Trademark Litigation

TRADEMARK LAWSUIT? We are your go-to firm.
     If you have been sued for trademark infringement, someone is threatening a suit, or someone is using your trademarks (or something similar), we are your firm.  Although we firmly subscribe to the philosophy that litigation is a last resort, we also know there are times where lawsuits must move forward.  We realize that lawsuits rarely have a winner and are almost never beneficial to either side in the end; However, the undeniable truth is that sometimes lawsuits are unavoidable, whether you are being sued or doing the suing.

     We have significant experience with trademark litigation having had cases big and small in Federal Courts ranging from California, to Texas to Ohio. We can assist you defending your rights. If you feel that you may have an issue, please contact us as early as possible. The earlier we speak with you, the better we can protect your rights, so do not hesitate to contact us as soon as you know that there is even a small potential for a problem.

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EXPERT WITNESS/LITIGATION SUPPORT
    If you are involved in, considering suing someone, or have had a lawsuit threatened, or you are an attorney representing a party  in a trademark or copyright lawsuit, we can assist as an expert witness or by providing consulting with respect to IP law or your case. We have experience as a trademark expert witness and copyright expert witness as well as are vast experience as litigators on intellectual property cases.

MEDIATION AND ARBITRATION
     If you are involved in a lawsuit or are an attorney representing someone in a trademark or copyright lawsuit, why not take a crack at settling?  We can help.  As an experienced IP attorney that has worked with over 1200 clients in both IP transactions and IP litigation matters, we can be an unbiased third party that can help get to the bottom of the dispute and assist in working out a common-sense compromise that both parties can live with.  In the event that mediation is an option or has failed, we can work as a neutral private judge, hear the case and make the call.  In either case, both sides can save significant litigation fees and expenses and can get to a final resolution much faster, without the threat of lawsuits and appeals dragging on for years.

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Avoid Lawsuits with Due Diligence.  We can Help.

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Doing Due Diligence:

    Before a business uses a new logo, name, slogan, branding concept, domain names, etc., it should always engage in due diligence.   This process should include at minimum 1) having a professional search performed by an experienced attorney; 2) registering all trademarks, 3) by enforcing any common law rights obtained, and 4) by making sure a business liability insurance is secured that contains coverage for intellectual property infringement actions (both for defense costs and damages if liability is found). We assist in all of these areas.

Trademark Searches:  The First Step

     Our normal due diligence procedure includes our time-tested, comprehensive process to search federal and state trademark, service mark, fictitious name, trade name, domain names, and corporate name databases, logos, along with other databases with potential information such as , city phone books, press releases, web pages, etc.   We use proprietary search strategies and databases to accomplish these tasks.  We then analyze and evaluate the mark compared to other similar uses and with respect to its registerability and protectability under applicable trademark law and provide a comprehensive analysis. This includes an analysis of the legal “strength” of the mark to determine your relative opportunity to maintain long term legal rights and protection of the mark.

    Search and analysis prior to applying for registration is important and ignoring this step can be very costly. Using a name or logo that is similar to someone else’s could constitute trademark infringement and could result in a very expensive lawsuit (trademark lawsuits can often cost over $150,000 to get through the case if they do not settle). Moreover, you could be forced to stop using mark and thus lose your trademark. If you have to stop using your mark, you not only lose the investment you made in branding and advertising (e.g. the “Goodwill”), you will incur numerous expense in changing to a new name (e.g. new branding design concepts, signage, uniforms, letterhead, web design, business cards, etc.). It is therefore important to conduct a search of your proposed mark and all similar names or marks prior to adopting a mark. In addition, our analysis will provide counseling with respect to what types of marks would be stronger and thus more protected or easier to enforce.

    Our clients are provided with a very comprehensive report that includes summaries, a detailed opinion letter with our complete analysis, and numerous exhibits detailing the search results.  The summaries are helpful and will sum everything up with a “Green” “Yellow” or “Red” light, and we of course will then discuss the results with you.  We generally can have the search done in about a week or two, but can also do an express search for an additional fee.

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Trademark Registration:  A No-Brainer.

    If the analysis is positive then the next step is to file the application to register each the mark with the United States Patent and Trademark Office (USPTO).  Each logo, word, tagline, slogan etc. must be registered in every class that applies.   The registration process takes about nine months to a year, although the rights in the mark are retroactive to the filing date if you get it.   Additional work may be needed in the prosecution of the mark, such as responses to office actions which are often needed. However, most of this work is minimal.  If there were to be a big problem, a proper search and analysis would likely identify these potential hurdles, and  we would notify you in our search and opinion letter of this potential if identified.   If there were anticipated problems, you would likely want to consider other branding strategies. For this reason, it is rare to incur any further significant fees, and if it is likely, you will be moving forward with full knowledge of this likelihood. 

    If you are ready to start using a new mark now or already using it, then you can proceed with a Section 1a application, which means that you are using the mark in commerce. We will need an example, such as a point of sale display, a tag on apparel, or a web store or advertisement showing the product for sale.

    If not, we can do a 1b “intent to use” application. However, you will incur small fees in 6 months to a year to file an allegation of use or extensions of time if for up to three years.

    Registrations on the state level are not as important as a USPTO registraiton, but should be done if possible. These registrations should include at least a trade name or fictitious name, and I recommend also registering the mark in the state as a trademark or service mark. 

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TRADEMARK AGREEMENTS
     You own it—now what? If you own a work, such as a song or piece of artwork, how do you protect it and how do you exploit it? Let us counsel you on the different types of agreements that you might encounter; for example, license agreements, sales and transfer of rights agreements, co-existence agreements, Consent Agreements, franchising issues, etc.

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The first step to protecting your intellectual property is the search.

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