Trademark Attorney Services

Building your identity ...

Building Your Brand’s Identity starts with selecting strong, defensible trademarks and then protecting and maintaining those trademarks for the lifetime of your business. Wayne J. Colton, Inc. is prepared and ready now to help you secure and protect your business’s commercial identity.

Adoption and Use of Trademarks

The first step toward achieving a top brand identity is the selection and adoption of a great trademark, followed by proper use of the trademark in commerce. Our services include:

Evaluation of Proposed Trademarks
- Ability to Function as a Trademark
  - Strength of the trademark
- Identification of Special Issues
  - Consents to use names or likenesses
  - Copyright issues
  - Disclaimers
Guidance for Use of Adopted Trademarks
- Hands-On Consultations
- Advertising or Branding Reviews and Approvals
- Brand Guides
- Trademark Usage Policies or Terms of Use

Trademark Applications

A trademark must be thoroughly protected to function at capacity for the lifetime of your business. Registration of your trademark rights is critical to ensuring that your brand is protected. Our registration services include:

Pre-Filing Evaluations
- Selecting best form of mark for registration
- Accurate identification and classification of goods and/or services
US Trademark Applications
- Trademarks and Service Marks
- Certification Marks
- Collective Membership Marks
Texas State Trademark Applications
International Trademark Applications
- Madrid Protocol
  - Single filing for multiple countries
- Paris Convention

Prosecution of Trademark Applications

A trademark application must withstanding a stringent examination, and public scrutiny, before a trademark can be registered. During examination, our services include:

Responses to USPTO Office Actions
Prosecution of Madrid Protocol International Applications
Direction of Foreign Associates
Appeals of Final Examiner Decisions
Third-Party Issues
- Clearing conflicting registrations or prior filed applications
  - By filing Cancellation Proceedings
  - By filing Oppositions
- Defending third-party Oppositions
Submission of Evidence Establishing Use of the Trademark
- Required if not suitably submitted at filing

Maintenance of Trademark Registrations

Trademark rights are tied to the owner’s continued proper use of the mark in commerce. The owner of a trademark registration must make periodic filings to establish continued use by submission of sufficient evidence of the use. Our services include:

Consultations to Ensure Continued Use of Trademarks
Timely Maintenance and Renewal Filings
- Declarations of Excusable Nonuse

Trademark Licenses, Conveyances and Acquisitions

Trademark rights can be sold or licensed at any time after the trademark is in actual use in commerce of the relevant goods and/or services, and there is consumer goodwill associated with the trademark. Improperly prepared trademark licenses or sale agreements, however, can cause a trademark to be deemed abandoned and the trademark will no longer be enforceable. Our services encompass all transactions involving trademark rights, including:

Acquiring Rights
- Through a License
- By Purchase
  - Of the trademark rights
  - Of an ongoing business concern
- Due Diligence
  - Searches to determine scope and validity
  - Registration reviews to determine validity of registration
  - Ownership analysis to verify chain of title for trademark and registration
Conveying Rights
- Through Licensing
  - Ensure performance by licensee
  - Protect reversionary interests of trademark owner
  - Limit liability from activities of licensee
  - Franchising Agreements
- By Assignment or Sale of Business
  - Limit liability from activities of purchaser

Contact Us now to discuss trademark licenses, trademark transfers or other trademark agreements with an experienced trademark attorney.

Trademark Disputes

Licensed to practice before the US District Courts for the Western, Southern and Northern Districts of Texas and the US Courts of Appeals for the Fifth and Federal Circuits.

Trademark Litigation (Federal Courts)
- Representing the Trademark Owner (Plaintiff)
- Representing the Party Accused of Infringement (Defendant)
- Appellate Practice Before Federal Appeals Courts
Customs and Border Protection (CBP) Registrations
- Provide early warning of infringing activity
- Prevent infringing products or unlawful gray market goods from entering the US
Challenges (USPTO Examiner and Trademark Trial and Appeal Board)
- Letters of Protest
- Oppositions
- Cancellation Proceedings
  - Applications for concurrent use registrations
- Expungement Proceedings
- Reexamination Proceedings

Trademark Searches and Opinions

Full range of trademark searches as suitable for particular purposes, and corresponding registrability or clearance to use opinions as desired, including:

Searches
- USPTO Federal Applications and Registrations
  - “Knockout” Search to quickly eliminate near exact uses
  - Full USPTO Search for more complete result
- US States Databases
  - Texas
- Common Law Sources
  - Business directories
  - Internet domain names
- Foreign Registrations
Opinions
- Basic Registrability Opinions
  - Relatively small scale, low risk product rollouts
- Clearance to Use Opinions
  - Large scale, high risk product rollouts

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.

San Antonio, Texas