Trademarks

Trademarks

Intellectual property is an important part of every business today. While we work with clients concerning their copyrights, trade secrets, noncompetes, and other intellectual property, we specifically focus on trademarks. Trademarks for small businesses are most commonly distinctive marks like names and logos, but can also include product and store designs, or colors that are distinctive. These distinctive marks indicate the source of goods or services traded in commerce. Trademarks are an important asset for small businesses that often represent their goodwill and hard work building their reputation and brand in the market. We assist clients with obtaining, protecting, and managing their trademark assets.

At the beginning, we assist clients in identifying marks that are distinctive. We do not design or create marks. We work with clients and their advisors to consider the legal viability of marks as they work to create valuable brands and distinguishing identifiers. This involves legal analysis regarding the distinctiveness of marks, suggestions for obtaining and maximizing distinctive marks, and the evaluation of marks for registrability with the United States Patent and Trademark Office (USPTO).

After carefully considering the potential legal protection available to a mark, if desired and advisable, we work with clients to apply for registration of marks with the USPTO. We handle the process from working on a suitable description of goods or services and selecting classes for application, to creating and filing an application. After application, we monitor the process and represent clients to the examining attorney if there are objections or office actions. Finally, if the mark passes the review and is published on the registry, we present the client with their certificate of registration and calendar deadlines necessary to maintain the mark’s registration.

In addition to evaluation and registration, we work with clients on maintaining and protecting their registered and common law marks. We advise clients on how to make effective use of their marks, manage the use of their marks, and maximize the legal protections afforded to them within their agreements and licenses. When requested, we work with clients to monitor the improper use of their marks, or the attempted registration of potentially confusing marks by third parties. Finally, we help clients enforce their mark against third parties who are infringing, and we advise and defend clients when their mark is challenged.

Every small business has a name or logo. Unfortunately, sometimes the lack of attention to the name or logo will invite challenges, or even lawsuits, from third parties that undermine the business. However, when the business is intentional about its mark, and engages in some basic planning, it can select and invest in a mark to create an important asset that increases the value of the business. If you want to know more about how you can invest in your mark, give us a call.

“Doug was invaluable in helping us through a difficult time of being sued for a[n alleged] trademark infringement.

He was able to explain the options we faced in a logical and th[o]rough manner that gave me confidence that he was the right attorney to represent us.

Lawsuits can be very time consuming and we felt Doug kept us in the ‘loop’ when needed and took care of the procedural issues without involving us unnecessary[il]y. Also, because the suit was based in another state, he interviewed and found an attorney in that state that would best fit our needs and actually helped us save on expenses because the local attorney could handle many issues on our behalf locally.

Throughout the suit, Doug provided strategies that worked to minimize our defense cost and was able to negotiate a better settlement than I expected.

We have continued to use Doug’s attorney services for our business and trademark needs since the settlement. Again, Doug has continued to impress us with his knowledge of the law, strategies and his ability to make things happen. Recently, Doug helped us protect our trademark, without litigation or significant cost. Thanks again.

Please feel free to contact me if you are still undecided on whether or not to hire Doug.”

– Mark, Owner Rodgers No Ka ‘Oi d/b/a Trailstone Insurance Group