Intellectual Property Services

Trademarks

Clearance

Before adopting a new trademark, it is usually advisable to determine its availability for use and registration. Our trademark attorneys can conduct computer database “knock-out” searches in the U.S. and internationally to screen potential new marks. We can also analyze full search reports in order to provide an opinion on the availability of a mark for use and registration in the U.S., and can obtain opinions on availability worldwide in order to assist in adoption of a mark within global reach.

Counseling

When a client comes to us with a new trademark, we typically provide advice on whether the term or device can function as a mark and the protectability of the mark against others. We also advise our clients on the benefits of registration versus common law, unregistered use. We further counsel our clients on a variety of trademark related issues including complex ownership and use structures, fair use, false advertising, and product packaging review.

Filing

Registration confers many benefits to trademark owners in the U.S. and is required in order to use trademarks in many countries abroad. In the U.S., we usually file applications electronically to obtain immediate confirmation of filing and the official application serial number. Internationally, we file applications through a network of experienced foreign colleagues. We also file for foreign protection through various treaties where available in order to provide our clients with cost effective filings solutions and to provide the most effective coverage.

Prosecution

Prior to filing applications, we strive to spot issues and avoid unnecessary prosecution and the associated costs. In those instances where Office Actions issue, we promptly report them to our clients and attempt to minimize cost where possible in responding. With foreign applications, we seek creative solutions to any obstacles that may develop.

Monitoring

Trademark owners should be vigilant in protecting their rights. As part of our policing efforts, we can arrange for trademark watch services for our clients, domestically and/or internationally. In that way, we can receive timely notice of confusingly similar marks and discuss with our clients whether to oppose registration.

Customs Recordation

To prevent importation of counterfeit and infringing goods into the U.S., we can record trademark registrations on behalf of our clients with U.S. Customs and Border Protection (CBP). We also arrange for meetings between our clients and CBP in order to educate Customs officials so that they can more easily recognize goods that infringe our clients’ trademark rights.

Maintenance

We manage trademark portfolios. Between the fifth and sixth year after registration, and every ten years from the registration date, it is necessary to file proof of use of the mark for the covered goods or services with the U.S. Patent and Trademark Office in order to maintain the registration. We docket such maintenance deadlines in our computer database and notify our clients in advance of the deadlines. We also keep track of foreign maintenance deadlines and work with our clients in renewing registration.

Oppositions and Cancellations

In the event that a third party opposes an application or petitions to cancel a registration, Leason Ellis can defend its clients in such proceedings before the Trademark Trial and Appeal Board. We also vigorously pursue such oppositions and cancellations on behalf of our clients where warranted. Internationally, we coordinate oppositions and cancellations with our colleagues to muster evidence and arguments to support our clients’ cases.

Domain Name Disputes

We are a high tech, internet savvy firm that is adept at protecting our clients’ rights online. We can assist our clients in acquiring and registering domain names, filing domain name arbitrations under the Uniform Dispute Resolution Policy, and filing civil actions in federal court for cybersquatting. As a result of our efforts, we have caused numerous infringing websites to be taken down and many domain names to be transferred to our clients.

Licensing

Trademark licenses come in many forms from simple agreements, to agreements in settlement of litigation, to complicated product merchandising agreements. Whether representing the licensee or the licensor, we are able to negotiate and draft practical, business-oriented license agreements.

Copyrights

Registration

The first step to maximizing the value of copyright is to obtain registration, as it provides many important benefits including the election of statutory damages, the ability to recover attorneys fees in an infringement action, the provision of federal court jurisdiction over infringements, and the availability of recordation with U.S. Customs and Border Protection. We routinely file copyright applications with the U.S. Copyright Office and have obtained numerous copyright registrations for our clients. Where litigation is imminent, we can seek registration on an expedited basis. Where cost is an issue, when appropriate, we can apply for a collection of related works.

Licensing, Acquisitions and Sales

We regularly negotiate and draft copyright assignments, as well as simple and complex license agreements including character merchandising agreements. We have specific experience in the computer field including preparing, for example, shrink wrap agreements and click through licenses, as well as agreements relating to programming rights. We also prepare related agreements such as security interests and work-for-hire agreements.

Strategic Advice

Our attorneys have decades of experience advising clients on all aspects of copyright including validity, ownership and title, duration, infringement, and fair use. We advise clients in a wide variety of fields including advertising, architecture, artwork, entertainment, fashion, jewelry, photographs, publishing, software, and toys.