Trademarks or "brands" encapsulate the identity of your company and can be among your most valuable assets. Famous trademarks can be valued in the billions of dollars. Further, trademarks, unlike other forms of intellectual property, can be perpetual in nature. In view of the potential value of your trademarks, retaining high-quality trademark counsel can be crucial in acquiring, protecting, and enforcing these valuable rights.

From start-ups to Fortune 100 companies, Roetzel's Trademark attorneys provide counsel for a wide array of companies. We provide our clients with a full range of trademark services, from counseling concerning the acquisition of your company's trademark rights, to complex federal court litigation involving the protection and enforcement of your rights.

STRATEGIC TRADEMARK COUNSELING AND PROSECUTION

Our trademark practice emphasizes strategic trademark counseling and prosecution. We take the time to understand our clients' business needs and provide them with strategic advice concerning their trademark rights, and we emphasize strategies designed to maximize the value of our clients' trademark registrations.

Trademark prosecution is no routine matter. Our goal is to prosecute our clients' trademark applications with a strategic-eye toward protecting and enforcing their trademark rights, including possible litigation.

TRADEMARK CLEARANCE

Once a proposed trademark is selected, we typically conduct preliminary or "knock-out" trademark searches to determine whether further consideration of the mark is justified. If so, we conduct comprehensive searches using well-established search companies to help determine whether the proposed mark is available for use and/or registration, and provide you with a concise opinion summarizing our findings. Our recommendations are designed to help your company make real-world strategic decisions about what trademarks to use and/or register.

TRADEMARK APPLICATIONS

Assuming you wish to file a trademark application, we work with you to determine the form(s) in which the trademark is to be filed. We also take the time to understand the goods and services to be covered by the application to assist our clients in prosecuting, protecting, and enforcing their trademark rights, both domestically and abroad. We have built a strong network of global foreign trademark associates to assist with the prosecution of foreign applications.

TRADEMARK PROSECUTION

We are not a "prosecution mill." Our goal is not limited to obtaining trademark registrations, but to obtaining registrations that will be most useful in protecting and enforcing your trademark rights.

TRADEMARK MAINTENANCE

We take the maintenance of our clients' trademark registrations seriously. Our goal is not to simply renew your trademark registrations, but to extend the utility of your registrations in the protection and enforcement of your rights. Our Trademark attorneys and paralegals use sophisticated IP docketing software and secured electronic data rooms to communicate with clients to make timely trademark use, renewal, and assignment filings in order to maintain their trademark portfolios.

TRADEMARK LICENSING

We are often asked to prepare or review licenses affecting our clients' trademark rights. We have extensive experience working on licensing matters in a wide range of industries, including the electronics and software industries.

TRADEMARK PORTFOLIO MANAGEMENT

We add value to our clients' trademark portfolios by actively managing them, rather than serving as mere caretakers. We have extensive experience in a wide range of strategic portfolio management activities, including conducting audits, coordinating domestic and international prosecutions, reviewing "watch notices" concerning other companies' trademarks, and developing company trademark policies.

INTERNATIONAL TRADEMARK COUNSELING AND PROSECUTION

We provide comprehensive trademark counseling and prosecution services, not just domestically, but also internationally. We select an extensive network of foreign counsel based on their ability to provide high-quality legal services. At the same time, we do not leave counseling and prosecution matters to foreign counsel alone. Instead, we work closely with foreign counsel to help ensure their vigilance in protecting our clients' rights. In doing so, we take into account a variety of factors, including the desirability of obtaining registrations in various jurisdictions, the availability of our clients' trademarks for use and/or registration in those jurisdictions, and the law of the country in question.

Our People

Representative Services

  • Trademark clearance
  • Trademark applications
  • Trademark prosecution
  • Trademark maintenance
  • Trademark licensing
  • Trademark portfolio management
  • International trademark counseling and prosecution
  • Trademark oppositions and cancellations
  • Trademark co-existence agreements

Representative Matters

  • Managing significant domestic and international trademark portfolios with marks in all regions worldwide
  • Prevailing or obtaining favorable outcomes in numerous trademark opposition matters protecting clients’ trademarks, including those using the “family of trademarks” doctrine
  • Obtaining allowance and registration of numerous trademarks, which were initially substantively refused by U.S. Patent & Trademark Office Examining Attorneys, and getting such refusals reversed in an efficient and cost-effective manner

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