• Trademark Searches and Counseling • U.S. and Foreign Trademark Applications • U.S. and Foreign Trademark Prosecution • Renewal Submissions • Opposition Proceedings • Assignments and Licenses • Enforcement and Litigation
We offer comprehensive trademark searches to help our clients to avoid inadvertently infringing the commercial marks of other individuals and entities, and to help prevent our clients' trademark applications from being rejected in view of other, pre-existing trademarks. We also offer counseling services to help ensure that the trademarks that our clients ultimately select are strong and unique, which can serve to expedite the trademark registration process and assist our clients in avoiding costly litigation.
We specialize in preparing and filing trademark applications specifically designed to provide a solid foundation for the subsequent federal examination process. Moreover, as an international law firm, we also work closely with many foreign associates in order to file trademark applications in many foreign jurisdictions of interest to our clients, such as, but not limited to, Australia, Brazil, Canada, China, Europe, Hong Kong, India, Israel, Japan, Russia, South Korea and Taiwan. We are also able to provide counseling to our clients to help them identify the international classes of goods and/or services that would be most beneficial (and economical) to claim during the application process.
If the U.S. Government has a concern with a trademark application, it will issue a notice called an "Office Action". Some Office Actions may reject an application due to statutory concerns, while others simply include a request for clarification or additional information. A response to an Office Action must be filed within six months of the date that the Office Action was issued. If the applicant does not respond within the applicable time period, the application will be considered abandoned.
We specialize in drafting effective legal responses to Offices Actions that are able to traverse the rejections of record and expedite the registration process. We also work closely with many foreign associates to prosecute trademark applications in countries all over the world. Our trusted associates are experts in helping us to obtain high quality foreign trademark rights for our clients, while continuing to keep us apprised of the most recent changes in trademark law and practice in their respective jurisdictions.
Additional, periodic filings are required to maintain the registration of a trademark. If a trademark owner does not submit these filings in a timely manner, the trademark will be considered by the U.S. Government to have been abandoned, and all of the owner's federal registration rights will be lost. Specifically, such filings must be submitted between the fifth and sixth year of ownership, at the tenth year of ownership, and every ten years thereafter. As such, we docket the filing deadlines for these periodic filings and submit them on behalf of our clients so as to maintain their acquired trademark registrations.
We are able to defend our clients' interests during federal trademark oppositions conducted within the United States Patent and Trademark Office (USPTO). An opposition is a proceeding in which an individual or entity seeks to prevent the registration of an applicant's trademark. If an applicant receives a notice of opposition and fails to respond, a default judgment will be entered against the applicant, and the trademark application at issue will consequently be canceled by the U.S. Government.
When a client is interested in assigning (or being assigned) a trademark right, we can draft an assignment agreement tailored to the individual needs of the client, as well as file copies of the fully-executed assignments with the USPTO, and we can even help conduct the requisite "due diligence" to confirm that a clear chain of title exists for the transferred intellectual property. We are also able to help our clients to financially benefit from their respective trademarks by drafting exclusive or nonexclusive license agreements for the applicable trademark rights.
Mr. Jerry Crandall, Esq., is personally licensed to practice before every single federal district court in the State of California, as well as in the United States Court of Appeals for the Federal Circuit in Washington D.C. Additionally, as an international law firm, we have the ability to coordinate global efforts to protect our clients’ interests both domestically and abroad. In particular, we are able to work with attorneys in many different jurisdictions to manage large-scale intellectual property and commercial litigation efforts. Moreover, based on our firm’s technical expertise, we are able to provide valuable insight pertaining to potential design and manufacturing defects during product liability lawsuits.