Trademark Clearance & Registration
Why Trademark?
Trademark clearance is a comprehensive search and analysis of your business or product name, logo, or slogan to determine (1) if it anyone else can claim ownership of it and (2) if it can be protected through registration with the United States Patent and Trademark Office.
It is an essential first step to take before launching your brand.
Registration of your trademark with the USPTO is not required, but it provides enormous advantages, such as:
- An exclusive, nation-wide right to use the trademark on or with particular goods or services (subject only to those who actually used the trademark first)
- The presumption of ownership in case of litigation (lawsuits) involving the trademark
- Official notice to all would-be users of the trademark that it is already taken, in use, and that the trademark owner intends to enforce his or her right to exclusive use
- The right to use the R symbol with the trademark
- The right to eventually make the trademark ‘incontestable” if you keep it in continuous use for five years after the date of registration
- The right to recover up to triple damages and attorneys’ fees from an infringer
This service includes:
- Trademark Clearance:
- A comprehensive trademark search performed by an attorney using state-of-the art search technology. This is far more extensive than a “direct hit” or “knockout” search as advertised by discount websites like Legal Zoom
- Analysis of the search results and a detailed, written report- all done by an attorney- to make sure you understand the results and can make an informed decision about how best to protect your brand and your business
- Trademark Registration: registration of your trademark with the USPTO for one class
- Time spent speaking with your assigned trademark attorney
- Response to informal office actions from the USPTO, if necessary
Trademark Disputes and Enforcement:
For existing trademark holders concerned that another business is unlawfully using your trademark, an infringement letter, also known as "cease and desist" letter, is typically recommended. A cease and desist letter is a powerful tool that provides notice to the infringer that you intend to enforce your trademark rights and demands that the infringer immediately discontinue the unlawful use of your trademark. It is more than a simple letter, as it includes reference to the governing law and a thorough analysis of the law as it applies to the dispute to show why you would likely prevail in a lawsuit against the infringer.
Trademark Licenses:
Trademark licenses are frequently used to permit a business to use another business's registered trademark, or a similar trademark, in a limited context. A trademark license is a written agreement that allows a licensee to use the trademark of the licensor according to certain terms. The license will specify the duration (term) of the license, the scope of the use, the geographic region of the use (territory), and other provisions necessary to protect your rights. We can draft licensing agreements for your trademark or other intellectual property, review proposed licensing agreements that you have been presented with, and represent you in the negotiation of licensing terms.
US Customs & Border Protection (CBP) Recordation and Enforcement
Trademark Protection at the Border
Stop counterfeit goods before they enter the U.S. We record your trademark with U.S. Customs & Border Protection (CBP) so Customs can seize infringing shipments and keep your brand protected where it matters most.
Uniform Domain Name Disputes
Domain Dispute Resolution (UDRP)
Your brand deserves to be protected online. If a cybersquatter has registered a domain name that misuses your trademark, we can help you take it back. Through the UDRP process, we handle everything from filing the complaint to securing transfer of the domain—quickly and cost-effectively.
Topshelf Trademarks® Name Searching Session
If you have a list of names you’re considering for your brand but are not yet sure which one to run with, the Topshelf Trademarks name searching session is perfect for you. In the 30 minute session, the attorney will provide you with a brief analysis to rule out any names that have little chance to become registered trademarks or are likely to lead to problems down the road. We will then run knockout searches on the remaining contenders in our algorithm to determine which one has the best chance of registration with the USPTO. Additionally, the attorney can analyze your mark for its strength in the marketplace. Typically we can get through as many as 5 word marks per 30 minute session. (This service is not available for logos).