Counseling

Schiffrin & Longo attorneys counsel companies and individuals concerning the proper use of trademarks and service marks in various fields.

Our attorneys evaluate the landscape for the availability of marks, conduct and analyze trademark clearance searches, provide written clearance opinions concerning the availability of trademarks, and advise on the registration of marks in the United States and internationally.

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. This includes the filing of a trademark application and discussing all potential enforcement and litigation issues that may arise nationwide or in a specific geographic area.

A trademark attorney can 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;
• Immoral, deceptive, or scandalous and therefore, incapable of registration;
• Functional and therefore, incapable of registration
• 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.

Schiffrin & Longo also counsels clients in the areas of Copyright registration, protection and enforcement, Internet issues, unfair competition and false advertising claims, and trade secret protection.