Trademark and Copyright Prosecution

Trademark

Trademark searching and prosecution of applications for trademark registration are traditional elements of our practice. As a preliminary step to a full availability search, we are able to assist our clients through online screening searches. For this service, we subscribe to SAEGIS, as well as the databases available through LexisNexis and Westlaw. Thus, clients typically have turned to our attorneys for assistance in formulating new trademarks even before seeking clearance approval or opinion letters.

The maintenance of our clients’ existing trademark registrations, including the filing of Sections 8 and 15 affidavits and renewals, is facilitated through the use of a computerized trademark database system. Not only is the system automated to alert attorneys as to approaching filing dates, it has been designed to merge database records with form documents and letters to provide the most efficient services possible.

For clients with a large number of registrations to maintain, such a system is invaluable. Our practice handles international trademark matters for many of our clients. We assist clients in determining a strategy for globalization of their brand and related business.

On occasion, we work with foreign counsel already employed for other matters by our clients. We engage or recommend local foreign counsel with whom we have worked previously and who have demonstrated competence, reliability, accessibility and attention to our clients’ needs.

Attorneys from both the Litigation and the Intellectual Property practices work together in handling opposition and cancellation proceedings before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office.

Copyright

With the assistance of paralegals who concentrate on trademark and copyright registration and maintenance, we handle the registration of new copyrights for our clients. We also are equipped to search copyrights through the online databases referred to above. We work with clients on licensing, transferring and perfecting security interests in copyrightable works of all types, including computer software, as well as electronic and traditional print publication of text, graphics, music and animation.

Branding

Taft’s trademark attorneys offer a full range of legal services related to the enforcement and defense of infringing use, complying with advertising regulations and monitoring for dilution, and defending counterfeit. We routinely work with business owners, advising on IP-related issues, and when appropriate, integrate our legal team with marketing professionals to identify problems before they develop, not after.

Taft’s attorneys advise on issues such as:

• Rights clearing.
• International, federal and state trademark applications.
• Advertising review.
• Rights enforcement, including internet.
• Domain name rights enforcement, including international arbitrations.
• Federal and state court litigation of trademark, false advertising and unfair competition proceedings.
• UDRP and WIPO arbitrations.
• Counseling on trademark and branding campaigns.

Other services

In addition to trademark and copyright, our attorneys advise clients with respect to protection of trade secrets, unfair competition and false advertising. We have experience drafting and negotiating licenses, development agreements, nondisclosure and other agreements for use with research institutions, employees, independent contractors and other business partners of all types.

Taft is a member of the International Trademark Association (INTA) and has served as host for INTA’s roundtable discussions concerning the right of publicity, trademarks on the Internet and other intellectual property topics.