Trademarks Perkins IP performs the following services:

These services relate to trademarks (used on goods), service marks (used in the advertising of services) and trade names (publicly used company names).

Searches and Opinions.  Prior to adoption and use, it is a very good idea to see what’s out there, both in the commercial space and in the registration space.  A business which doesn’t do these things runs the considerable risk of infringing the preexisting trademark rights of others, with the consequences of having to redo branding and marketing campaigns, having to change web sites, packaging and trade literature, and possibly even having to pay damages to a prior trademark owner.  Perkins IP performs searches to determine the relative risk with which a mark can be adopted and used.  We write opinions on the availability of marks for use and registration.

Registration.  In the United States, a mark doesn’t have to be registered, but many benefits flow from doing so.  Perkins IP’s intellectual property attorneys prepare and file applications for registration and prosecute them through registration.  We also docket necessary post-grant activities such as the Declaration of Use and Incontestability and renewals.  We also institute and defend oppositions and cancellation proceedings, which are proceedings before the United States Patent and Trademark Office Trademark Trial and Appeal Board (TTAB) that decide whether a mark ought to be registered, or continue to be registered, in view of the rights of other interested parties.

Assertion.  An owner of a mark has the exclusive right to use it on certain goods or services which, if registered, will be identified in the Certificate of Registration.  There typically also is a penumbra of protection around these goods of services, the extent of which varies with the mark’s distinctiveness and degree of public recognition.  We can assess for clients whether a use by someone else constitutes infringement, by asking the question of whether there is “likelihood of confusion” on the part of the relevant public.   If there is infringement, we can negotiate settlement with the infringer, or, if settlement is not in the offing, institute litigation in either state or federal court to enforce the trademark owner’s rights.  In some instances, additional remedies to the trademark owner will be available, as in where a cybersquatter is using the owner’s federally registered mark, or where the similarity to the registered mark is so close that it constitutes counterfeiting.

Defense.  Another party will sometimes assert that our client’s use of a mark or a trade name (or even of a generic term) is an infringement of its trademark rights.  As circumstances dictate, we can defend against such assertions on any of several grounds.  Among these are that there may not be any “likelihood of confusion” and therefore no trademark infringement.  (Assertions of dilution, made by the owners of famous marks, are less common, but then the mark has to be truly “famous”.)  Second, our client may have used the mark or trade name first, which not even a federal registration will defeat.  Third, if we are senior in use, it will often be possible to institute a proceeding before the US Patent and Trademark Office Trademark Trial and Appeal Board (TTAB) to cancel the asserted registration.

Licensing and transfer.   Trademarks and service marks are items of general intangible personal property and may be assigned, licensed or hypothecated.  Special conditions attach to their assignment or licensing, however.   We prepare and negotiate legally effective assignments and license agreements.

Foreign Rights. Without more, a federal registration will have little or no effect on whether an owner has a trademark right in a foreign country.  In most foreign countries, and unlike the United States, registration is an absolute requirement for a trademark to even exist.  The US is now a member of the Madrid Protocol, whose membership includes most, but not all, important foreign countries.  We file for international registration of marks, and have an extensive set of foreign correspondents who assist us in foreign searching and obtaining foreign rights.  We often take advantage of the Community Trademark Registration (CTM) which, if granted, will create an enforceable trademark throughout the European Community.