The trademark attorneys and paralegals in Warner's Intellectual Property group are experienced in all aspects of establishing, managing and aggressively protecting trademarks. We combine practical, real-world advice with efficient, effective legal services for a broad range of intellectual property issues.
Brands are the lifeblood of any business. We recognize that trademarks and service marks are invaluable assets that help define a company’s unique corporate identity. These assets are vital to maintaining a competitive advantage in the marketplace, and managing them effectively is critical to regularly delivering return on investment.
Selection and Clearance
- Our trademark registration attorneys routinely conduct preliminary and full trademark searches on proposed marks and provide opinions on mark availability for both use and registration.
- We provide same-day turnaround on screening searches. We can also obtain in-depth full searches in a matter of days under normal circumstances or on an expedited basis (even the same day) if needed.
- We offer educational seminars so the individuals who are responsible for the trademark process at our clients are well informed about laws–and strategies–necessary for effective selection and protection of their marks.
Prosecution
- 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 network of international counsel to prosecute and register marks worldwide.
- Register and maintain general and country-specific domain names associated with marks.
Maintenance
Warner 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.
Our trademark attorneys provide advice on proper trademark usage in different mediums and regularly review 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 consent, co-existence, concurrent use, manufacturing, private label and distribution agreements.
- Assist in acquiring trademarks, domain names and other intellectual property assets from third parties.
Enforcement
- The use of watch services on a national or global scale to identify potentially conflicting trademark applications.
- 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.
- Prosecute actions under the Internet Corporation for Assigned Names and Numbers (ICANN) and Uniform Domain Name Dispute Resolution Policy (UDRP).
- Record trademark registrations with U.S. Customs Service.
Other Services
- 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.
Capsis® Trademark Management Platform
The soaring number of trademark applications in the U.S—which has increased six-fold over the past 20 years—is creating unprecedented challenges for companies trying to manage trademark portfolios and keep tabs on their competitors. Capsis can help.
Capsis supports strategic decision making by compiling and presenting meaningful data regarding a brand owner’s trademarks and those of its competitors, monitoring Trademark Office activity for threats to the owner’s marks and brand strategy, streamlining workflow process for trademark clearance, prosecution, and enforcement tasks, and providing immediate access to legal professionals. Features include the following:
Portfolio Management
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Compiles and assimilates data from various sources to provide current information about each mark in the company’s portfolio, including mark, status, goods/services, first use dates, prosecution history and relevant documents.
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Avoids costly corrective actions by alerting the company promptly of upcoming deadlines or decision points.
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Supports brand expansion and marketing strategy by allowing the company to view and report its portfolio data using different filters to identify gaps in brand protection.
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Streamlines trademark administration and maintenance by providing a library of information with answers to questions frequently asked by marketing professionals about trademark use, rights and maintenance (e.g., proper marking, first use dates, specimen requirements).
Protection and Enforcement
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Identifies potential conflicts by alerting the company when one of its marks is cited as an obstacle to registration of a third party’s mark.
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Ensures quick action in response to potential threats by alerting the company of status changes for selected marks.
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Monitors competitive trademark filing activities of relevant third parties by tracking the applications they file and providing access to associated documents.
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Mitigates harm to the company’s brand by alerting it to applications and published marks that present infringement threats.
Workflow Management
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Reduces cost and frees time and resources for supporting the company’s strategic plans by streamlining the workflow process for routine administrative tasks.
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Drives better and faster decision making by providing one-click telephone or email access to legal professionals and services.
