At BSTZ, we understand your investment in – and the overall value of – naming products, companies, processes and other key branding aspects of your business. 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:
- Trademark clearance
- Maintenance of registrations
- Co-existence agreements
- Trademark due diligence
We maintain a network of select international associates, with whom we work closely on non-U.S. trademark matters.
Clearance and Prosecution
Prior to filing an application for federal registration, we recommend conducting a trademark availability search to determine whether the proposed mark is available for the client’s use and registration. The availability search includes:
- Federal Register
- State trademark registries
- Common law and trade name database
- Domain names
Our attorneys analyze the results and provide our clients with an availability opinion. If a mark is determined to be available, preparation and filing of an application for federal registration typically follows. Our team monitors office actions and prepares responses, and upon registration, meets the necessary docket deadlines for filing of use affidavits and renewals. Most importantly, we work closely with our clients to develop trademark protection strategies, manage trademark portfolios, and maintain registrations. Reports on the status of the client’s registered and pending marks before the various trademark offices throughout the world are regularly reviewed and periodically forwarded to the client.
The U.S. accession to the Madrid Protocol presents a unique opportunity for clients to seek international registration of their marks through the Madrid system. We are well versed with Madrid procedures and the various considerations a trademark owner must contemplate prior to determining whether to file a Madrid Protocol application, a foreign national application, or an application to register a mark in the European Union (CTM). We work with our solid network of international associates to handle national and CTM trademark filings, oppositions, cancellations, and litigation and anti-counterfeiting activities outside the U.S.
Protecting Your Company’s Goodwill
We diligently protect our clients’ goodwill and offer multiple services to protect our clients' marks.
Of utmost importance is policing against infringement of a client’s trademarks. A client may request a watching service, which continually searches for identical or similar marks worldwide and submits regular reports to BSTZ.
Should the watching service uncover a potentially infringing mark, we advise our client and provide counsel as to the course of action to be undertaken to abate such infringement, including preparing cease and desist letters where appropriate and pursuing all legal remedies.
Internet Domain Names
With the importance of the Internet in today’s business environment, a significant part of our trademark practice is dedicated to the acquisition and protection of domain names. Our attorneys are experienced at representing clients in domain name and cybersquatting disputes including through ICANN’s (Internet Corporation for Assigned Names and Numbers) arbitration procedures.
We regularly handle a variety of agreements concerning intellectual property, including license agreements and coexistence agreements, and we are experienced in conducting trademark due diligence in connection with acquisitions or other corporate transactions.