Trademark Counseling, Prosecution & Enforcement
In our trademark prosecution practice we do not treat applications to register marks like routine, ministerial tasks. We recognize that to properly protect a client’s trademark rights, we must have a comprehensive understanding of the client’s business operations, marketing and branding strategy, and its competitive landscape. Before ever filing an application, we work with our clients to identify its registrable marks and prioritize them according to their importance, understand the trade channels through which the goods or services are marketed, and assess third-party registrations and use of marks that could affect the client’s trademark registration strategy. By identifying and evaluating third-party registrations and applications, we can describe our client’s goods or services in a manner that will permit registration. Or we can approach the third parties to obtain consent letters or co-existence agreements, permitting our client’s application to proceed to registration.
After filing the application, we are zealous yet strategic advocates while prosecuting the matter before the U.S. Patent and Trademark Office. We recognize that positions we take while prosecuting the trademark application can have significant effect on the client’s future trademark enforcement matters. Persuading the Trademark Office to register the mark as non-descriptive, for example, may bolster the strength that a future court affords the mark in the event our client files suit against an infringer. Additionally, we employ creative strategies to overcome objections raised in Office Action letters, to obtain appropriate registrations as efficiently as possible.
Trademark Trial and Appeal Board Proceedings
We believe that our competence handling matters before the TTAB is an integral part of our trademark prosecution services. We create strategies to use the TTAB’s cancellation and partial cancellation procedures to obtain registrations for our clients where the Trademark Office initially refused registration.
Monitoring and Portfolio Management
During the prosecution of the application and after registration, we monitor third-party use and applications to register marks that could encroach on our client’s rights of exclusivity. We issue cease-and-desist letter, obtain co-existence agreements, and, when necessary, file opposition proceedings before the TTAB or commence litigation against the infringing party.
International Trademark Counseling
Our clients look to us to craft strategies to obtain registrations in the foreign jurisdictions critical to their business success. Where possible we prosecute the applications ourselves and, where appropriate, we tap a deep network of international attorneys to deliver efficient results for our clients.
Trademark, Unfair Competition & Copyright Litigation
In cases where trademark disputes cannot be resolved informally or with interparty proceedings, MPP’s attorneys aggressively litigate the matter in the federal or state court system. We successfully represent plaintiffs and defendants in both federal and state jurisdictions in trademark infringement, false advertising, counterfeiting, theft of trade secrets and other unfair competition disputes arising under state law, at both the trial and appellate levels. We also represent numerous clients in various industries and professions in copyright infringement litigation in federal courts throughout California and Nevada.
We have a group of specialized appellate lawyers with the experience and understanding of how to frame and argue an IP case most persuasively to the appellate courts. In fact, we have successfully handled many trademark and copyright appeals for clients who we did not represent in the trial courts. Whether on in-house appeals, or new appeals in the first instance, we bring seasoned yet fresh eyes to our client’s case.
OUR REPRESENTATIVE MATTERS
A sampling of recent published decisions in this area include: