Home » Our Services » US Prosecution of IP » Trademarks
In the age of electronic and global commerce, strong brand identification is more important than ever. Trademarks, when properly selected and protected, are a key component in establishing your brand identification. We bring to bear years of experience in screening, selecting, protecting and enforcing trademarks.
Workman Nydegger provides a full range of trademark services, including:
- Selection and Screening of Potential Marks
- Registration
- Litigation/Enforcement
- Counseling/Risk Avoidance
- Maintenance
- Licensing
Several of our trademark specialists actively serve and hold leadership positions on various trademark committees of the American Intellectual Property Law Association. Through their involvement on these committees, they have an opportunity on a regular basis to interface with officials from the U.S. Patent and Trademark Office and the World Intellectual Property Organization, monitor current trademark case law and legislation, and provide input to help formulate US and foreign trademark policy in response to new developments in technology and global commerce.
The loss of a great deal of time and resources can often be avoided by involving trademark counsel, early on, in the process of selecting and screening potential trademarks.
First, it is important to select trademarks that are distinctive and capable of functioning as a trademark. All too often, there is a tendency to select marks that are overly descriptive of the goods and/or services (or an inherent characteristic, quality of feature of the good or services) on which the mark will be used, making it difficult to protect the mark and/or difficult to effectively prevent others (including competitors) from using the same or similar mark or brand.
We work with clients to help them understand the relative advantages and disadvantages associated with the selection of marks having differing characteristics of distinctiveness so that they are better able to make informed decisions in the selection process, resulting in stronger, more enforceable marks, and avoiding costly trademark disputes with others.
Trademark searching and screening is something of an art that is fraught with certain risks, and is thus difficult to effectively do one’s own. We offer a variety of search options that vary in scope and expense.
In the early stages of the selection and screening process, we can provide expedited turnaround of targeted searches directed to a number of potential trademarks in an effort to eliminate any proposed marks with which a serious potential conflict is identified. As the list of potential trademarks is narrowed, additional searches of broader scope can be performed until an acceptable mark is identified.
Many find the process of applying for and registering a trademark deceptively simple. As with other areas of the law, an attempt to save a few dollars by going it alone may prove to be a costly mistake -- either by having to repeat the process to correct errors made or due to a loss of rights resulting from inexperience or lack of knowledge of the law and/or prosecution procedures.
When properly conducted, trademark prosecution and registration includes a multitude of strategic decisions throughout the process that may have a significant impact on the scope of protection ultimately obtained.
For example, one commonly held misconception is that the more features one claims as part of the mark the better the protection. In certain instances it may be necessary to limit a trademark to a particular stylized format to avoid a conflict with another mark, but doing so unnecessarily may unduly narrow or restrict the resulting protection.
Another common example is the formulation of the identification of goods and/or services claimed in the application and the level of detail that is necessary or appropriate under the particular circumstances. Our goal is to help you avoid these and other potential pitfalls and develop a strategy that best meets your needs and budget.
In addition to registration in the United States, over the years we have developed a network of trusted trademark specialists located in virtually every industrialized country around the world. We routinely develop and implement global trademark protection strategies.