Trademark

Without doubt, one of the most powerful and valuable intellectual property rights that our clients have is their trademark. It identifies the source of the product or service that the company is selling. It separates the trademark owner from all third parties in the same industry. Registering trademarks is part of prudent intellectual property management in the United States. Even from a defensive posture, you do not want to run the risk that a competitor, distributor or even client decides to register the mark in order to obtain some form of advantage. Currently, the rules of the US Trademark Office require all foreign applicants to obtain US attorneys to prosecute their applications. We can help.

Obtaining federal trademark registration in the United States would allow the trademark owner to pursue its trademark rights in federal court (much preferred to state court); obtain as much as treble damages if successful in its suit; and secure the payment of all of its legal fees in the event willful trademark infringement or an “exceptional case” condition is found. For these reasons and others, when third parties see the ®, it gives them reason to pause and consider whether to risk engaging in trademark infringement.

We can file, directly, a trademark registration application without engaging in a full trademark search. However, depending on the use of common words or phrases in the mark, we recommend that before a trademark application is filed, a full trademark search be undertaken to uncover any related trademarks that may be in the same field.  There are several reasons for this.

First, a comprehensive search would reveal those similar trademarks which might result in an objection to the registration or use of your trademark, thus saving you thousands of dollars in potential litigation expenses.  A comprehensive search also would give you a better idea as to whether it is worthwhile to try to register your trademark, or to seek registration of the mark in a modified form (to avoid possible objections from the United States Patent and Trademark Office (“USPTO”) and/or oppositions from the owners of similar trademarks.

Second, a comprehensive search would allow you to better define/modify the scope of the goods and services to be protected by your trademark in order to avoid possible confusion with similar trademarks.  

Third, a comprehensive search helps to provide a defense against a claim of willful trademark infringement.  

Fourth, if you have used the trademark for a significant time, you may be able to exclude more recently used (“junior”) unregistered trademarks from use.  Therefore, a comprehensive search would allow you to pinpoint the trademarks newly used or newly filed for registration, challenging the use of which you will be entitled to as a matter of law.  Naturally, the sooner you challenge the conflicting “junior” trademarks, the better chances will you have to exclude them from use.

In addition to obtaining trademark registrations, we have an active practice in trademark licensing transactions. The need for restricted trademark licensing often arises when a business has the need to contract with a distributor, reseller, representative or sales agent to get its products and services into the stream of commerce in the US. It takes an experienced hand to make sure the licenses you grant contain essential legal terms that general practitioners can easily miss. Since mistakes can lead to the loss of your trademark, it is important to get things right the first time.

We are frequently in court asserting or defending trademark infringement and related unfair competition claims. We maintain active bar memberships in state and federal courts, including the prestigious Northern District of Illinois Trial Bar where admission is restricted to experienced trial attorneys. In litigation our focus is always on getting the best result at the least cost and as early as possible. We also have experience with “famous” trademarks in brand dilution and tarnishment proceedings. 

For more information contact Greg Casimer at greg@thorelli.com.