Trademark Portfolio and Brand Management Law

Experienced. Efficient. Economical.

WNJ attorneys are experienced in all aspects of establishing, managing, and aggressively protecting trademarks. We combine practical, real-world advice with efficient, cost-effective legal services for a broad range of intellectual property issues.

Your brands are the lifeblood of your business. We recognize that your trademarks and service marks are invaluable assets that help define your unique corporate identify. These assets are vital to maintaining a competitive advantage in the marketplace, and managing them effectively is critical to regularly delivering return on investment.

Developing your brands was not easy – but protecting them should be.

Overview

  • We manage thousands of trademark registrations and applications, spanning dozens of industry sectors, in more than 100 countries around the world.
  • We work with domestic and foreign companies and legal counsel to ensure trademarks are handled properly both in the U.S. and abroad. In fact, WNJ attorneys are fluent in nearly a dozen languages.
  • Our expertise encompasses non-traditional marks such as packaging, product configuration and sound.
  • We have extensive experience in using design patents to protect proprietary product designs.
  • WNJ prepares, files and prosecutes trademark and service mark applications to register marks with the U.S. Patent and Trademark Office, state trademark offices, World Intellectual Property Organization and other filing offices.
  • We use WNJ specialists in other areas such as tax, finance, corporate and administrative law to address non-intellectual property issues that also impact your trademark portfolio.
  • We continually improve and streamline our workflow process to deliver effective and efficient service, at competitive rates.

Selection and Clearance

Our services start at a mark’s inception. We consider your business strategy, budget, channels of trade and product life cycle to balance your business risks and costs with the benefits of registration and scope of protection available for particular marks.

  • We routinely conduct preliminary and full trademark searches on proposed marks and provide opinions on mark availability.
  • We provide same-day turnaround on screening searches using proprietary in-house computerized resources. We can also obtain in-depth full searches in a matter of days.
  • We offer educational seminars so the individuals who are responsible for the trademark process in your organization are well informed about laws – and strategies – necessary for effective selection and protection of your marks.

Prosecution

In most cases we file a federal trademark application electronically on the same day we receive the request. Our goal is to give you the practical counsel you need to reduce infringement exposure and ensure optimal protection for the marks.

Other prosecution services we provide include:

  • Advice on risks and costs of prosecution, with a focus on balancing them against returns.
  • Advice on budgeting and timing strategies for efficient use of resources.
  • Consider international treaties and conventions to obtain the broadest protection at the lowest cost.
  • Work closely with our international affiliates to prosecute and register marks worldwide.
  • Register and maintain general and country-specific domain names associated with marks.

Maintenance

WNJ maintains an extensive database with information on every mark in each client's portfolio, including countries of registration, goods or services covered, registration status, renewal and other due dates and prosecution history. We also regularly review trademark portfolios.

We will advise you on proper trademark usage in different mediums and regularly review your marketing and promotional materials for appropriate usage.

Additional maintenance services we provide include:

  • Receive, process and review filing receipts, notices of publication and other correspondence from the U.S. Patent and Trademark Office, from associate foreign counsel firms and other relevant authorities.
  • File amendments to various legal documents to maintain domestic and international registrations.
  • Administer general and country-specific top level domain names.
  • Conduct due diligence on trademark assets in connection with complex mergers, acquisitions and other transactions.
  • Draft, review and negotiate third-party license agreements to complement and expand upon core business operations.
  • Draft and negotiate concurrent use documents, manufacturing, private label and distribution agreements.
  • Assist in acquiring trademarks, domain names and other intellectual property assets from third parties.

Enforcement

WNJ assists you with the development and implementation of effective enforcement strategies. Enforcement efforts include:

  • The use of watch services on a national or global scale to identify potentially conflicting trademark applications.
  • Routine review of the Patent and Trademark Office Official Gazette for trademarks that potentially conflict with your marks.
  • Cost-effective resolutions that protect our clients' trademark interests and prevent consumer confusion in the marketplace.
  • Research of infringing third parties and investigation into the scope and strength of their rights.
  • Send and respond to cease-and-desist letters.
  • Negotiate consent and co-existence arrangements.
  • File, prosecute and defend against inter partes actions before the Trademark Trial and Appeal Board, including oppositions, cancellation actions and concurrent use proceedings.
  • Work closely with a network of firms internationally to enforce and defend client marks.
  • File domain name disputes under the Internet Corporation for Assigned Names and Numbers (ICANN) dispute resolution policy.
  • Record trademark registrations with U.S. Customs Service.

Other Services

WNJ offers several services that help protect your brand. These include:

  • Monitor and study new developments in domestic and international trademark law and report matters of interest.
  • Conduct intellectual property audits.
  • Provide free in-house seminars on topics of interest.
  • Develop trademark use manuals.
  • Prepare quarterly trademark status reports.

We welcome the opportunity to put our trademark and brand management experience to work for you.

 

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