refuse applications and trip up “pro se” (without an attorney) applicants for the most minor of errors. Further, the pro se applicant who has been refused a registration now knows the essential importance of having experienced trademark counsel in the “response to office action” stage of applications.
Moreover, because trademark registration standards are highly subjective, meaning that an examiner might refuse a registration in a case where a knowledgeable person would have guessed that the application would be allowed, it really pays to have experienced trademark counsel from the beginning. Many of our clients have started the process without counsel and then, because of a rejection or the complexity of the process, have then sought counsel. Start the process right by hiring counsel from the beginning to ensure your best chance in achieving a registration.
Our practice also encompasses “tradedress” registrations, trademark counseling and trademark infringement prosecution.
Our practice also encompasses foreign registrations, working with both U.S. and foreign correspondents, in cases where that is necessary. We also prosecute applications under the Madrid Protocol, which is a cost effective option for many U.S. companies seeking trademark protection in the European Union.
Finally, our practice includes litigation of disputes before the U.S. Patent and Trademark Office “Trademark and Trial Appeal Board” or “TTAB”. These disputes can involve appeals of registration refusals as well as “inter partes” proceedings involving claims (and defense) for cancellation of a mark. The TTAB rules are largely based on the rules of federal civil procedure and allow DR attorneys to use both their litigation experience, trademark law knowledge and creative solutions to successfully litigate and settle TTAB proceedings/disputes.