Trademark

Our goal is to assist our clients in cost-effectively establishing and protecting their business “calling cards” — their trademarks, service marks, certification marks and all forms of brand name equity.

At Oliff PLC, protection of our clients’ intellectual property does not begin and end with patents.  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, enforcing and licensing 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.

Substantial Experience

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, Bill Utermohlen oversees our day-to-day trademark activities in conjunction with Bill Berridge, John O’Meara, Pete Ewald and other senior attorneys of the firm.  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.

Our litigation practice complements our trademark practice where litigation is necessary to enforce or defend our clients’ rights.  For example, we have tried cases in the rapidly evolving field of product design trade dress.  In one case, the Fifth Circuit Court of Appeals ruled in our clients’ favor in the first appellate-level case to apply the product design functionality principles set forth in the Supreme Court’s 2001 TrafFix decision.

In addition to the members and attorneys of our trademark group, our other attorneys have varying degrees of academic and “on-the-job” training in trademark matters.  All of our attorneys are equipped to answer our clients’ basic trademark questions, and to direct more complex questions to our firm’s trademark group, as necessary.

Growing Diverse Practice

Our trademark experience spans a broad spectrum of goods and services in all classes from consumer goods (clothing, food, etc.) to sophisticated industrial devices and computer hardware/software, and from restaurant and retail store services to web site design and trade association services.  Further examples of the various goods and services with which we have worked include:

  • agricultural chemicals and machinery;
  • batteries;
  • clothing;
  • database management;
  • fibers and textiles;
  • flooring products;
  • food and beverages;
  • fuels and lubricants;
  • hand tools;
  • home fashions;
  • machine tools;
  • measuring instruments;
  • medical devices;
  • musical instruments;
  • patient monitors;
  • plastics;
  • restaurant services;
  • sporting equipment;
  • vehicle service stations; and
  • 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; and
  • counseling on related issues such as unfair competition, dilution, privacy and publicity rights, trade dress, trade secret protection, and copyright protection.

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.

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 registration application (in one class or several classes) does not exceed the scheduled fee, except in cases involving complex or special issues.  We make it our policy, whenever possible, to identify such complex or special cases at the outset.

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.

For Further Information

For biographical information about our attorneys, please refer to our Attorney Profiles section on our firm’s web site.  For more information about our trademark practice, please contact our members.