Legal Services

Every trademark application must begin with a Clearance Search. We use the Corsearch online screening database to review U.S. Trademark Office records, as well as trademark records in each state. The success of a trademark application lies in the thoroughness of the Clearance Search. Once a potential trademark is thoroughly searched, the application preparation can begin.

Once a trademark is searched and cleared, the process of drafting the application is next. They key portions of the application include: ownership (entity or individual), actual mark (block letter or with a design), description of goods and/or services, use-based or intent-to-use application, and development of the specimen for use-based applications. This is where you will also be asked to sign a Power of Attorney and a Representation and Fee Agreement.

Occasionally, the Trademark Office issues an Office Action, which is a refusal of the pending trademark applications. There are a few different kinds of Office Actions that can issue:
Non-substantive Office Actions are those actions related to issues with failure to disclaim a portion of your mark, descriptions of logos, or improper entity type.
Substantive Office Actions are those actions related to issues with the identification of goods or services, improper specimens, or improper dates of use. The US Trademark Office may also issue office actions that characterize your mark as merely descriptive, misdescriptive, or merely a surname. Or, you may get a refusal of your application based on “likelihood of confusion.” These actions are more difficult to overcome, depending on the specific nature of your case.

Sometimes, you can file a trademark application for a mark that you are intending to use over the next 1-3 years. If this situation applies to you, an “Intent-to-Use” application can be filed. If there is no use yet of the trademark at the time of filing the application, a Statement of Use will be required before the trademark can register (fees will apply).
If there is still no use of the trademark once the trademark is allowed by the USPTO, then the Applicant can extend the time to file the Statement of Use over the course of the next 3 years in 6-month intervals, with fees being due at each interval.

We offer trademark monitoring services. Please call with specific needs or for more details.

If you are selling or buying a business, you may need to assign trademarks, and record those assignments in the Trademark Office (U.S. and elsewhere).

Filing a Section 8 Affidavit between years 5-6 after registration OR
Filing a combined Section 8 &15 Affidavit between years 5-6 after registration

Trademark registrations are required to be renewed every 10 years, calculated from the date of the registration.

Let us manage your global portfolio of trademarks – no matter how many marks or the number of countries covered.

If you want to extend your trademark rights outside of the U.S., please advise which countries are of interest to you.

We can assist you in negotiating and drafting IP/trademark license agreements that can include trademarks, trade dress, and/or copyrights. The agreements may cover the US or multiple countries. We will assist you with implementing strict controls around quality, distribution and brand protection.

If you are interested in protecting original works of authorship including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture, you may want to file for copyright protection. A Copyright Application can be filed with the Copyright Office, which is part of the Library of Congress. (The Copyright Office is not part of the USPTO.)

IP licensing transactions and agreements, marketing, sponsorship/ promotional agreements, and more.