Trademarks and service marks are vital symbols of the goodwill of a particular business. They are all around us, but are subject to abuse, confusion and dilution. To remain strong, they must be aggressively enforced. The Trademark attorneys at Polsinelli Shughart PC are skilled at preserving, protecting and enforcing our clients’ brand identity and goodwill.
A trademark is anything that provides a connection between your products and services and your company. This could be a word, a phrase, a logo, a design, a sound or a color that is identifiable with you or your business and distinguishes your business from others. As defined by the U.S. Patent and Trademark Office: “A trademark is a word, name, symbol or device used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product.” Once you have selected, designed or adopted the most suitable trademark or service mark, it must be properly filed, prosecuted and processed.
Our trademarks lawyers have researched, prepared and successfully filed thousands of trademark and service mark applications for a broad range of clients, including national manufacturing and service entities, insurance companies, health care providers, Internet publishers, economic development agencies and other business interests. In addition, our trademarks practice is international in scope. We handle the registration of marks in countries around the world. We maintain relationships with a variety of local law firms and practitioners to enhance our international trademark knowledge and to serve our clients with their entire international needs. Finally, we provide legal representation in adversary proceedings, either at the Trademark Office, in the courts or through negotiated settlements and concurrent use arrangements.
Our trademarks practice consists of four categories and are detailed below:
- Protection - In combination with the evaluation and clearance of trademarks, and the registration of trademarks with the USPTO, we work with clients to establish branding and policing programs, as well as usage guidelines, and provide guidance on infringement issues – both on a proactive and defensive basis. We take a proactive, business-focused approach when dealing with and protecting a client’s intangible assets, in combination with trademark filings, trade dress or domain names. When necessary, we also protect our clients' valuable trademarks, trade dress or Internet domain names in court, before the USPTO or in foreign jurisdictions. We are accustomed to sending or responding to, as the case may be, cease and desist letters and the conduct of negotiations with third parties on issues of infringement or other violations. We have also initiated or defended a wide range of administrative and court proceedings to protect our clients' trademarks and trade dress in combination with our intellectual property litigation practice group.
- Counseling - Our trademark filing and maintenance service includes clearance and registration of trademarks and service marks before the USPTO and state and foreign trademark offices. We can protect names, logos, designs, phrases and other devices developed by our clients, and provide legal guidance on the protection of goods, services and Internet issues. We provide preliminary and full clearance searches, provide opinion letters on trademark availability and infringement, and provide guidance on trademark usage and monitoring. In addition, through counseling clients in the acquisition, transfer and licensing of strategic marks, we help our clients build and manage trademark portfolios that create ongoing value for their businesses. At each stage of the process, we do our best to counsel clients against the adoption of trademarks that cannot be protected or that involve an undue risk of litigation or potential infringement claims.
- Prosecution/Defense - Our trademarks practice prepares and files a wide variety of trademark and service mark applications with the United States Patent and Trademark Office and supervises the registration of trademarks on a worldwide basis. We maintain a computerized docket of trademark filings and registrations and regularly provide status reports on trademark portfolios. These updates enable our clients to be well informed about the status of their portfolio and to remain abreast of deadlines for the prosecution and maintenance of their marks. We also handle the opposition and cancellation of third-party trademark applications and registrations before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. In addition, we have also defended clients against claims that their trademarks or trade names may be confusingly similar to third-party trademarks or trademark registrations.
- Transactions - In addition to the creation and maintenance of trademarks, our group also routinely provides advice and guidance on franchise or licensing opportunities, as well as with respect to the evaluation of trademark and intellectual property portfolios involved in a merger/acquisition, asset sale or joint venture transaction. Our group has interfaced with our corporate practice to handle the specialized issues with evaluating, acquiring or transferring an intellectual property portfolio, or the securitization of the portfolio as part of a loan transaction. Our transactional attorneys also negotiate and finalize a broad range of contracts and agreements for our clients, including those in established areas such as merchandising, product placement, non-compete clauses, distribution, and manufacturing rights, as well as newer fields such as Internet distribution and marketing. We also regularly review clients’ advertising and promotional materials to be certain that claims are supported by the necessary level of substantiation.
Our trademarks attorneys know how important protecting the creations of individuals and companies are to the lifeblood of innovation and the ability to reap its rewards. We are just as comfortable managing large international trademark portfolios for some of the world’s best-known corporations as we are helping to develop unique and protectable trademarks for smaller and start-up companies. That’s why we have experience in a wide range of resources and services to protect intellectual property of all kinds:
- Trademark searches, applications, prosecution and enforcement
- Trade dress
- Trade secrets
- Unfair competition
- Licensing and merchandising
- Electronic commerce, e-business and Internet law
- Rights of publicity and celebrity
- Trademark and copyright litigation
Those steps are only the beginning. Polsinelli Shughart attorneys are skilled at prosecuting and defending oppositions, cancellations, infringement claims and controversies involving trademarks and service marks and the closely linked intellectual property areas of trade dress, business identity and Internet domain names. As an aside, our trademarks practice maintains over 2,500 active federal and state trademark registrations and applications on behalf of our clients.