Trademark Counseling

Trademark Counseling

  • Counseling clients in areas of brand development, registration strategies and proper trademark usage
  • Global Trademark Search and Clearance
  • Filing and Prosecution of U.S. and International Applications
  • Management of Worldwide Trademark Portfolios
  • Opposition and Cancellation Actions

Why you need REAL Trademark Lawyers.

You have worked for days coming up with a new brand name only to give it to your client and hear back two weeks later from their trademark lawyer. The search shows the name is "blocked" for use. Most lawyers do not have the time, experience, and —more importantly—the resources to find out if the trademark applications and registrations on a search report are in use, or if there are any plans for use. "NO" is the easy and safe answer.

It requires a lot of experience and time to find out if a registered or applied for mark is actually in use.We confess we have seen the frustration of brand management firsthand as an in-house trademark lawyer—decades at Procter & Gamble, Anheuser-Busch and U.S. Shoe. We tried everything to clear "blocked" names for clients in our corporate time: "market research firms", so-called investigative services, you name it. While we have worked with numerous groups, we never really trusted these folks, their contacts or methods. They were superficial and often WRONG! There is better way.

What we can do is what you want - dig deep into your name - and do it not only with the trademark registration records, but also by looking at trade publications databases, Internet listings, and more importantly, we then check it out to see if there really is such a product or whether someone is simply trying to "bank" a name. If so, we let you know right away, so we can help you and your client remove the name from the "vault". If the use or intent to use is real, we work with you to find a solution, an agreement, a license, perhaps even a confidential purchase of the desired trademark. 

We have practical, in house experience running large corporate trademark and copyright operations that did the work in house. We have worked closely with brand managers and buyers, creating and protecting global brands. We do not just do searches and file applications. We understand when to do a full search and when a preliminary search makes sense. We know when it is worth filing a trademark application and when there is little value added to doing so, and we advise our clients of the practical benefits and disadvantages in each case before we take action. We have many years of maintaining  global trademark portfolios in a cost-effective, business manner and working closely with foreign counsel and agents. 

We combine our subject-matter knowledge and our litigation expertise with our understanding, through experience, of what in house counsel and their clients really want, so that we can provide our clients with precisely what they need in analyzing potential litigation issues: realistic assessment of the strength of their position, and the ability to vigorously and successfully advocate that position in the best possible forum to finally resolve the dispute.  We work to understand the business rationale underlying every dispute so that we can pursue the most appropriate and cost efficient means to secure a good result for the client.

Many law firms use general business lawyers, who have no intellectual property background, to do deals. We do not. We have focused our practice on all aspects of intellectual property to perform intellectual property due diligence, draft representations and warranties and negotiate other intellectual property agreements.  The acquisition of intellectual property contains many pitfalls for the untrained eye.  We understand the importance of intellectual property as a business asset, and will work creatively with clients to maximize and preserve the value of these assets. We have set up many intellectual property holding companies, drafted practical licenses and maintained portfolios using these corporate vehicles. Our extensive practical knowledge and experience can assist clients in anticipating and avoiding potential problems, including costly litigation.

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