Trademark Prosecution Service Offerings

Among the trademark services that Haynes and Boone offers are:

  • Developing and implementing trademark clearance, protection, and enforcement programs
  • Planning, managing, and conducting worldwide trademark clearance and availability searches and analyzing proposed marks for registrability
  • Obtaining U.S. federal and state trademark registrations through the United States Patent and Trademark Office and local Secretaries of State
  • Crafting international trademark protection strategies and advising of relevant foreign trademark practices
  • Securing, maintaining, and enforcing trademark rights abroad through an established network of international counsel
  • Managing domestic and international trademark portfolios, including monitoring attendant deadlines such as renewals, tax, and annuity payments, declarations, and proof of use
  • Protecting branded products against counterfeiting and wrongful seizure by recording trademark registrations with the United States Customs and Border Protection Service
  • Advertising reviews and counseling regarding the proper use of marks and reviewing proposed sales, advertising, and promotional matter for compliance with trademark use and notice requirements
  • Initiating, prosecuting, and defending against claims of trademark infringement, unfair competition, trade dress infringement, and Internet domain name infringement (ACPA and UDRP claims) in state and federal courts, before ICANN dispute resolution panels, and through arbitration
  • Instituting, prosecuting, and defending against opposition, cancellation, and concurrent use proceedings before the United States Trademark Trial and Appeal Board and corresponding governmental units abroad
  • Conducting trademark portfolio audits
  • Developing and implementing domestic and international trademark watching services to guard against the use or registration of confusingly-similar marks by third parties 
  • Commissioning and conducting trademark-related investigations
  • Structuring, negotiating, drafting, and recording, as appropriate, trademark license, merchandising, security interest, acquisition, and co-branding agreements
  • Conducting domestic and international trademark due diligence in connection with client mergers and acquisitions and pending or threatened intellectual property litigation
  • Providing in-house seminars and continuing legal education programs to marketing and legal departments on trademark and copyright matters

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