Trademark Attorney Services

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Trademark Applications

At the base of the trademark practice we obtain registration of trademarks for use in the United States, and facilitate registration of trademarks for use in other countries. For use of a mark in connection with goods or services offered in the United States we will prepare an application for registration, which entails properly presenting the mark and correctly characterizing the goods or services. This will also entail obtaining suitable evidence establishing actual use of the mark as a trademark, although in some cases this may be deferred.

For use of a mark in connection with goods or services offered outside of the United States an international application may be prepared. At the same time, or alternatively, we may work with a network of foreign trademark attorneys and agents as they prosecute corresponding applications in their own countries. In working with a client seeking foreign trademark protection we will provide early guidance to ensure that the client’s foreign applications receive all available benefits of international treaties between the United States and foreign nations.

Once filed, whether in the United States or internationally, we will monitor the status of the application as it progresses through the examination process. We will respond directly to any actions taken by the USPTO or, in the case of an international trademark application, to any actions taken by the World Intellectual Property Organization (WIPO). During the examination process we may ask the owner of the mark for a sworn statement or declaration of facts supporting our arguments.

For applications filed with the USPTO, we will if necessary appeal an examiner’s final decision to the USPTO’s Trademark Trial and Appeal Board (TTAB). If during the examination process a third party opposes registration of a client’s mark, we can defend against the opposition before the TTAB. If warranted, we are able to appeal any decision by the Board in a federal appeals court in Washington, D.C.

If a foreign trademark office takes an action after initial compliance with the WIPO requirements for an international application, we will either respond or work with foreign counsel for response to the action, depending on the particular circumstances. For applications filed directly with a foreign trademark office we will work with foreign trademark counsel for all matters arising during examination.

Contact Us now to discuss trademark applications with an experienced trademark attorney.

Adoption and Use of Trademarks

In addition to preparation, filing and prosecution of U.S. and international trademark applications, our trademark practice includes providing advice to clients in the earliest stages of product branding, while the client is working to select a trademark. For clients who are not experienced with trademarks, we can explain in detail the characteristics of strong trademarks, which should be sought. Just as important, we can also explain what makes for weak or otherwise problematic trademarks, which should be avoided.

This advice also includes making sure a client understands how to properly use a selected trademark in commerce, and taking steps to ensure that the client succeeds in making proper use of the trademark. We are available to monitor the development of trademarks as a client prepares for first use, ensuring that costly errors are avoided. This will often entail reviewing printers’ and similar proofs just prior to the client’s approval of advertising material, websites, signage, articles used in trade such as glasses in a restaurant, or even the display of the mark as part of a business’s décor.

Contact Us now to discuss selection and use of trademarks with an experienced trademark attorney.

Trademark Searches and Opinions

An important step in the adoption of a trademark is making sure the trademark is available for use as intended. While it is not possible to definitively clear a trademark for any use, the risks associated with using a new trademark can be greatly reduced by conducting appropriate searches of existing prior uses. An opinion based on the result of a search is typically prepared for further consideration with the client.

We can provide an array of searches, which vary in scope according to an assessment of the business risks created by use of the trademark. For example, a registrability opinion for a trademark that presents relatively little risk as proposed for use may be based upon a comprehensive search of federal trademark records, or of federal and Texas trademark records.

Where risk is high, such as in connection with a large scale product rollout, a search may also include the trademark records of every state, nationwide business directories and Internet domain name registrations. In some cases, a comprehensive search may even include trademark records of foreign countries.

Contact Us now to discuss trademark searches or registrability opinions with an experienced trademark attorney.

Trademark Licenses and Sales

Improperly prepared trademark licenses or sale agreements can cause a trademark to lose its distinctiveness. When this happens, and the trademark no longer identifies a single source of goods or services, the trademark may be deemed abandoned and no longer protectable. Likewise the sale of a trademark, or business having a trademark, that does not include the goodwill associated with the trademark can also constitute abandonment.

We are able to prepare appropriate trademark licenses and trademark purchase agreements that do not risk loss of rights. More importantly, we can ensure that the arrangement contemplated by the parties meets the requirements for a valid trademark license. If not, we will work with the client to find and negotiate changes to salvage the arrangement if possible.

Contact Us now to discuss trademark licenses or trademark assignments with an experienced trademark attorney.

Trademark Litigation

In the event of a trademark dispute, we are often able to settle the matter on the most favorable terms available. If the trademark dispute cannot be settled amicably, we will litigate the matter in a federal court. In many cases, actual trademark infringement can be preempted or otherwise avoided by wisely using federal administrative procedures and agency programs. For example, we can entirely avoid some infringements by working with U.S. Customs to have them intercept gray market and infringing imports at the U.S. border.

In the USPTO we can monitor potentially infringing trademarks from the time of filing and take steps to dissuade the applicant from further pursuing the mark. Failing that, we can file an opposition to registration in an administrative proceeding similar to an infringement suit but pursued before registration of the applied-for trademark. This is often prior to any actual use by the applicant.

Where another party threatens litigation based on a registered trademark it may be that there are flaws in the registration that make it invalid. In addition to traditional litigation, we may find it advantageous to file a petition for cancellation of the registration. This administrative proceeding in the USPTO may eliminate some or all of the grounds supporting the party’s infringement claims.

A cancellation proceeding may also be used to remove a registration that is not discovered in time to file a petition for opposition. In this case, however, time is of the essence. Failure to act promptly can waive any right to challenge the registration.

Contact Us now to discuss trademark litigation or other trademark proceedings with an experienced trademark attorney.

Other Trademark Matters

If you have a different trademark issue Contact Us now to discuss it with an experienced trademark attorney. It is very likely that we can help you.

© 2024 Wayne J. Colton, Inc.
San Antonio, Texas