Our Practice

Trademark Counseling and Prosecution

At Oliff PLC, we recognize and appreciate that the inventions of today are the products of tomorrow, and that those products must be effectively marketed for our clients to reap the rewards they deserve for their investments. Thus, a significant portion of our practice on behalf of our clients is dedicated to registering, enforcement and licensing of trademarks and service marks. Along with other aspects of our practice, we offer exceptional trademark and service mark registration expertise, customized and priced to fit our clients’ needs.


Our Trademark Team

As with our firm’s patent practice, our collective trademark experience starts with our members. Our trademark practice is an integral part of our overall practice and, consequently, many of the firm’s members and senior counsel spend a significant portion of their time assisting clients with trademark issues. In addition, Holly Ford Lewis oversees our day-to-day trademark activities in conjunction with Pete Ewald, Brian Drozd, Ee Ming Bahk, and other senior attorneys of the firm. Bill Utermohlen continues to consult on many ongoing matters in our trademark practice. All of the members also have significant litigation, opinion drafting, counseling and licensing experience, which provides a solid, diverse foundation for optimally handling our clients’ trademark matters.

Growing Diverse Practice

Our trademark experience spans a broad spectrum of goods and services in all classes, including:

  • chemical products;
  • clothing;
  • computer hardware/software;
  • cookware;
  • food;
  • gasoline service stations;
  • industrial devices;
  • injection molded products;
  • jewelry;
  • machine tools;
  • medical devices;
  • musical instruments;
  • oil candles;
  • personal grooming products;
  • restaurant services;
  • retail store services;
  • shoes;
  • sporting goods;
  • trade association services;
  • videos and laser discs;
  • vitamins;
  • watches;
  • website design;
  • writing instruments.

Our experience includes work with different forms of non-word marks, such as design and product configuration marks, as well as the special considerations involved with protecting a family of marks, or a portfolio of house and product line marks. We work with our clients in implementing cost-effective strategies that take advantage of the different considerations involved in registering marks based on use, intent to use, or non-U.S. registrations and applications.

Domestic and international trademark services we regularly provide to our clients include:

  • searches and advice relating to selection of new marks;
  • preparation and prosecution of state, federal and international registration applications, including Madrid Protocol extensions, and maintenance of registrations over time;
  • coordination of foreign filings through our worldwide network of foreign associates, with whom we have long-established and close relationships;
  • licensing, assignment and acquisition of marks;
  • enforcement and conflict resolution through negotiation, opposition and cancellation proceedings, and court litigation;
  • performing trademark audits, and developing corporate policies and procedures relating to adoption, use and protection of marks;
  • watch services; and
  • counseling on related issues such as unfair competition, dilution, privacy and publicity rights, trade dress, trade secret protection, internet and e-commerce enforcement, copyright protection, and licensing.

Management of Portfolios Worldwide

We assist with strategizing management of international trademark portfolios. We have handled licensing matters, domain name disputes, monitoring of potentially infringing applications, and enforcing of marks in the U.S. and all around the world. Our experience with enforcing trademarks internationally makes it possible for us to provide our clients with effective global branding strategies.

Customized Service

Oliff PLC provides varied trademark services based on our individual clients’ requirements. For example, we forward Office Actions with minimal or extensive comments and advice, depending upon the needs and level of knowledge of each client. The preparation and prosecution of applications is also tailored to our clients’ priorities and rights by incorporating, or deleting (when advisable), claims based on intent to use, use in commerce and/or corresponding foreign and international applications and registrations, so that the timing and basis for registration reflect our clients’ goals.

Timely, Cost-Effective, High-Quality Results

Our typical charges encountered during the trademark registration process — reflected in our trademark fee schedule that you may request at any time — are highly competitive. Our service charge for preparing, filing and docketing a trademark application (in one class or several classes) does not exceed the scheduled fee, except in cases involving complex or special issues. When provided with the necessary information, we can usually file a new application the same day we receive instructions.

For matters outside of our fee schedule, our charges are based on the hourly rates of our professionals. When our competitive billing rates are combined with our prosecution efficiency, our total service cost per project is typically well below that of comparable firms. While we are always pleased to discuss any unique billing options to respond to our clients’ individual needs, our charges per project for high-quality work generally more than satisfy the cost concerns of our clients.