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Trademark - Trademark Counseling and Prosecution

Trademark counseling and prosecution

Finnegan’s experience in preparing trademark opinions and in filing, prosecuting, and maintaining both U.S. and foreign trademark applications and registrations is clearly demonstrated by the number of trademark matters we handle.  During a typical year, we provide thousands of trademark clearance opinions.  We are currently responsible for more than 25,000 trademark applications and registrations (U.S. and foreign), and we regularly manage large trademark portfolios, including portfolios totaling more than 10,000 registrations/applications covering more than 200 countries.

Domestic Trademarks
Before adopting a trademark, we advise clients on strategies for selecting “strong” marks that are immediately protectable and registrable.  If a client prefers to use a term or mark descriptively, we can advise on how to use the term to place the client in the best possible position should it be challenged.  Our counseling during the early phases of trademark development helps avoid costly conflicts or enforcement problems down the road.

Once a mark is selected, we conduct availability searches and render clear, practical opinions.  We carefully evaluate each search request to ascertain the goods or services to search, the type of search to order, and whether to search any supplemental sources.  Moreover, our opinions are not based solely on the search results as they appear in the search report.  We investigate relevant marks and names to determine if they are in use and, if so, the nature and extent of any rights their owners may possess.  Our extensive litigation experience allows us to provide realistic opinions on a mark’s availability, as well as practical recommendations on using and registering the mark to avoid or minimize potential problems.

For Finnegan, trademark filings are not simply routine administrative matters—we work to develop an appropriate strategy regarding the form of the mark and how broadly or narrowly to describe goods or services.  We take into account the search results and possible disputes down the road.  We also consider future plans for the mark to make sure all relevant goods or services are covered by the application.  In prosecuting applications, we provide practical advice on the best and most efficient ways to respond to refusals. 

International Trademarks
As with U.S. prosecution, Finnegan does not treat foreign trademark filings as routine administrative matters.  Rather, we look at the nature of the mark, the U.S. application, any U.S. or foreign search results, and potential disputes, and discuss future plans for the mark with the client.  We can then develop appropriate foreign filing strategies in terms of the form of the mark and the scope of the goods or services. 

We have nurtured a network of trademark lawyers and agents around the world to assist with foreign trademark filings.  We select foreign counsel based on their ability to provide the high level of service our clients expect.  If a client prefers to maintain its existing relationship with a firm, we are happy to comply.  Upon receipt of a communication from foreign counsel, we report the matter to the client along with a suggested strategy.  We carefully review the counsel’s recommendations and work out a response or opposition strategy that is persuasive.  We also look at whether a strategy comports with that taken in other countries and, if not, whether a departure from prior practice is warranted and the impact of doing so.  We have extensive experience with international clearance projects.  We present search results in organized and streamlined formats that are easy to understand, contain concise summaries, and include specific advice on recommended actions.  In particular, we provide practical guidance and risk analysis, because many foreign counsel are highly conservative and identify numerous “problematic” marks.  We analyze the “problematic” marks and separate them into categories of real problems and potential problems.  We further recommend precise steps to take to attempt to address any potential problems (e.g., negotiate consent agreements, acquire rights).