Counseling

The firm offers counseling concerning the proper use of trademarks and service marks for companies and individuals in various fields. 

The firm’s services include, among other things: 

• Evaluating the PTO database for the availability of marks

• Conducting and reviewing trademark searches

• Providing written clearance opinions concerning the availability of trademarks.

After evaluating the availability of a trademark or service mark, the firm advises the client of the best course of action concerning the adoption of the mark or prospective mark.  This may include the filing of a trademark application, and includes all potential enforcement and litigation issues that may arise nationwide or in a specific geographic area.

It is extremely important to determine trademark rights prior to using a mark for a business name, slogan, product or service, or design.  A trademark can be vulnerable to senior third party use, even if the trademark owner has been using the mark for months or years.

A trademark attorney can also advise whether a particular mark is:

• Descriptive of the products or services provided or contemplated under that trademark

• Incapable of serving as a trademark based on the generic nature of the mark itself, or how it is being used

• Geographically descriptive or misdescriptive based on the location used in that particular trademark

• Based on a surname, and therefore, unavailable for registration unless the trademark owner has acquired a certain level of distinctiveness for that mark

• Likely to cause confusion with another trademark

Even if the trademark owner cannot register the mark with the United States Patent and Trademark Office, the owner may still be able to use the trademark in descriptive ways to refer to nature of its products or services, or it can use the trademark until such time that the trademark has become distinctive (establishing secondary meaning) in connection with the products or services under that mark.