Key Services

• Appeals
• International trademark services
• Licensing and other asset transactions
• Oppositions and cancellations
• Trademark applications (Federal and State) preparation and filing
• Trademark and brand name selection
• Trademark maintenance
• Trademark prosecution
• Trademark screening and watching services

Trademark Searching and Watching Services

Morris, Manning and Martin provides comprehensive trademark selection assistance searching and watching services.

Preliminary Trademark Screening Search. Many clients elect to conduct a preliminary trademark screening search as part of their trademark selection process, prior to preparing and filing a trademark application. A preliminary trademark screening search is a limited search, primarily used for locating identical marks and close spellings and eliminating obvious problem marks. This type of search is restricted to a review of the trademark records of the United States Trademark Office.

Preliminary trademark screening searches often are useful in evaluating whether or not to make the additional investment of a comprehensive screening search. Preliminary screening searches can be conducted with very short turn-around times.

Comprehensive Trademark Screening Search. If clients require further assurance regarding the availability of a particular trademark, a comprehensive trademark search is recommended. This type of search includes a review of the U.S. Trademark Office or "commercial" records, individual state trademark registers and various common law sources. A comprehensive trademark search is designed to locate identical trademarks, variant spellings and phonetic equivalents and similar trademarks used in connection with products or services relevant to a product or service. In addition to word marks, designs or logos can be searched.

Merchandising Search. A merchandising search, which cuts across various trademark classes, is a comprehensive search that may be appropriate for certain types of promotions, typically in the music and entertainment industries. Other special searches are also available.

Comprehensive trademark searches are typically conducted after a preliminary trademark screening search, prior to developing an advertising campaign around a particular trademark or prior to filing an application for registration of the trademark. The reports from this search help clients evaluate the risk of infringing the trademarks of third parties and the likelihood of success in obtaining a registration. This type of search also is helpful when selecting a trade name or company name.

Assignee Search. This type of search is intended to locate trademarks owned by a particular company, or in the name of a particular individual. This search can also be used to determine the owner of a particular mark. Our lawyers can conduct these searches using online databases with very fast turn-around to supplement or complement an on-line search. An assignee search can be obtained for foreign registrations, as well as U.S. trademark registrations.

Other Searches. Occasionally, the need arises for additional information about a particular trademark. For example, a client may want to know whether a specific trademark has been abandoned by a competitor or whether it is still being used. An “in-use search” is appropriate for obtaining this type of information. In litigation, it may be necessary to evaluate the strength or weakness of a particular mark. A “dilution search” would provide the needed information. When selecting a company name, a “company name search” or a “corporate name search” is helpful in eliminating names that already are in use by other companies.

Trademark Watching. Often clients elect to maintain a watch over marks published in the Trademark Office Official Gazette or URLs on the Internet to assist them with locating potentially infringing marks. International and U.S.-based trademark watching services help companies keep tabs on competitors and protect their trademarks from infringers. Trademark watching services can be conducted on a periodic (e.g. monthly) basis with on-line computer databases or with assistance of professional watching services.

Trademark Application Preparation and Filing

Federal registration of a trademark or service mark creates certain additional rights and benefits not available to the trademark owner under common law. An application for registration of a trademark may be filed after a mark has been in use or before the mark has actually been used in commerce. Our lawyers work closely with clients to obtain the necessary information to prepare and file the trademark application and determine the most appropriate time to file.

Morris, Manning & Martin maintains a network of foreign associate lawyers in all commercially significant countries. Lawyers in the Firm have experience filing and prosecuting trademark applications internationally and many clients of the Firm have substantial international trademark portfolios.

Appeals

Despite the best efforts of clients and lawyers, the Trademark Office sometimes refuses to register a trademark. When a client disagrees with a Trademark Examining Attorney’s rejection, an appeal may be filed. Appeals from the Examining Attorney’s final rejections are first taken to the Trademark Trial and Appeal Board (TTAB), and then, if necessary, to the Court of Appeals for the Federal Circuit.

Morris, Manning & Martin lawyers are experienced in appeal procedures before the TTAB and the Federal Circuit. Procedures typically include preparation and filing of briefs, followed by oral argument.

Oppositions

After an application for registration of a trademark is examined and approved by the Examining Attorney, the mark is published in the Trademark Office Official Gazette. Publication opens a thirty day period during which an opposition to registration of the mark may be filed. Oppositions are litigation-like proceedings in the Trademark Office that determine whether a mark is entitled to registration.

Morris, Manning & Martin is experienced in opposition procedures before the TTAB. Oppositions typically include discovery, preparation and filing of briefs, followed by oral argument.

Cancellations

Occasionally, a mark is improperly registered or is abandoned after being properly registered. Any party that believes it is or may be damaged by such a registration may file a petition for cancellation of the registration to remove it from the Trademark Register. If contested by the registrant, cancellations - like oppositions - are litigation-like proceedings before the TTAB.

Maintenance

Between the fifth and sixth year after a trademark registration has issued, a trademark owner must file a declaration of continuing use of the trademark or the registration will be canceled. The Firm dockets the due date for this declaration and provides a reminder to active clients of the upcoming due date.

A trademark registration is valid for a period of ten years. A registration may be renewed by filing a renewal application and paying the appropriate fees. The Firm also dockets the renewal date and provides a reminder to active clients, as well as foreign renewal and other relevant foreign due dates.

Upon request, the Firm will provide a comprehensive status report about a client’s intellectual property portfolio, which often is useful for management oversight. These reports typically include the status of application preparation, any outstanding Office Actions and due dates, affidavit and renewal due dates and registration expiration dates. The content and format of these reports can be customized to meet a client’s informational needs.

Licensing and Other Asset Transactions

Our lawyers have experience in drafting and negotiating license agreements, as well as evaluating and revising license agreements presented by third parties. We can recommend, draft and negotiate licensing agreements, including exclusive, non-exclusive, territorial and foreign.

Trademark Prosecution

Stages of procuring a trademark registration subsequent to filing the trademark application are called “prosecution.” Lawyers at Morris, Manning & Martin have experience in all phases of prosecuting trademark applications. When a communication is received from the Trademark Office, the client is notified. Depending upon the client’s goals, the attorney usually provides comments and recommendations for response. Actions taken to pursue the trademark registration can include preparation of a response to a communication, telephone interviews with the Examining Attorney and preparation of affidavits in support of registration. Our lawyers provide information about the available courses of action and help the client decide which course of action is the best under the circumstances.

Occasionally, survey evidence is required to establish that a mark is recognized by the public as a trademark to secure a registration. The Firm has relationships with several professional companies that are able to conduct the required surveys.

International Trademark Services

Some clients elect to pursue protection for their trademarks in foreign countries. Morris, Manning & Martin can help clients protect trademarks in almost every country recognizing trademarks and having a trademark registration system. In addition, we can assist companies located outside the U.S. in filing and pursuing U.S. trademark registrations.