U. S. Trademark Services

For our Trademark Clearance Searches, we typically:
  • conduct a Boolean search in many, many databases;
  • collate and review search results;
  • deliver results with informal opinion regarding trademark-ability; and
  • remain in communication with client as needed, including informal legal opinion if requested.
For our Trademark Applications, we typically:
  • resolve intent-to-use vs. actual use issues;
  • resolve ownership issues;
  • prepare and file a trademark application;
  • take responsibility for and receive application into our docketing systems;
  • watch over deadlines, especially checking application status every 6 months;
  • receive any Office Action or communication(s) & forward to client with our recommendation(s); and
  • remain in communication with client as needed, especially providing regular status reports.
For our Trademark Statements of Use, we typically:
  • obtain appropriate trademark specimen(s); and
  • prepare and file Statement of Use filing.

U. S. Trademark Office Action Response Services

In our U. S. Trademark Office Action Responses, we typically:
  • conduct an analysis of the office action, the cited trademarks, and any rejections or objections of the examiner;
  • consult with the client regarding office action, any rejections or objections of the examiner, and the impact of altering or clarifying the trademark;
  • determine amendments and arguments to overcome the rejections of the examiner;
  • prepare supplementary documents, as appropriate;
  • prepare a response; and
  • file the response with the USPTO.
In our Trademark Appeals, we typically:
  • conduct an analysis of the file history, prior cited trademarks, and any outstanding rejections or objections of the examiner;
  • consult with the client the outstanding rejections or objections of the examiner, such as the “likelihood of confusion” with another trademark; the descriptiveness of a mark, etc.;
  • determine amendments and arguments to put before the Appeal Board to overcome the rejections of the examiner;
  • prepare supplementary documents, such as, affidavits, consent to register agreements, etc., as appropriate;
  • prepare a notice of appeal and an appeal brief; and
  • file the notice of appeal and the appeal brief with the USPTO.
In our Trademark Petitions, we typically:
  • Determine scope of work based on specific circumstances and requirements.