Trademark and Unfair Competition Attorney

Trademark

A trademark is a word, name, symbol, or device that identifies and distinguishes goods and services in the marketplace.  Among other things, a trademark can be a company name, a product or service name, or a logo.  Virtually every business has a trademark.

A company’s trademarks are valuable intellectual property assets that are protected under federal, state, and common law.  To gain the most protection, it is important to select a strong mark that meets the requirements for registration.  Once a strong and registerable mark is selected, it is important to clear the mark by making sure it is available before using and applying to register the mark.  In addition, a trademark must be properly used, maintained, and protected, as a failure to do so may result in a loss of trademark rights.  In this regard, Owens Tarabichi counsels clients as to each part of the trademark lifecycle:

• Trademark Selection.  During the initial stage of creating and selecting a trademark, there are important factors to consider, such as the inherent strength of the mark, the foreign meaning of the mark, and the availability of a corresponding domain name.  If you have not yet selected a mark, we can help you choose a suitable mark through brainstorming sessions, mark creation software, or hiring outside brand creation companies.  If you have selected a mark, we can assess the legal strength of your proposed mark and provide you with advice as to how to increase the legal strength and registerability of your proposed mark.
• Trademark Clearance.  After selecting a mark, it is important to clear the mark to ensure that using the mark will not infringe someone else’s mark and that the mark is registerable.  We conduct comprehensive searches of federal, state, common law, domain name, Internet, and international (when appropriate) databases and provide availability opinions based on the results of these searches.  When availability searches reveal potentially conflicting marks, we can conduct trademark investigations to gather more information about the potentially conflicting mark, such as whether the mark is currently in use, where the mark is in use, and the exact nature of the mark’s use to determine if the mark poses a problem.
• Trademark Registration.  Registering a trademark with the United States Patent and Trademark Office (“PTO”) is an important part of protecting a mark.  We prepare and file trademark applications to provide the maximum scope of legal protection allowable.  Using our prosecution experience, we respond to office actions issued by the PTO in a manner that maximizes the chances of overcoming the PTO’s registration refusal.
• Trademark Maintenance.  Unlike other intellectual property assets, trademarks can last forever if they are properly maintained.  In order to maintain a trademark registration, however, various filings must be made with the PTO at various intervals, such as declarations of continued use and applications for renewal.  We ensure your trademark registration continues in force by making the required filings.
• Trademark Protection and Style Guides.  A trademark owner must ensure that his mark is being protected—otherwise, the legal strength of the mark can decrease or even vanish altogether.  We advise clients as to how to properly use their trademarks in their business communications and marketing efforts to ensure that the trademark is protected under trademark law.  One way we do this is by developing trademark style guides to ensure that both the company and third parties use the marks properly.
• Trademark Exploitation.  Given the commercial value of trademarks, it is not surprising that many owners seek to exploit their marks.  In this regard, we can structure licensing arrangements and prepare licensing agreements that protect your trademark rights while capitalizing on their value.  We also prepare trademark assignments and conduct trademark due diligence in connection with business acquisitions.
• Trademark Watch and Enforcement.  It is also important to protect one’s mark against unauthorized third parties.  Accordingly, we implement trademark watches that monitor the marketplace for infringement.  When an infringement is revealed, we enforce our clients’ trademark rights by, among other things, sending cease and desist letters as appropriate.
• Litigation and Administrative Proceedings.  We represent both plaintiffs and defendants in both federal and state trademark infringement litigation.  In addition, we represent parties in opposition and cancellation proceedings before the PTO.

Unfair Competition

Trademark law is part of the broader law of unfair competition.  Generally speaking, the law of unfair competition prohibits deceptive or wrongful business practices that are used to gain an unfair advantage over competitors or that confuse or mislead consumers.  Though unfair competition encompasses a wide variety of unlawful practices, some specific examples include false advertising, false representations about products or services, bait and switch selling tactics, the unauthorized substitution of another brand or product in lieu of the one ordered, and misusing confidential information.

Because of the broad scope of unfair competition, unfair competition claims have become widespread in litigation, often appended to complaints alleging intellectual property violations, such as patent, copyright, or trademark infringement or trade secret misappropriation.  With the explosion of unfair competition allegations and lawsuits, it is important to ensure that both you and your competitors are not violating either state or federal unfair competition laws.

With substantial experience pursuing and defending against unfair competition claims, Owens Tarabichi LLP advises clients regarding their own and their competitors’ tactics vis-à-vis the laws of unfair competition to ensure a full understanding of the issues and available options.  We also represent both plaintiffs and defendants in unfair competition lawsuits.