A trademark is a word, symbol, or sign that indicates the origin or source of a product or service. Trademarks can last indefinitely, if properly renewed. Renewals in most countries (including the US) must be filed every ten years.
At Wells IP Law, we have prepared clearance reports for hundreds of trademarks and responded to hundreds of Office Actions addressing statutory issues that include likelihood of confusion, descriptiveness, surname refusals, geographic descriptiveness, foreign equivalents, and changes to descriptions of goods and services. In fact, as of April 2012, Nicholas Wells has more clients with pending U.S. trademark applications than any other Utah-based attorney.
We have significant experience with trademark filing under the Madrid Protocol, including both initial applications and Office Actions for trademark applications originating in both the U.S. and in other countries (foreign office of origin applications that reach the U.S. via a Request for Extension of Protection).
We also manage foreign trademark counsel for U.S.-based clients who are seeking trademark protection in Europe, Latin America, Canada, Asia, and Australia.
In addition to U.S. trademark prosecution, we file in ex parte appeals at the Trademark Trial and Appeals Board, and participate in oppositions and cancellations, negotiate trademark license agreements, consent agreements, co-existence agreements, and settlements relating to trademark disputes, including disputes related to online trademark infringement. Where negotiation is not possible, we manage trademark-related litigation in U.S. federal courts.
Our trademark experience includes:
- Handling multiple accusations of online trademark infringement for a major web hosting company whose clients’ website contained potentially infringing trademarks.
- Negotiating settlement terms for a client accused of infringing the trademark of a major U.S. franchise operator.
- Analyzing online trademark infringements and sending cease and desist letters for a Fortune 50 corporation.
- Responding to Office Actions from the United States Patent and Trademark Office for a German client who originally filed a trademark application in Germany under the Madrid Protocol.
- Obtaining trademark registrations throughout the European Union and Armenia for a U.S.-based multinational in the engineering services sector.
- Filing trademark cancellation proceedings against a major Japanese shipping company on behalf of a U.S. client.