Successful brands are built with strategies for selecting “strong” marks that are immediately protectable and registrable. If a client prefers to use a term or mark descriptively, we 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.
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.
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.
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.
Workshop
Life Sciences Workshop: Updates and Key Trends in Pharmaceutical and Biotechnology IP Law
May 2, 2024
Cambridge
INCONTESTABLE® Blog
E.D. Pa. Delivers Summary Judgment Victory in Row Over Meta Tags
February 22, 2024
Webinar
Enforcing Contributory Online Trademark Infringement: Willful Blindness, Knowledge Standard
December 5, 2023
Webinar
Award/Ranking
Finnegan Ranks at the Top of the Managing Intellectual Property IP Stars Rankings
June 28, 2024
Announcement
Three Finnegan Partners Recognized as World Trademark Review Global Leaders
June 6, 2024
Award/Ranking
Managing IP Americas Awards 2024: Finnegan Shortlisted for Nine Awards, Including Firm of the Year
March 12, 2024
Award/Ranking
Finnegan Tops the 2024 World Trademark Review 1000, Receiving New Regional Accolade
February 13, 2024
Award/Ranking
Asian Legal Business Names Finnegan “International IP Law Firm of the Year”
November 10, 2023
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