At the Law Offices of Kattina V. Barsik, Esq., we recognize how important it is for clients to preserve their distinctive trade identity and the reputation of their business and its goods and services in an increasingly complex and competitive commercial world.
We offer a full range of services to protect, preserve, and exploit trademarks, trade dress, and other indicia of origin. These services include providing advice concerning the availability of marks; devising strategies for their efficient and effective national and international registration; maintaining trademark portfolios; counseling regarding licensing opportunities; drafting and negotiating trademark licenses; and transferring trademark rights.
In addition, we regularly counsel clients concerning enforcement and defensive strategies for trademarks and trade dress.
We work with clients to educate their business teams about submitting new ideas for trademarks, slogans, and logos as early as possible in the clearance process, preferably before significant investment has been made in new branding elements. We believe that it is imperative to research a potential new brand in order to understand its relative strength and potential position in the marketplace. This is a vital step in formulating a coherent and cost-effective strategy to establish and protect IP assets.
When a company invests in thorough brand research in the early stages of brand development, we have found that the prosecution and enforcement of that brand becomes far easier and much more cost-effective. By becoming involved in the early stages of a branding project, we are able to advise clients on the current competitive landscape, how to select and position their brands, and how to protect those brands in order to maximize impact.
Our analysis occurs on many levels:
- Inherent Strength: First, we analyze a mark to determine its inherent strength, based on the spectrum of distinctiveness.
- Relative Strength: Second, we analyze a mark to determine its relative strength, based upon what is already in existence on the marketplace.
Again, brands are not limited to trademarks. They extend to every aspect of a customer’s experience, including websites, marketing materials, trade dress, as well as a mark’s ultimate presentation and appearance.
We tailor our search and clearance reports to meet clients’ needs and encourage the use of a customized trademark search form for all potential new marks. This form gathers critical information from the ultimate business client in order to determine the importance of the proposed mark(s) to the overall portfolio and enables us to assess the client’s risk tolerance level. The form can also be used to determine the level of clearance we should undertake for a particular brand, as well as the jurisdictions in which searches should be conducted. Based on the results, our team will conduct a series of searches to ensure the mark is available for use and registration. If necessary, we can also provide guidance regarding how to make a proposed mark more distinctive while minimizing changes to core branding elements.
We strongly believe that clearance of trademarks is one of the most important aspects of a trademark program. Implementation of a clearance strategy that is customized to meet a client’s business needs will result in much greater efficiencies in the subsequent aspects of the portfolio management process, especially prosecution and enforcement.
A company’s brand is often its most valuable asset and requires thoughtful and strategic protection to ensure its integrity. We understand the importance of protecting a brand through registering trademarks and actively help clients find cost-effective ways to protect and grow their IP assets, particularly as their business expands into new product lines, marketplaces, or services.
Simply applying for a trademark isn’t enough; we work with clients from the outset of the prosecution process, formulating and implementing comprehensive branding strategies that will align with their particular business model and practices. Once trademarks have been identified, we determine the strength of each mark and advise on recommended markets in which to file applications. Following registration, we continue working with clients to maintain registrations for the life of the brand, ensuring that registrations are renewed in a timely manner and advising on any use of the marks that is necessary for maintenance.
We provide a proactive approach to managing clients’ trademark portfolios and executing brand strategies. We not only register and protect our clients’ trademarks, but strive to help develop and expand clients’ brands to meet their evolving business needs.
Registering your trademark provides a variety of benefits including the presumption that you own the mark, the right to sue infringers in federal court, the ability to stop the importation of infringing goods and the exclusive right to use the mark. In order to register a trademark, you must either be currently using the mark or have the bona fide intent to use the mark within 6 months (extendable up to 3 years).
Key Benefits of Trademark Registration:
- Presumption of ownership
- Exclusive right-to-use
- Access to the federal courts
- Right to use federal registration
- Ability to block the importation of infringing goods
Trademark enforcement is critical as a company’s market share can be lost when customers cannot distinguish its mark from those of the competition. A tailored enforcement strategy is essential to maintaining the success of a brand. We aggressively, yet efficiently, enforce clients’ trademark rights through a variety of means, beginning with the development of a comprehensive and strategic enforcement policy. We then work to stop infringers as quickly and efficiently as possible, and can escalate matters to trademark office proceedings and litigation, when necessary. We regularly counsel clients about enforcement strategies, both proactive and defensive, for trademarks and trade dress.
Third parties can infringe upon a company’s mark attempting to register identical or similar marks with a trademark office, or by using identical or similar marks in the marketplace – including online. Enforcement of a mark is critical – if a company tolerates use of its trademarks by others, the company can lose its rights to the trademark altogether. We will assist in designing a unique enforcement strategy and take action against third parties. We work with our clients to determine the enforcement priorities appropriate to the importance of each brand.
A product’s market share becomes threatened when the product is not distinguished from the competition. Thus, a tailored enforcement strategy is critical to maintaining the success of a product. We aggressively, yet efficiently, enforce our clients’ trademark rights through a variety of means, ranging from the development of a comprehensive and strategic enforcement policy, to litigation and trial.