Leason Ellis’ trademark attorneys manage U.S. and foreign trademark portfolios for large institutional clients and build portfolios for emerging companies. They “clear” new marks, advise on risks to use and registration, file new applications in the U.S. and abroad, and maintain existing registrations. Our team also pursues domain name disputes, drafts license agreements and assignments, negotiates co-existence agreements, records security interests, and handles a host of other trademark related issues.
Our trademark clearance services span from conducting “knock-out” computer database searches to providing opinions on full searches to product merchandising searches and more. We’re especially creative in suggesting ways to deal with obstacles including narrowly tailoring applications and cancellation or acquisition of blocking registrations.
When a client comes to Leason Ellis with a new trademark, we typically provide advice on whether the term or device can function as a mark and the protectability of the mark against others. After all, there may be no point in investing in a mark that can’t be protected.
We also advise our clients on the benefits of registration versus use without registration. We further counsel our clients on a variety of trademark related issues including complex ownership structures, fair use, false advertising, and product packaging review.
To prevent importation of counterfeit and gray market goods into the U.S., Leason Ellis can record trademark registrations on behalf of our clients with U.S. Customs and Border Protection (CBP).
We also work with our clients and CBP to help Customs officials more easily recognize piratical goods by meeting with port import specialists and developing IPR Product Training Guides.
Domain Name Disputes and Take-Downs
We are a high tech, internet savvy IP firm that is adept at protecting our clients’ rights online. We assist our clients in acquiring and registering domain names, submitting domain name arbitrations under the Uniform Dispute Resolution Policy, and filing civil actions in federal court for cybersquatting. As a result of our efforts, Leason Ellis has caused numerous infringing websites to be taken down and many domain names to be rightfully transferred to our clients.
We strategically draft U.S. applications with an eye toward avoiding objections that may unnecessarily delay publication or cost extra money in dealing with Office Actions. Internationally, we file applications through our trusted network of experienced foreign colleagues.
Where available, we also file for foreign protection through various treaties. This provides clients with cost effective filings solutions while offering the most effective geographic coverage.
Trademark licenses come in many forms like joint ownership and co-existence agreements, agreements in settlement of litigation, and complicated product merchandising agreements. We handle them all with aplomb.
It is necessary to periodically file proof of use of the mark for the covered goods or services with the U.S. Patent and Trademark Office (USPTO) in order to maintain registration. Leason Ellis dockets such maintenance deadlines in a state-of-the-art docketing system and we notify our clients in advance of the deadlines. We also keep track of foreign maintenance deadlines and work with our clients in renewing registration.
Monitoring and Watch Services
Trademark owners must be vigilant in protecting their rights. We can help.
As part of our policing efforts, Leason Ellis can arrange for trademark watch services for our clients, domestically and/or internationally. In that way, we can receive timely notice of confusingly similar marks and discuss with our clients whether to oppose registration. And we’ll separate the wheat from the chaff in reviewing the watch notices so our clients don’t have to.
Oppositions and Cancellations
Leason Ellis enforces our clients’ trademarks by vigorously (and regularly) pursuing opposition proceedings and cancellation actions before the Trademark Trial and Appeal Board (TTAB). In the event that a third party opposes an application or petitions to cancel a registration, Leason Ellis is there to defend our clients’ rights.
Our opposition and cancellation work does not end at the borders’ edge. Internationally, we routinely coordinate proceedings with our network of trusted foreign colleagues to muster evidence and arguments to support our clients’ cases.