TRADEMARKS
Protect The Words and Symbols That Identify Your Business.
Trademarks protect the names, logos, slogans, and other source identifiers that distinguish a company's goods and services in the marketplace. As a business grows, its trademarks can become some of its most valuable intellectual property, representing the goodwill and reputation associated with the brand.
We assist businesses, entrepreneurs, and brand owners throughout the trademark lifecycle, from selecting and clearing a new mark through registration, prosecution, portfolio management, licensing, and enforcement. Our approach considers not only whether a mark can be registered, but how the mark will be used, what goods and services it should protect, and how the resulting trademark rights fit within the client's broader business strategy.
TRADEMARK SEARCHES
Protect The Words and Symbols That Identify Your Business.
Trademarks protect the names, logos, slogans, and other source identifiers that distinguish a company's goods and services in the marketplace. As a business grows, its trademarks can become some of its most valuable intellectual property, representing the goodwill and reputation associated with the brand. We assist businesses, entrepreneurs, and brand owners throughout the trademark lifecycle, from selecting and clearing a new mark through registration, prosecution, portfolio management, licensing, and enforcement. Our approach considers not only whether a mark can be registered, but how the mark will be used, what goods and services it should protect, and how the resulting trademark rights fit within the client's broader business strategy.
A Search is More Than Finding The Same Name
Searching the USPTO database or the Internet for an exact match is a useful starting point, but it is not a complete trademark search. Trademark conflicts do not require two marks to be identical. The relevant question is generally whether the marks are sufficiently similar, when considered in connection with the respective goods or services, to create a likelihood of confusion.
Small changes in spelling, spacing, punctuation, or pronunciation do not necessarily avoid a conflict. Two marks may create similar commercial impressions even though they are written differently, and marks containing additional words or design elements may still be considered confusingly similar. Effective searching therefore requires identifying variations and related marks that may not appear in a simple exact-match search.
Understanding How The USPTO Will Evaluate The Mark
USPTO examining attorneys do not evaluate trademarks in isolation. During examination, an examining attorney searches for potentially conflicting marks and evaluates likelihood of confusion by considering the relevant factors, including the similarity of the marks and the relationship between the identified goods or services. Depending on the circumstances, considerations such as trade channels, purchasers, and the overall commercial impression of the marks may also be relevant.
We approach trademark searching with that examination process in mind. Rather than asking only whether the proposed mark already appears in the federal database, we consider what an examining attorney is likely to find, which existing marks may be cited against the application, and how significant those potential obstacles may be.
Federal and Common-Law Searches
A federal trademark search focuses on applications and registrations filed with the United States Patent and Trademark Office. We evaluate potentially relevant marks, their goods and services, registration status, and other information that may affect the availability of the proposed mark or the likelihood of obtaining federal registration.
Federal records, however, do not tell the entire story. Trademark rights can arise through use even without federal registration. A common-law search therefore looks beyond USPTO records to identify relevant marketplace uses, including business names, websites, products and services, state records, and other sources that may reveal existing trademark rights.
Search Before You Invest
The value of a trademark search is not simply learning whether an application can be filed. It is understanding the risk before investing in the brand. Discovering a significant conflict after launching a product, developing a website, purchasing advertising, printing packaging, or building customer recognition can be substantially more disruptive and expensive than identifying the issue during the naming process.
A trademark search cannot guarantee that a mark will register or that another party will never assert rights against it. It can, however, provide valuable information about the existing trademark landscape, potential registration obstacles, and infringement risks so that the business can make a more informed decision before moving forward.
TRADEMARK APPLICATIONS & REGISTRATION
Establishing Protection Around Your Brand
Trademark rights can arise through use of a mark, but registration can provide important additional protections and advantages. We help clients determine whether state or federal registration is appropriate and prepare trademark applications with the scope of the client's business, goods and services, geographic reach, and future plans in mind.
Federal Trademark Applications
Federal registration through the United States Patent and Trademark Office can provide significant benefits to businesses using, or intending to use, a mark in interstate commerce. We prepare applications for word marks, logos, slogans, and other protectable source identifiers and advise clients regarding identification of goods and services, classification, specimens, ownership, and other filing requirements.
Federal applications may generally be based on current use of the mark in commerce or a bona fide intent to use the mark in commerce. For businesses preparing to launch a new brand, an intent-to-use application can provide an important mechanism for establishing an earlier filing date before commercial use begins, subject to satisfying the subsequent requirements for registration.
State Trademark Applications
State trademark registration may be appropriate when a business operates primarily within a particular state or when state registration complements other trademark rights. We assist clients with state trademark applications and evaluate how state registration fits within the client's geographic use, federal registration strategy, and broader trademark portfolio. State and federal registrations provide different rights and benefits. The appropriate filing strategy depends on where and how the mark is being used, the nature of the business, and where the client expects the brand to grow.
From Application to Registration
Filing the application is only the beginning of the registration process. A federal application is reviewed by a USPTO examining attorney and may encounter substantive or procedural issues before registration. Intent-to-use applications also require additional filings demonstrating use of the mark before a registration can issue.
We manage the application from filing through registration, including monitoring deadlines, addressing filing requirements, responding to USPTO correspondence, and advising clients regarding specimens and evidence of use. Once registered, we can also assist with the maintenance and renewal filings necessary to keep the registration in force.
Do You Need to Register a Trademark?
No, but registration matters. Trademark rights can arise simply through use of a mark in commerce, even without state or federal registration. These common-law rights, however, may be limited by where and how the mark is actually used. Federal registration can provide significant additional benefits, including nationwide constructive notice, presumptions of ownership and exclusive rights, and stronger tools for protecting and enforcing the brand. For businesses investing in a name, product, or brand identity, registration can provide valuable protection as the business grows.
OPPOSITION & CANCELLATION
Protecting Your Rights Before The TTAB
Trademark disputes do not always take place in federal court. The Trademark Trial and Appeal Board, or TTAB, hears proceedings concerning whether a trademark should be permitted to register or whether an existing federal registration should be cancelled.
We represent parties in trademark opposition and cancellation proceedings, including both trademark owners seeking to protect their rights and parties defending applications or registrations against a challenge. These proceedings may involve likelihood of confusion, priority, descriptiveness, abandonment, fraud, or other grounds affecting registrability.
An opposition may be appropriate when a newly published application threatens an existing trademark owner's rights, while a cancellation proceeding may be used to challenge an existing registration when legally sufficient grounds exist. We evaluate the parties' marks, priority and use, registration histories, marketplace evidence, and business objectives to develop a strategy for pursuing, defending, or resolving the dispute.
LICENSING AND ENFORCEMENT
Getting The Value Out of Your Trademark
A trademark can become a valuable business asset as the goodwill associated with a brand grows. We assist clients with licensing their trademark rights and enforcing those rights against unauthorized or confusing uses.
Trademark Licensing Agreements
Trademark licenses allow a brand owner to authorize another party to use its marks while retaining ownership of the underlying rights. We assist with trademark licensing agreements involving permitted uses, territory, duration, exclusivity, quality control, royalties, and termination. Careful licensing is particularly important because trademark owners must maintain appropriate control over the nature and quality of the goods or services offered under their marks.
Trademark Enforcement
When another party adopts a confusingly similar name, logo, or other mark, early action can help prevent consumer confusion and protect the goodwill associated with the brand. We evaluate potentially infringing uses, likelihood of confusion, priority, geographic rights, and available enforcement options. Depending on the circumstances, enforcement may include cease-and-desist correspondence, negotiated coexistence or settlement agreements, online marketplace and platform procedures, TTAB proceedings, and state or federal litigation.
Responding to Trademark Claims
We also represent businesses accused of trademark infringement. We evaluate the asserted trademark rights, the parties' respective uses, priority, similarity of the marks, goods and services, and other relevant likelihood-of-confusion considerations to determine the strength of the claim and develop an appropriate response. Where possible, we look for practical resolutions that protect the client's ability to continue operating while managing the costs and risks of a trademark dispute.
DOMAINS
Domain Name Disputes
Protecting Your Brand Online
A domain name dispute may arise when someone registers a domain that incorporates or imitates a company's name or trademark. These domains may be used to operate fraudulent copycat websites, impersonate a legitimate business, sell counterfeit goods, conduct phishing or other scams, divert customers to a competitor, or create the false impression that a website is affiliated with or authorized by the trademark owner. In other cases, a domain may be registered primarily to prevent the rightful brand owner from obtaining it or to demand payment for its transfer.
When a domain creates confusion or threatens a brand, specialized domain-name dispute procedures may provide a relatively efficient mechanism for seeking transfer or cancellation without traditional litigation. The appropriate procedure depends in part on the domain extension and the circumstances surrounding the registration and use of the domain.
UDRP Proceedings
The Uniform Domain Name Dispute Resolution Policy, or UDRP, provides a procedure for resolving disputes involving many common top-level domains, including .com, .net, and .org. We represent trademark owners in UDRP proceedings involving cybersquatting and other abusive domain registrations, including developing evidence of trademark rights, lack of legitimate interests, and bad-faith registration and use.
.US Domain Disputes
Disputes involving .us domain names are governed by the usTLD Dispute Resolution Policy, or usDRP. Although similar to the UDRP, the usDRP contains its own substantive requirements applicable to the .us country-code top-level domain. We assist trademark owners in evaluating and pursuing .us domain disputes, including analyzing trademark rights, the registrant's claimed rights or legitimate interests, and evidence concerning the registration or use of the disputed domain.
.CA Domain Disputes
Canadian .ca domain names are governed by the CIRA Domain Name Dispute Resolution Policy, or CDRP. We have experience with .ca domain disputes and assist clients in addressing cybersquatting and other registrations that conflict with their trademark rights, including fraudulent or misleading domains directed toward Canadian customers.
Domain Name Strategy
Not every domain dispute should be handled the same way. Depending on the domain extension, identity and location of the registrant, manner in which the domain is being used, and the client's objectives, the appropriate strategy may involve a UDRP, usDRP, CDRP, cease-and-desist correspondence, negotiated transfer, or litigation. Where a domain is being used for fraud, impersonation, or counterfeit activity, additional action involving hosting providers, registrars, payment processors, search engines, or other online platforms may also be appropriate.
Our objective is not simply to recover a domain name. It is to stop the misuse of the brand, reduce customer confusion, and restore control over the company's online identity.
E-COMMERCE
Protecting Your Brand Where Customers Shop
Online marketplaces provide businesses with unprecedented access to customers, but they also create opportunities for counterfeit products, unauthorized sellers, copied listings, and misuse of trademarks and other intellectual property. We help brand owners establish and use the intellectual property rights and platform tools available to protect their products and brands across major e-commerce marketplaces.
Amazon Brand Registry
Amazon Brand Registry provides eligible trademark owners with tools for managing and protecting their brands on Amazon. We assist clients with the trademark strategy underlying Brand Registry, obtaining the registrations necessary to establish brand rights, enrolling eligible brands, and addressing intellectual property issues that arise on the platform.
Once a brand is established, we can assist with enforcement against potentially counterfeit products, unauthorized uses of trademarks, infringing listings, and other marketplace activity that may affect the brand. Where patent rights are involved, we can also evaluate Amazon-specific patent enforcement procedures and other available remedies.
Walmart and Other Marketplaces
Brand protection should not stop with a single marketplace. Products and sellers frequently operate across Amazon, Walmart Marketplace, TikTok Shop, eBay, and other e-commerce platforms. Each platform maintains its own intellectual property policies, reporting mechanisms, and evidentiary requirements.
We assist clients in developing coordinated marketplace enforcement strategies rather than treating each infringing listing as an isolated problem. This can include documenting trademark and other IP rights, identifying recurring sellers and products, preparing infringement reports, submitting platform takedown requests, and escalating matters when platform procedures alone do not adequately address the infringement.
Building an E-Commerce Enforcement Strategy
Effective marketplace protection begins before infringement occurs. Trademark registrations, patent rights, copyright registrations, ownership records, authorized-seller information, and evidence concerning genuine products can all become important when enforcement is necessary. We help clients organize their intellectual property portfolios and enforcement procedures so they are better positioned to respond when counterfeit or infringing products appear online.
MONITORING & TAKEDOWNS
Finding Infringement Before It Becomes a Bigger Problem
Online infringement can appear quickly and across multiple platforms. Counterfeit products, unauthorized trademark uses, misleading advertisements, impersonating accounts, and infringing marketplace listings can divert customers and damage a brand before the trademark owner becomes aware of them. We help clients actively monitor their brands and take action when problematic uses are identified.
Constant Brand Monitoring
Depending on the needs of the brand, we can conduct recurring daily or weekly searches for potentially infringing activity. Monitoring may include searches for trademark and business-name use, counterfeit products, unauthorized sellers, confusingly similar listings, and other uses that may interfere with the client's brand.
We can also provide regular reporting that identifies potentially problematic uses, records the relevant sellers, listings, advertisements, or accounts, and tracks enforcement activity and takedown results. This provides clients with a continuing view of how their brands are being used online rather than relying on infringement to be discovered by customers or employees.
Marketplace Takedowns
We assist with intellectual property complaints and takedown requests involving platforms such as Amazon, Walmart Marketplace, TikTok Shop, eBay, and other online marketplaces. Depending on the activity involved, enforcement may be based on trademark, patent, copyright, counterfeit, or other applicable intellectual property rights.
Our approach also looks for patterns across platforms. The same seller, product, imagery, or brand misuse may appear on multiple marketplaces under different accounts. Identifying those relationships can help move enforcement from repeatedly addressing individual listings toward a more coordinated strategy.
Google Search & Online Advertising
Trademark misuse can also occur before a customer ever reaches a marketplace. Search results and online advertisements may use a company's name or trademarks to divert traffic, impersonate the brand, promote counterfeit goods, or create confusion concerning the source or affiliation of products and services.
We evaluate potentially infringing uses appearing through Google Search and online advertising and pursue available reporting, complaint, and takedown procedures where appropriate. Where platform remedies are insufficient, we can evaluate direct enforcement against the responsible advertiser, website operator, seller, or other party.
Ongoing Enforcement & Reporting
Takedowns are often not a one-time event. Sellers may create new listings, change account names, move to another marketplace, or reappear after earlier listings have been removed. For clients requiring ongoing brand protection, we can combine recurring monitoring, documented enforcement, follow-up searches, and reporting into a continuing program.
The objective is not simply to remove an individual listing. It is to identify recurring infringement, document enforcement activity, and develop a repeatable process for protecting the brand across the online marketplace.
