We work hard to distill and shape our knowledge into practical business advice for our clients. Even as U.S. trademark law has remained relatively static, the practice area itself is flourishing with the emergence of branding as a more evolved concept. While centered on trademark and unfair competition law, branding initiatives often require consideration of publicity law, copyright, and advertising law. While the provincial trademark will always hold considerable value, and while traditional trademark practices will remain critical to secure and protect rights, “old ways” may prove insufficient if the brand identity crosses a number of products, if it is a high profile company, or its use is on or in connection with consumer products. At BSTZ, we recognize the changes and want to educate and assist our clients to avoid pitfalls, but more than keeping our clients mindful of a good defense, we want to assist our clients to take advantage of these changes – in effect, to help clients capitalize on this evolution. The world of branding is upon us, and we look to this new era as means to assisting our clients in deriving greater value through developing overall branding strategies.
We understand the value of any company’s brands and the effort it takes to protect them. The attorneys in our Trademark Practice Group have a wealth of knowledge and experience at counseling clients in all aspects of domestic and international trademark law. Most of our trademark attorneys worked as Trademark Examining Attorneys at the United States Patent and Trademark Office (USPTO) before joining BSTZ. Our areas of expertise include:
- Registration and Portfolio Management
- Branding Advice and Strategy
- Agreements and Due Diligence
- International Trademark Protection
Registration and Portfolio Management
Securing trademark registrations is major component of any trademark protection strategy. With their wealth of USPTO experience, BSTZ attorneys are experts at obtaining registered protection for our clients’ trademarks. We guide clients through the registration processes, prepare effective legal arguments on their behalf when necessary, and stay the course on meeting client goals. We pride ourselves on understanding our clients’ objectives and giving practical advice, and we keep our focus on how to best serve the clients’ needs. We manage trademark portfolios of all sizes, from small local clients with single applications, to global companies with hundreds of registrations in trademark offices around the world. We use our skills, our Firm’s infrastructure, and our technological savvy and support to secure, maintain, and protect registrations worldwide. Always mindful of law changes, statutory and treaty expansions, and never forgetting the constant proliferation of branding issues in the digital world, we are forward-looking as to new opportunities for protection just as we are careful guardians of our clients’ registration rights and maintenance of such rights through renewal requirements.
Before our clients file an application or invest resources in a trademark launch, they rely on us to anticipate potential problems. We typically conduct trademark elimination searches and web searches as a first defense to unearth problems. After that, many clients want the security of having us secure availability searches which provide a more comprehensive review – such searches review not just federally registered trademarks, but also State trademark registries, business and trade name databases, domain names, and the web generally to identify common law (unregistered) marks or other users whose existing rights may hold rights that would challenge the new mark. We try to anticipate problems – while most disputes are resolved out of court, for a new product launch, even a claim of trademark infringement should be avoided. Our searches can also extend internationally when global use in anticipated. We consult closely with clients to analyze the possible risks and determine how best to proceed.
Branding Advice and Strategy
BSTZ assists its clients in brand development to the level of service the client desires. We regularly consult with clients on the advantages and disadvantages of certain marks at their earliest stages; we provide counsel as to how to create the strongest brand, and how to develop and build the most valuable long-term assets. Once marks are in use, we employ various strategies to ensure the brand is protected. Protection through registration provides owners many rights, and we stay with our client to give practical advice to not only secure rights but to protect against infringement and counterfeiting.
Trademarks often become very valuable assets. Too, they must be protected in order to maintain their value and their strength. To protect rights sometimes requires action. Trademark owners must prevent third parties from trading on their goodwill or otherwise damaging their value to our clients. We initiate enforcement actions against infringers and oversee related investigations. We also regularly engage in formal opposition and cancellation proceedings before the U.S. Trademark Trial and Appeal Board to prevent similar trademarks from registering. Many of our clients have us review regular vigilance watches to address potential infringement as soon as possible.
The web, social media, and the digital age pose new challenges to brands. We anticipate the evolution will continue, and we are there for our clients as they find themselves in this new environment of enforcement challenges. Our attorneys have extensive experience with online notice-and-takedown procedures, social media dispute actions, domain name vigilance, and UDRP arbitrations.
Agreements and Due Diligence
We assist our clients in drafting and consulting on a wide variety of intellectual property agreements, including licenses and co-existence agreements. We also conduct trademark due diligence in connection with trademark acquisitions and other corporate transactions.
International Trademark Protection
Global brands demand global protection, and we increasingly advise our clients – based in the U.S. and in other countries – on international protection and enforcement for their trademarks. We maintain a network of select international associates with whom we work closely on non-U.S. trademark matters.
There are many factors to consider before filing foreign trademark applications, including whether to file directly in each country of interest, or to instead take advantage of the United States’ inclusion in the Madrid Protocol, which can allow clients to file in many key markets at once. Regardless of the filing method, we are well-versed in the trademark procedures and obstacles in many countries, and oversee the enforcement of our clients’ rights globally when necessary.