Trademark Counseling

Technical Areas

Sheridan Ross has a thriving and diverse trademark practice that includes all aspects of brand protection. The rapidly evolving digital and global marketplace making brand recognition more important than ever, and our trademark attorneys work with globally recognized brands and companies of all sizes providing comprehensive protection strategies for their trademark, copyright, and trade dress portfolios.

Our lawyers advise clients on a wide range of trademark and copyright issues both in the United States and abroad, and our team is skilled at handling large, complex trademark portfolios, with many moving parts. In addition to our longtime experience in providing skilled counseling on brand and portfolio management, we have filed thousands of trademark applications with the USPTO, as well as represented numerous clients before the Trademark Trial and Appeal Board and the Federal Circuit.

Our team works closely with our clients to develop effective protection and enforcement strategies for their intellectual assets on a global scale. We routinely file applications around the world, including European Union trademark and Madrid Protocol filings, and we frequently tap a network of carefully selected foreign lawyers to help with special needs outside the United States.

Our clients frequently turn to us for copyright advice to help protect and leverage their creative works, including computer software, books, photographs, architectural designs, educational materials, music, movies, and animation.

As the Internet continues to mature, the scope and nature of disputes over domain names, e-commerce, and online content also continues to evolve. Our lawyers have extensive experience proactively handling Internet issues, including domain name disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP), cybersquatting matters, use of trademarks in advertising, unlawful sale of trademarked merchandise, and commercial email use and spam regulations.

We also routinely counsel clients on a variety of intellectual property issues related to online content, including social and business networking sites, blogs, the Children’s Online Privacy Protection Act (COPPA) and the Digital Millennium Copyright Act. We are particularly skilled at drafting privacy and terms of use policies, as well as website development agreements and other Internet-related agreements.

As an intellectual property boutique firm, we are well versed in all aspects of trademark law.

Trademark Clearance

Search analysis and decisions are one of the most important aspects of the trademark practice. There is a certain art to decisions regarding whether a mark is available for use. Our style is to help clients through this process by providing true opinions on whether moving forward with a mark presents an acceptable level of risk. In doing so, we hope to educate clients as to how the search process works and the reasoning for our opinions. Especially when there are last-minute requests from a marketing department, we minimize the stress associated with search evaluation. We get to know our clients, their product lines, the geographic locations where it makes sense to search, and their comfort level with risk. At Sheridan Ross, the search process is not mysterious, but a collaborative process with our clients with a shared goal of arriving at good business decisions.

Trademark Filing, Registration, and Maintenance

For more than six decades, Sheridan Ross’ trademark attorneys have helped clients secure and maintain protections for their marks. Our focus in each case is to provide comprehensive counsel related to the long-term health of our clients’ reputations by ensuring their brands are protected from every angle.

Trademark Prosecution

Our lawyers advise clients on a wide range of trademark and copyright issues both in the United States and abroad, and our team is skilled at handling large, complex trademark portfolios. We are currently managing thousands of active U.S. trademark applications and registrations. We file virtually all documents with the USPTO electronically, using the E-TEAS system and also utilize the lower cost TEAS-PLUS filing option when appropriate.

Our international prosecution services provide benefits beyond the mere filing of an application. We help clients develop strategies and approaches that make use of specific jurisdictional rules, such as “first-to-file” countries. Through our expansive network of skilled international associates, we provide effective global portfolio management under a system that keeps costs at a minimum.

Many of our clients rely on our trademark attorneys to help them enforce their marks throughout the world. In some cases, this requires our attorneys to monitor e-commerce and other marketplaces for infringing uses of relevant marks, though we also often police domain name registrations and other realms where our clients’ marks are being violated. Our recent work has increasingly involved working with U.S. Customs officials to help them identify counterfeit or fraudulent products that we recognize dilute the power of our clients’ brands. Regardless of venue, our trademark attorneys are skilled at enforcing and protecting our clients’ reputations.

Oppositions & TTAB Proceedings

For more than 30 years, Sheridan Ross has been involved in thousands of extensions of time to oppose, opposition and cancellation actions before the TTAB. Our firm has a wealth of experience in ex parte and inter partes proceedings before the Board on behalf of large and small clients alike. Also, we understand that litigation can be an effective business tool, and when a client asks us to elevate matters to the courts, we aim to resolve disputes quickly in favor of our clients.

Trademark Transactions

We understand the nuances of crafting an array of agreements and other documents to ensure the protection of a client’s intellectual property. Our transactional practice includes drafting and reviewing licensing agreements, software development agreements, intellectual property transfer agreements, consulting contracts, marketing agreements, non-disclosure agreements, and corporate sponsorship agreements. These agreements address the intricacies involved in the development, licensing or sale of intellectual property, and are strategically tailored to achieve our client’s business goals.

For clients whose products include unique and distinctive packaging or physical attributes, our trademark attorneys provide counsel to secure trade dress protection in the U.S. and abroad, often in concert with traditional trademark protection.  

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