Practice Overview
Practices

Trademark Prosecution

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Our trademark attorneys routinely counsel clients through the process of brand identification and trademark selection, conducting thorough searches for conflicting marks to ensure successful registration. We also advise on opposing trademark registrations, trademark enforcement, defending clients in trademark matters, and in counseling and litigating a wide range of trade secret and unfair competition matters. We manage the worldwide international trademark portfolios of our clients and maintain relationships with corresponding local trademark counsel in most countries around the world.

Understanding What Can and Should Be Protected

Our intellectual property attorneys will help you determine the best manner to choose and protect your trademarks. We will asses and evaluate a number of factors.  Additionally, we can help you formulate a cost-effective strategy by providing insight into how you can protect your brand by securing the appropriate trademark protection.

Securing Trademark Rights

In this worldwide economy, protection of your trademark rights in other countries has become more important than ever. Failure to do this can result in serious consequences for your brand and your trademarks. Olshan’s trademark attorneys will help guide you through the varied and often confusing laws around the world. While trademark rights in the United States are acquired through use, trademark rights in most foreign jurisdictions are acquired through registration under a “first to file” system.  It is therefore essential that an experienced attorney evaluate your business plans and provide you with advice regarding protection of your trademarks in other countries.

Handling All Necessary Background Research

There are two main questions that should be asked when choosing a new trademark: first, can I use the trademark without violating the rights of others; and second, will my trademark rights be strong enough that I can enforce my rights against others. Olshan’s trademark attorneys will conduct the necessary research to ensure that your trademark is clear to use and will help you choose a strong trademark. 

We will identify any potential issues or conflicts before you invest time and money into developing your brand. If we do come across a possible red flag, we will also help you find an effective solution.

Responding to Office Actions and Appealing Denied Applications

If you already submitted a trademark application and received a rejection, or an “Office Action,” from the trademark office, you still have options. There are many reasons why an application can be denied, and we can often find a way to help you obtain registration of your mark. Our experienced trademark attorneys have handled thousands of trademark applications worldwide and know the best arguments to make to convince trademark examiners to allow your mark to be registered.

Filing and Defending Trademark Oppositions and Cancellations

The trademark laws of the United States and most other countries allow for third parties to oppose registration of another’s trademark or seek cancellation of another’s trademark registration. There are numerous grounds upon which such proceedings may be filed. For US applications, the opposition/cancellation proceedings are handled by the Trademark Trial and Appeal Board, which is a administrative panel of judges within the Patent and Trademark Office. Virtually all other countries have similar panels within their own trademark offices. An opposition or cancellation proceeding often involves a complex proceeding, so it is important an experienced trademark attorney handle the matter for you, whether your mark is being challenged or you are seeking to challenge someone else’s mark.

If your company needs help with any aspect of trademark prosecution, contact us by phone or email to set up an initial consultation.

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