Today, it is crucial for businesses to establish a brand identity through the strategic use of trademarks and service marks to compete in the global marketplace. While consumers rely on these to identify brands, trademarks also allow companies to distinguish their businesses from the competition. Although actively using a mark in commerce offers some degree of legal protection, it is crucial to secure a proper trademark registration with the U.S. Patent and Trademark Office (USPTO).
Trademark Lawyer Serving New York & Beyond
SSMP advises clients throughout all phases of brand identification, trademark selection, registration, and enforcement. We have extensive experience conducting searches of the registry and preparing of registrations. Our team also represents clients in opposition and cancellation proceedings, and trademark litigation if necessary. We have a well-earned reputation for helping our clients protect their rights in the U.S. and worldwide.
A successful trademark prosecution hinges on demonstrating that the mark can be used without violating the rights of others. It is also necessary to show that it is strong enough to minimize the risk of infringement. At SSMP, we routinely conduct searches by focusing on the three critical benchmarks of registration — clearance, type, and strength. Our trademark attorneys have an understanding of the laws and procedures applicable to trademark registrations. We prepare applications and work closely with trademark examiners at the USPTO to expedite the process. We also assist clients that have a global presence with international trademark registrations.
The trademark attorneys at SSMP also assist clients with Office Actions — the refusal by an examiner of an application. It is worth noting that an examiner’s response typically outlines problems with the application that must be addressed before it can be approved. We take the necessary measures to make corrections in the application and clarify key points that show why the trademark is registerable. If a final office action is issued, we may advise pursuing an appeal before the Trademark Trial and Appeal Board (TTAB).
Oppositions and Cancellations
Other parties have the right to oppose registrations or seek the cancellation of registered marks under U.S. and international trademark law. We represent clients whose marks are being challenged as well as those who are challenging the marks of others. Our trademark attorneys have a proven track record of successfully representing clients in opposition and cancellation proceedings before the TTAB. We are also well versed in the international opposition proceedings under the Madrid Protocol. In all cases, we are committed to protecting the rights of our clients.
At SSMP, we are keenly aware that it is necessary for many our clients to expand into the global markets. In doing so, it is crucial to register their trademarks in any region where their goods or services are offered. Our trademark attorneys have extensive experience preparing applications for international registrations under the Madrid System. We work closely with each client to develop a comprehensive strategy for protecting their brand internationally so that they can maintain a competitive advantage globally.
Trademarks are valuable assets that can generate additional revenue through licensing. Moreover, licensing allows a business to expand into new territories. Licenses are also ideal for businesses seeking to take advantage of another party’s sales, marketing and distribution channels through strategic alliances. Finally, as with other IP licenses, a license can be used to resolve infringement claims and mitigate the costs of litigation.
At SSMP, we routinely negotiate and prepare trademark licenses. We help clients clarify the geographic territory in which the trademark can be used as well as the nature and quality of the goods and services being offered. Because quality control is crucial to the licensor, we draft provisions that provide for a means for monitoring and controlling the licensee’s use. We also work with our clients to ensure favorable royalty and license terms.
New York Trademark Attorneys
At SSMP, we handle all aspects of the registration process and provide our clients with ongoing counsel concerning potential opportunities to expand their brand identity. By helping our clients obtain proper registrations, they are able to effectively bar competitors from using those marks. Our trademark attorneys represent clients in appeals before the TTAB as well as in opposition and cancellation proceedings.
We are also highly experienced in all aspects of trademark and unfair competition litigation including trade dress infringement, counterfeiting, false advertising, “grey market” actions and trade disparagement. Above all, we are committed to helping our clients maximize the business value of their trademarks. For over 45 years, we have provided trademark strategies to clients throughout Long Island, New York, and Connecticut and across the globe. Call our office or complete the contact form on our website to set up a no-cost consultation.
Scully Scott Murphy & Presser PC proudly serves all areas of New York and Long Island, including Nassau County and Suffolk County.