Trademark Counseling and Prosecution

Finnegan’s experience in preparing trademark opinions and in filing, prosecuting, and maintaining both domestic and foreign trademark applications and registrations is clearly demonstrated by the number of matters we handle. During a typical year in our European, UK, and U.S. practices, we provide thousands of clearance opinions. We are responsible for more than 25,000 trademark applications and registrations (domestic and foreign), and we regularly manage large trademark portfolios, including portfolios with thousands of registrations/applications. To ensure consistency in portfolio management as well as enforcement, our trademark professionals conduct audits, due diligence, trademark watching, investigations, and licensing.

Domestic Trademarks

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. Our opinions are not based solely on the results as they appear in the 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.

We regularly file and prosecute applications at the European Union Intellectual Property Office (EUIPO), the UK Intellectual Property Office (UKIPO), and the U.S. Patent and Trademark Office (USPTO). For Finnegan, trademark filings are not simply routine administrative matters—we develop an appropriate strategy regarding the form of the mark and how broadly or narrowly to describe goods or services. We consider the search results and possible disputes as well as 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 most effective and efficient ways to respond to refusals.

International Trademarks

For trademark filings outside European, UK, and U.S. jurisdictions, we look at the nature of the mark, the domestic application, domestic or foreign search results, and potential disputes. We also discuss plans for the mark with the client. This process allows us to 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 international trademark filings and clearance projects. 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.