Timothy J. Feathers 816.691.2754e-mail| vCard
A company's name and the goodwill associated with that name are often the company's most valuable assets. Likewise, the trademark associated with a product -- whether it is a word mark, symbol, color, sound, or configuration -- can be invaluable. Our intellectual property attorneys provide our clients with advice, counseling, and litigation services to create and protect their trademarks, branding, advertising, and marketing programs both domestically and abroad. Our clients range from start-up technology companies to well-established brick-and-mortar companies, in an array of industries ranging from sporting goods companies to restaurant chains.
Scope of Service Our intellectual property lawyers have expertise in every aspect of trademark protection and enforcement: Trademark selection and development advice Trademark availability searches and opinions Trademark applications (both domestic and foreign) Trademark licensing and assignment agreements Trade dress protection and counseling Trademark watches Cease and desist letters Trademark litigation Of Note In the last few years alone, our attorneys have successfully initiated and defended over fifty trademark opposition proceedings before the Trademark Trial and Appeal Board (TTAB). Trademark Selection and Development Advice Selecting "Strong" MarksWe understand that selecting a trademark will often define the image of a company or product. Aside from the many marketing considerations in selecting a trademark, we counsel clients in choosing a distinctive logo, name or mark that will give our clients strong rights against competitors. "Knockout" SearchesOur attorneys also counsel clients in selecting a trademark that is not confusingly similar to a mark or name already in use, especially by a potential competitor. In the United States, there is a three-tiered trademark hierarchy of common law, state and federal trademark rights. Consequently, trademark searching can be one of the most complicated areas of the trademark practice. While there is no established procedure for selecting a mark for registration, our attorneys have implemented highly effective processes for assessing the risks involved in the use and/or federal registration of a given mark. The starting point for trademark selection is often a "screening" or "knockout" search. Our lawyers and paralegals frequently perform in-house trademark screening searches of trademarks using state-of-the-art software with carefully planned searching strategies in order to determine the existence of a trademark that would likely bar registration or use. Most of these searches can be performed in a very short time period. Trademark Availability Searches and Opinions When something more than an in-house "screening" search is desired, our intellectual property attorneys have a number of specialized in-house databases and outside search firms in the U.S. and abroad at their disposal. Thus, our lawyers are able to provide our clients with comprehensive search reports involving: Federal RegistrationsThese reports include federally registered marks, pending applications, and canceled or expired marks. State RegistrationsThese reports include trademarks registered in one or more states. Common Law UsesThese reports include business name listings, trade publications and Internet domain name registrations. Foreign RegistrationsThese reports may include "worldwide" searches as well as searches from specific foreign countries. Our attorneys then carefully analyze these searches, assessing the relative risks and benefits associated with the selection and use of the proposed trademark. Our analysis may include an evaluation of potentially conflicting marks found in the search, as well as counseling on other factors which may impact upon registrability. Thus, we continually counsel clients on all aspects of selecting a trademark. Trademark Applications (Domestic) Preparation and FilingAfter a client decides to pursue a state or federal registration of a mark, our attorneys and administrators work with the client to have the trademark application accurately cover the client's actual or proposed use of the trademark. At the same time, our attorneys strive to have the trademark application be as broad as possible in light of other trademarks uncovered in any search performed. Collectively, our attorneys have filed over 2,000 federal trademark applications with the United States Patent & Trademark Office, which includes both "use" applications and "intent-to-use" applications. ProsecutionAfter the initial filing of the trademark application, our trademark practitioners work closely with the Trademark Office in "prosecuting" the application. Because the application process typically takes eighteen months to twenty-four months, our trademark team often conducts periodic status inquiries with the Trademark Office in order to ensure that the application is properly progressing through examination. During prosecution, our attorneys act as advocates before the Trademark Office. Our attorneys frequently correspond or speak with the Examining Attorney about inquiries regarding: (1) the description of goods, (2) the strength of the mark, and (3) arguments concerning "conflicting" marks cited by the Examining Attorney. Once a mark is approved by the Examiner, the mark is published for opposition by third parties in the Trademark Office's Official Gazette. As discussed below, if unopposed, then the mark will become registered. Our attorneys are also experienced in appealing final adverse decisions of Trademark Examiners to the Trademark Trial & Appeal Board (TTAB). These ex parte appeals require the filing of appeal briefs and may involve a formal hearing before the TTAB in Washington, D.C. if the client so desires. MaintenanceOnce a mark is registered, our attorneys help our clients protect and maintain their trademark rights by docketing and filing affidavits of continued use, renewals, and statements of "incontestability" with the Trademark Office. We also counsel clients on their advertising materials, marketing brochures, promotional materials, and Web sites for appropriate trademark usage and proprietary rights notices. In addition, we can also provide comprehensive reports to clients to ensure that they know what marks they have protected. Trademark Applications (Foreign) Although our firm is largely a regional law firm, many of our clients are national and international, with business interests throughout the world. Our attorneys assist clients in understanding the various options available for foreign trademark protection, such as obtaining a regional European Community Trademark (often called a "CTM" application, which covers several countries in Europe) versus individual country registrations. Working with our extensive network of foreign associates, our attorneys are responsible for literally thousands of foreign trademark applications and registrations throughout the world Trademark Licensing and Assignment Agreements Our clients frequently ask us to review, draft, and/or negotiate trademark assignment agreements, trademark license agreements, distributorship agreements, and marketing agreements. We counsel our clients about the selection of exclusive versus non-exclusive licenses, the appropriate term for the agreement, payments and royalties, reporting, auditing, sublicensing, and quality control issues that may need to be addressed in such agreements. In many instances, we also record the trademark transfer document with the U.S. Patent & Trademark Office or the appropriate foreign registry. Trade Dress Protection and Counseling Our attorneys also advise clients in the beginning stages of product and packaging design regarding potential trade dress protection. In general, if a company has a product with either an inherently or acquired distinctive decorative look -- whether it be a distinctive container (like the COKE™ bottle), distinctive decor in a restaurant (like a certain Mexican décor) or even a distinctive product color (pink for insulation) -- it may be able to prevent competitors from using a confusingly similar "trade dress" in their products. In this regard, we counsel clients with respect to protectable aspects of both "packaging" trade dress and "product configuration" trade dress. Trademark Watches Approximately 5,000 new federal trademark applications are published in the Trademark Office's Official Gazette each week. These applications will mature into federally registered marks unless a third party opposes the mark within a specified time frame. Thus, when desired by a client, we have implemented trademark watch services in order to locate marks that may infringe upon the client's trademark rights. These watch services can apply to both domestic and foreign registries. Cease and Desist Letters Our clients are sometimes displeased to learn that a third party has begun using a particular trademark. Our attorneys counsel our clients as to whether such use creates a likelihood of confusion in the marketplace with their trademark. When appropriate, we send a letter to the infringer demanding that it cease and desist from using a trademark that infringes the client's trademark. Our attorneys often successfully resolve the matter without resorting to costly litigation. Trademark Litigation Our IP lawyers have successfully litigated trademark issues in the federal and state courts, as well as inter partes proceedings before the Trademark Trial and Appeal Board (TTAB). The TTAB is an administrative tribunal that resolves disputes concerning the registration of trademarks by the United States Patent & Trademark Office. Our lawyers have successfully represented clients before the TTAB in many opposition and cancellation proceedings. OppositionsIn the last few years alone, our attorneys have successfully initiated and defended over fifty trademark opposition proceedings before the TTAB. In general, an opposition is filed by a party who wishes to oppose another's attempt to seek federal trademark registration (but not use) of a given mark. Because a trademark opposition proceeding is somewhat similar to civil litigation (e.g., there is a discovery period, an opportunity to file for summary judgment and a trial period), our intellectual property attorneys are able to demonstrate both their expertise in trademark law and their litigation skills during opposition proceedings. In many instances, a separate co-pending state or federal court action is also initiated to stop the use of the mark at issue. CancellationsOur attorneys have also both initiated and defended a number of trademark cancellation proceedings before the TTAB. Cancellation proceedings generally involve the deregistration of rival marks that have been improperly registered or abandoned. As with oppositions, these proceedings are also adversarial in nature and thus are staffed by our intellectual property attorneys who are well-versed in litigation tactics. The CourtsOur courtroom experience extends not only to trademark infringement claims involving federally registered marks, but also claims for common law trademark infringement, dilution, packaging issues, trade dress, false advertising, and unfair competition. Our lawyers have successfully obtained temporary restraining orders (TROs), preliminary and permanent injunctions, and damages against trademark infringers. In recent years, our firm has gained significant experience in cyberspace issues involving trademarks, including domain name disputes, Internet defamation, and misuse of trademarks on Web sites.
Our intellectual property lawyers have expertise in every aspect of trademark protection and enforcement:
In the last few years alone, our attorneys have successfully initiated and defended over fifty trademark opposition proceedings before the Trademark Trial and Appeal Board (TTAB).
We understand that selecting a trademark will often define the image of a company or product. Aside from the many marketing considerations in selecting a trademark, we counsel clients in choosing a distinctive logo, name or mark that will give our clients strong rights against competitors.
Our attorneys also counsel clients in selecting a trademark that is not confusingly similar to a mark or name already in use, especially by a potential competitor. In the United States, there is a three-tiered trademark hierarchy of common law, state and federal trademark rights. Consequently, trademark searching can be one of the most complicated areas of the trademark practice. While there is no established procedure for selecting a mark for registration, our attorneys have implemented highly effective processes for assessing the risks involved in the use and/or federal registration of a given mark.
The starting point for trademark selection is often a "screening" or "knockout" search. Our lawyers and paralegals frequently perform in-house trademark screening searches of trademarks using state-of-the-art software with carefully planned searching strategies in order to determine the existence of a trademark that would likely bar registration or use. Most of these searches can be performed in a very short time period.
When something more than an in-house "screening" search is desired, our intellectual property attorneys have a number of specialized in-house databases and outside search firms in the U.S. and abroad at their disposal. Thus, our lawyers are able to provide our clients with comprehensive search reports involving:
These reports include federally registered marks, pending applications, and canceled or expired marks.
These reports include trademarks registered in one or more states.
These reports include business name listings, trade publications and Internet domain name registrations.
These reports may include "worldwide" searches as well as searches from specific foreign countries.
Our attorneys then carefully analyze these searches, assessing the relative risks and benefits associated with the selection and use of the proposed trademark. Our analysis may include an evaluation of potentially conflicting marks found in the search, as well as counseling on other factors which may impact upon registrability. Thus, we continually counsel clients on all aspects of selecting a trademark.
After a client decides to pursue a state or federal registration of a mark, our attorneys and administrators work with the client to have the trademark application accurately cover the client's actual or proposed use of the trademark. At the same time, our attorneys strive to have the trademark application be as broad as possible in light of other trademarks uncovered in any search performed.
Collectively, our attorneys have filed over 2,000 federal trademark applications with the United States Patent & Trademark Office, which includes both "use" applications and "intent-to-use" applications.
After the initial filing of the trademark application, our trademark practitioners work closely with the Trademark Office in "prosecuting" the application. Because the application process typically takes eighteen months to twenty-four months, our trademark team often conducts periodic status inquiries with the Trademark Office in order to ensure that the application is properly progressing through examination.
During prosecution, our attorneys act as advocates before the Trademark Office. Our attorneys frequently correspond or speak with the Examining Attorney about inquiries regarding: (1) the description of goods, (2) the strength of the mark, and (3) arguments concerning "conflicting" marks cited by the Examining Attorney. Once a mark is approved by the Examiner, the mark is published for opposition by third parties in the Trademark Office's Official Gazette. As discussed below, if unopposed, then the mark will become registered.
Our attorneys are also experienced in appealing final adverse decisions of Trademark Examiners to the Trademark Trial & Appeal Board (TTAB). These ex parte appeals require the filing of appeal briefs and may involve a formal hearing before the TTAB in Washington, D.C. if the client so desires.
Once a mark is registered, our attorneys help our clients protect and maintain their trademark rights by docketing and filing affidavits of continued use, renewals, and statements of "incontestability" with the Trademark Office. We also counsel clients on their advertising materials, marketing brochures, promotional materials, and Web sites for appropriate trademark usage and proprietary rights notices. In addition, we can also provide comprehensive reports to clients to ensure that they know what marks they have protected.
Although our firm is largely a regional law firm, many of our clients are national and international, with business interests throughout the world. Our attorneys assist clients in understanding the various options available for foreign trademark protection, such as obtaining a regional European Community Trademark (often called a "CTM" application, which covers several countries in Europe) versus individual country registrations. Working with our extensive network of foreign associates, our attorneys are responsible for literally thousands of foreign trademark applications and registrations throughout the world
Our clients frequently ask us to review, draft, and/or negotiate trademark assignment agreements, trademark license agreements, distributorship agreements, and marketing agreements. We counsel our clients about the selection of exclusive versus non-exclusive licenses, the appropriate term for the agreement, payments and royalties, reporting, auditing, sublicensing, and quality control issues that may need to be addressed in such agreements. In many instances, we also record the trademark transfer document with the U.S. Patent & Trademark Office or the appropriate foreign registry.
Our attorneys also advise clients in the beginning stages of product and packaging design regarding potential trade dress protection. In general, if a company has a product with either an inherently or acquired distinctive decorative look -- whether it be a distinctive container (like the COKE™ bottle), distinctive decor in a restaurant (like a certain Mexican décor) or even a distinctive product color (pink for insulation) -- it may be able to prevent competitors from using a confusingly similar "trade dress" in their products. In this regard, we counsel clients with respect to protectable aspects of both "packaging" trade dress and "product configuration" trade dress.
Approximately 5,000 new federal trademark applications are published in the Trademark Office's Official Gazette each week. These applications will mature into federally registered marks unless a third party opposes the mark within a specified time frame. Thus, when desired by a client, we have implemented trademark watch services in order to locate marks that may infringe upon the client's trademark rights. These watch services can apply to both domestic and foreign registries.
Our clients are sometimes displeased to learn that a third party has begun using a particular trademark. Our attorneys counsel our clients as to whether such use creates a likelihood of confusion in the marketplace with their trademark. When appropriate, we send a letter to the infringer demanding that it cease and desist from using a trademark that infringes the client's trademark. Our attorneys often successfully resolve the matter without resorting to costly litigation.
Our IP lawyers have successfully litigated trademark issues in the federal and state courts, as well as inter partes proceedings before the Trademark Trial and Appeal Board (TTAB).
The TTAB is an administrative tribunal that resolves disputes concerning the registration of trademarks by the United States Patent & Trademark Office. Our lawyers have successfully represented clients before the TTAB in many opposition and cancellation proceedings.