Trademark Counseling, Clearance and Litigation – ™

The firm counsels clients on all issues trademark owners confront in the course of their business. The first step in our counseling process is to quickly become familiar with the client’s business, its goals and place in the market. Doing so enables us to provide concrete, client-specific advice on trademark and brand protection.

At the clearance stage of the trademark process, our attorneys evaluate the availability of marks for adoption and use, analyze search reports, discuss potential registrability issues and provide written clearance opinions.

After evaluating the availability of a trademark or service mark, the firm provides each client with practical advice regarding the adoption of the prospective mark. This may include the filing of a trademark application with the United States Patent and Trademark Office, evaluating whether protection should be obtained abroad and advising as to the best way to obtain that protection. The firm further advises clients on all potential enforcement and litigation issues that may arise.

Trademark Prosecution and Registration – ®

The firm is well versed in preparing and prosecuting trademark and service mark applications for marks in fields and International Classes. Mr. Schiffrin and Ms. Longo have extensive knowledge of the practices and procedures of the United States Patent and Trademark Office (USPTO) and have successfully obtained federal trademark registration for hundreds of marks throughout the course of their careers. Additionally, in his capacity as a former Trademark Examining Attorney with the USPTO, Mr. Schiffrin has reviewed thousands of trademark applications, giving him great insight into the inner workings of the USPTO examination process.

In addition to drafting and filing applications for registration, the firm will take all actions necessary to achieve registration, such as responding to USPTO refusals and requirements and preparing all required documentation.

Trademark Trial and Appeal Board Proceedings

Our firm handles all types of proceedings before the Trademark Trial and Appeal Board. If your mark has been refused registration, our firm can handle your ex parte appeal to argue against a final refusal of your application. Our attorneys also have extensive experience handling inter partes proceedings before the Board. Whether you are seeking to oppose an application, or you application has been opposed by a third party, we can handle your case until resolution. We can also handle your cancellation proceeding, whether you are seeking to cancel a registration or defend against a cancellation action brought by a third party.