We provide everything clients need in trademark, copyright, and brand protection services, whether you are an individual entrepreneur or a global corporation. Our founder, Jason Nardiello, has many years of experience providing trademark, copyright, and brand protection services to some of the most well-known brands in the world. We create tailored IP portfolio development, maintenance, and enforcement strategies to leverage our clients’ brands and identities in the United States and worldwide.
Trademark and Brand Protection
Trademark and Brand Protection Services
TRADEMARK REGISTRATION & MAINTENANCE
We do not mechanically file trademark applications as some law firms and many self-help trademark service providers do. Instead, for a realistic cost, our representation starts as early as when you develop an idea for a new trademark. We guide you through the steps to decide on what kind of brand to adopt because we know what types of trademarks are the most likely to be allowed to register at the USPTO. We can even predict which marks can be successfully defended or enforced in the marketplace against infringers or competitors. We provide complete trademark registration and maintenance services to our clients. We have successfully filed and registered thousands of trademarks for all clients, from individuals to global companies.
As we guide you through the registration process, we advise you on effectively defining goods and services to obtain the most extensive scope of protection legally possible while avoiding USPTO Office Action refusals. Getting broad protection and avoiding a refusal to register is a delicate balance, and we have experience obtaining enforceable trademarks for our clients while saving them money.
We know what it takes to increase registration chances and avoid costly office actions from the USPTO. If our client does receive an Office Action, we quickly respond and submit legal arguments in favor of registering our clients’ trademarks. These include all types of refusals, including refusals for descriptiveness, failure to function as a trademark, likelihood of confusion, goods/services refusals, specimen sufficiency issues, goods and services classes issues, among other types of refusals.
We have experience beyond non-legal trademark providers and typical trademark attorneys.
Our founder, Jason Nardiello, an intellectual property attorney, has successfully registered and maintained thousands of trademarks at the USPTO for some of the largest companies in the world. What is significant about this experience is that large companies expect exceptional service and real results. Most trademark lawyers who are dedicated solely to USPTO trademark practice do not have this experience. Certainly, self-help service providers do not have this experience.
Furthermore, unlike most trademark service providers, we have experience in litigating trademark disputes in federal court and at the USPTO Trademark Trial and Appeal Board (TTAB). This experience gives us insight into what marks will have the required strength to enforce and what marks will have a better chance of surviving an attack by a competitor.
We can provide high-quality intellectual property trademark services to you beyond the ordinary trademark lawyer or trademark service provider using this experience.
Our representation can continue after registration.
When you obtain a registration, we can continue representing you by handling all required maintenance obligations set out by the USPTO. Our representation includes filing the necessary declarations of use and optional declaration of incontestability between the 5th and 6th year of registration and the renewal application filed every 10th year calculated from the date of registration. You will not need to keep track of these dates, as our advanced systems, which are electronically connected to the USPTO, assist us in informing you of maintenance deadlines well ahead of time.
We can also actively “watch” your trademark online and at the USPTO to warn you if someone is attempting to use or register a similar mark that would conflict with your rights.
Unlike most law firms, we charge flat fees for both USPTO trademark registration and for responding to Office Actions.
Based on our experience, we know that most law firms still operate by billing their attorney’s time by the hour for anything that goes beyond filing a trademark application. This is because they are concerned they will not be able to track their lawyers’ time, which could significantly affect their bottom line.
Because we have a great deal of experience in the entire trademark prosecution process and with the Patent and Trademark Office, we offer flat fees to respond to office actions.
We partner with our clients.
Even before you retain us to handle your trademark application, we partner with our clients to understand the legal issues in adopting your trademark. As part of the flat fee for registering the trademark, we will then have an initial consultation by phone or a video call with you to move the application process along as quickly as possible with the USPTO. Or, if you prefer to communicate over email only, you can always reach us at our email address: [email protected].
Empirical studies have shown that trademark applications have a 43% better registration chance if a lawyer handles them.
Many people and companies will use do-it-yourself trademark services such as LegalZoom and the Trademark Company. It is well-known that they provide incredibly cheap trademark services. However, they cannot provide legal advice because they are not trademark attorneys. It is extremely risky to spend money on a trademark and then use that trademark without legal advice. You run the risk of the trademark not being allowed to register at the USPTO, or even worse, getting sued for trademark infringement. While every case is different, it is likely not worth taking these risks to save a few hundred dollars.
Our founder, Jason Nardiello, has experience representing all types of clients and mark owners at the USPTO and intellectual property matters, from individual entrepreneurs to global corporations in their trademark portfolios’ management and growth. He has successfully registered and maintained numerous trademarks, include challenging registrations, such as trade dress designs for consumer products. Some of the clients’ trademark portfolios we have represented are as follows:
- Largest digital camera company in the world (Japan)
- Second largest digital camera company in the world (Japan)
- Largest video game producer in the world (Japan)
- Major multinational automobile manufacturer
- World’s largest manufacturer of computer printers and imaging related equipment
- Multinational air conditioning manufacturing company
- British and Swedish multinational pharmaceutical and biopharmaceutical company
- Multinational engineering and electronics conglomerate involved in manufacturing external disk storage systems, MRI systems, and transportation equipment
- Multinational electronics and information technology company involved in manufacturing computers, computer displays, and computer network components
When you hire us as your United States trademark attorney, you will receive personal service not provided by do-it-yourself trademark companies. By investing slightly more in your trademark protection process, you can avoid wasted USPTO fees and even the risk of trademark infringement liability. Please contact our office for a complimentary consultation concerning registering your trademark.
INTERNATIONAL TRADEMARK REGISTRATION
We work with clients to expand their brand as far as possible around the world by filing trademark applications abroad. Since there is no single trademark registration covering the globe, we develop international trademark protection strategies that suit our clients’ goals. These strategies could include filing in select individual countries or filing through regional IP offices. Another approach is to use the Madrid Protocol to obtain international registrations by leveraging your United States trademark application as a basis for the Madrid application.
With our relationships with many foreign associate intellectual property attorneys worldwide, we can help our clients register trademarks in virtually any foreign country. Most importantly, we work with you to develop a filing strategy that will meet your budget and give you the most extensive scope of protection available under trademark law.
At Nardiello Law, we know that many companies–even startups–will sell their products or services outside of the United States as early as their business opens. One way to secure intellectual property rights outside of the US is to use the Madrid Protocol to obtain foreign trademarks. The Madrid Protocol is a filing treaty in which a contracting party country agrees to allow the owner of a “home country application” to file just a single application to obtain trademark rights in many countries worldwide. However, some countries are excluded from this procedure, so it is essential to speak with a law firm with international trademark experience before filing at the USPTO. In some cases, it may make sense to apply directly to the individual country’s trademark office.
- Submit the “international application” through the USPTO (Office of origin)
- WIPO then examines the application and submits the application to the designated territories
- The application is then substantively examined by each designated individual country or regional IP office.
- If the application passes the prosecution stage and can register, it will be published for opposition, and then registration will issue in that country or region
TRADEMARK SEARCHING AND CLEARANCE
If you or your company have not yet selected a trademark, we will consult with you before adopting a brand to determine if it is available for use and registration. A consultation is an essential first step, as it can mean the difference between moving forward with a successful business or product line or one day—sooner or later—having to abandon the brand (and maybe even company) because of the holder of a prior right in the marketplace. To determine trademark availability, we perform several types of trademark searches that go far beyond simple USPTO database searches. These are crucial to determine if any potentially conflicting marks were used before your mark but are not yet registered.
With the search results, we then advise you on the likelihood of success in registering the trademark and the risk of using the brand in the US and other countries. We have a long history of advising clients on these risks in both the US and abroad through our international associate attorney relationships worldwide. Furthermore, by using our experience in representing clients in federal court trademark litigation, USPTO TTAB opposition and cancelation proceedings, and UDRP proceedings, we can provide our clients with a real-world assessment of their risks and provide them with helpful advice in moving forward with their trademarks.
We also help clients “watch” their trademarks in the United States and abroad, enabling them to determine if their trademark is being infringed and what course of action should be taken. Using various databases, we can watch for the application, registration, or use of trademarks similar to yours in the US and abroad. If you are not watching the marketplace for conflicting trademarks, there is a possibility that someone could be using a mark that is similar or identical to yours. If that coexistence continues for some time, you could lose rights in your trademark.
We are experienced in reviewing watch report data and can provide you with prompt notice when we believe a particular registration or use could endanger your rights. We will then consult with you on the best strategy to enforce your trademark.
Courts have repeatedly decided that a trademark owner’s failure to police its trademarks could result in the trademark owner’s loss of trademark rights, so having a trademark watch in place is essential.
We provide trade dress registration, enforcement, litigation, and counseling services to our clients. We can help you or your company protect or enforce your product or packaging designs. This includes the layout of retail establishments, themes, or service styles, including restaurants, electronics stores, apparel stores, department stores, hardware stores, grocery stores, etc.
Trade dress law protects product packaging or the form of the product itself. Some well-known examples of trade dress are the Coca-Cola bottle’s design, Apple retail stores’ layout, and the Apple iPhone itself. Trade dress is a form of intellectual property protected under the U.S. Lanham Act, which is the source for federal trademark law. Trade dress protection can be an extraordinary benefit to clients, who may want protection for products that cannot be protected by trademarks, patents, or copyrights. With our experience in various aspects of IP law, we can counsel you on the best trade dress protection strategy.
US trade dress law is frequently subject to change and development. In general, it is easier to get protection for product packaging trade dress than it is to obtain protection for product design or product configuration trade dress. To protect a product design under trade dress law, a trade dress applicant or plaintiff will need to prove to the USPTO or the court that the design has developed “secondary meaning” in the marketplace. “Secondary meaning” is the legal concept that the product has such wide recognition in the market; prospective purchasers know that the design comes from a single company or source. We have experience in both successfully registering trade dress designs and enforcing the designs in federal court.
We can consult with you to determine if trade dress protection is possible for your product or packaging and whether it should be the basis for enforcement.
TRADEMARK OPPOSITION AND CANCELLATION PROCEEDINGS
Sometimes, trademark owners can resolve disputes through specialized proceedings at the Trademark Trial and Appeal Board (TTAB), a part of the US Patent and Trademark Office (USPTO). These proceedings are similar to federal court lawsuits in some ways but differ significantly in others. TTAB proceedings have only two functions: to either stop a trademark application from registering (an “opposition”) or, to cancel an already-registered trademark (a “cancellation”).
Though TTAB opposition and cancellation proceedings have a limited purpose, they are still useful because preventing another party from obtaining registered trademark rights or canceling previously granted rights is very significant. Specifically, preventing a federal trademark registration through an opposition proceeding can prevent someone from receiving registered rights that might prevent you or your company from expanding your brand or products nationwide. Similarly, canceling a trademark registration could also help you grow your brand if the registered rights were improperly obtained. For example, the trademark registrant may not have used the trademark before your company, or the trademark might be descriptive of the goods or services and, therefore, not a valid trademark. Even more, the registrant could have tricked the USPTO into granting a registration. For example, sometimes trademark applicants make intentionally false statements in their application or other filings that the mark was in use on a specific date when, in fact, it was not in use. Such a statement may be considered “fraud on the PTO” and could set the foundation to cancel the registration.
We have handled many TTAB matters for clients of all sizes, from global corporations to individual brand owners. With our experience, we have learned how to use TTAB proceedings best to meet our clients’ goals, which could end the dispute or as part of a larger litigation plan.
Having represented both global companies and solely owned businesses, we are familiar with how companies can earn income from their trademarks by more than just directly selling goods or services under the mark. That is, trademark owners can license their trademarks to others who will pay a royalty for the brand’s use. There are both upsides and downsides to licensing your mark, and there are some responsibilities as well. Therefore, it is imperative to formalize the agreements in a written license that will lay out each side’s duties. When it comes to contracts, one size does not fit all, and the agreement must reflect the client’s goals and the attorney’s understanding of the client’s business. For example, if proper license term obligations are not drafted or understood by the licensor, the licensor can find themselves in a “naked license” situation, resulting in the loss of the trademark itself.
Nardiello Law helps both trademark owners and licensees create license agreements that add more value to their brands and secure their competitive advantage. We have a great deal of experience negotiating trademark licenses that meet our clients’ objectives and reduce the chances of future problems or conflicts between the parties to the license or with third parties. Based on our experience in litigating trademark licenses, we know what risks to look for and anticipate when drafting the agreement. We will work with you to know all the facts of your business that are necessary before drafting and negotiating.
TRADEMARK INFRINGEMENT DEFENSE SERVICES
We also assist businesses in defending against companies or individuals who wrongfully assert trademark claims against our clients. In these cases, there are various reasons a company or person might send a cease-and-desist letter or even bring a trademark infringement lawsuit without a strong or sufficient legal basis.
When faced with a legal threat or actual lawsuit, the typical goal is to convince the other side not to sue or remove oneself from the litigation as soon as possible—doing so requires an in-depth knowledge of federal and state trademark law as well as an understanding of federal court practice and how to dismiss or settle the case for as little expense as possible. Our founder, Jason Nardiello, has defended many companies and individuals who receive cease-and-desist letters or trademark lawsuits in federal court and has successfully resolved many trademark cases without the need to go through lengthy litigation or to trial.
There are many legal defenses a business or individual can use to respond to a trademark infringement complaint:
- Priority of Use: the client is the first user of the trademark in the US and therefore has the right to exclude others from using its mark.
- Statute of Limitations: this prevents a party from prosecuting a claim after a certain amount of time.
- No Evidence of Confusion or Dilution: the plaintiff must prove that there is at least a likelihood of confusion or dilution for a trademark infringement case to stand.
- Lack of Ownership of the Mark: the first element of every trademark claim is that the plaintiff owns a valid mark. Sometimes, someone other than the owner brings the lawsuit, which may be a reason for dismissal.
- Failure to Function as a Trademark: Not every designation placed on goods or packaging or used in connection with services can be a trademark. It must be an inherently distinctive source indicator, regardless of the party’s intentions when adopting the trademark.
- The Trademark is Generic: One cannot enforce generic words for a product or service as trademarks. For example, the term “accounting firm” alone cannot be protected for accounting services. However, a recent US Supreme Court decision did hold that “booking.com” was not generic. Therefore, one must take extra care to assert this defense, especially in domain names.
- The Plaintiff’s Rights are Geographically Limited: Trademarks that are not registered and only used in a limited geographic region may not be able to stop you from using your trademark on goods or services sold in an entirely different geographic location.
- The Trademark is Abandoned Through Non-Use: trademarks must be “actively” used to be enforceable. When the plaintiff has stopped use and has not intended to resume use, the mark cannot be enforced. There is a legal presumption that a trademark has been abandoned if a brand has not been used for three years or more.
- The Trade Dress (Trademark) is Functional: Functional features of trade dress, such as product design or packaging, are unenforceable. For example, if the product design or packaging serves an essential use or purpose or affects the product’s cost or quality, it cannot be enforced. One example is that yellow cannot be protected as trade dress for traffic signs, since yellow denotes “warning” to motorists.
- Descriptive or Nominative Fair Use: Sometimes, it is necessary to mention a competitor’s products or services in advertising, in social media, or on a web page. It may be permissible to do so if the reference to the trademark is not being “used” as a trademark but rather is just being used to describe that product or to compare it with one’s products.
Fraud at the USPTO: If a trademark owner made a material representation in its application (or other filings) with the intent to deceive the USPTO, it might be possible to cancel the trademark registration. If the registration is canceled, the owner could be prevented from enforcing its mark at all.
- Laches: A plaintiff who has waited too long to file a trademark infringement lawsuit may be prevented from maintaining a suit at all. In one case in 2015, a federal court dismissed a trademark infringement case when the plaintiff waited six years after the defendant’s trademark was registered to bring the lawsuit.
Trademark owners have a variety of claims they can sue for in federal court. Some typically related claims they can file may or may not be as strong or more robust than the trademark-related claims. The following are some of the types of claims plaintiffs bring federal court when they believe their trademark has been infringed:
- Trademark infringement (federal and state law)
- Unfair competition (federal and state law)
- Deceptive or Unfair Business Practices (state law)
- False advertising (federal and state law)
- Trademark dilution (federal and state law)
- Misappropriation (federal law and state law)
- Violation of the Anticybersquatting Consumer Protection Act
We have a good deal of experience defending clients against all of these claims, which are often seen in the context of trademark cases. It is vital to act quickly if you or your company have been served with a lawsuit alleging any of these claims, especially if the plaintiff is seeking quick relief from the court, such as a temporary restraining order (TRO) or a preliminary injunction (PI). We can help you evaluate the plaintiff’s lawsuit and, if necessary, defend you quickly in federal court.
UDRP DOMAIN NAME PROCEEDINGS
Part of protecting a brand or trademark involves protecting the domain names associated with the trademark. The domain name is the central functional component of most brand platforms since the website is usually the center of customer advertising, selling, or both. To prevent others from using domain names similar to your trademark, the most efficient strategy can be to file a Uniform Domain Name Resolution Policy (UDRP) complaint to obtain control over the infringing domain name. Please see the DOMAIN NAME LITIGATION section on our website for more information about these types of proceedings.
We represent clients in various types of domain name disputes in UDRP proceedings. Many times, these proceedings involve domain name squatting, hijacking, ransoming, or domain name theft.
We also counsel clients on avoiding drawn-out domain name disputes altogether or detecting potential problems before they escalate. Below are some types of services we provide clients to prevent domain name problems in the first place:
- Domain name watching services: domain name watching enables you to monitor the Internet for registered domain names that might be similar to your registered or unregistered trademark.
- Competitor tracking services: this can be key to learning which web properties your competition is acquiring and lets you make strategic decisions to counter the acquisitions.
- Cease and desist letters: this is a standard method of preventing domain name registrants from using similar domain names. However, care must be taken in wording the letters as an improperly worded cease and desist letter could backfire in the wrong case and cause the client to be sued.
- Trademark Registration and Maintenance: we consult with you to obtain all of the necessary registered rights to protect your trademark. Consultation is key to enforcing your mark online against domain name squatters and thieves.
The more successful your business becomes, the greater the chance that your products or trademarks could be counterfeited. Some counterfeiting operations are based solely in the United States, while many originate overseas. The counterfeiting problem is made worse by the introduction of global supply chains. Though there are upsides to selling in international markets, there are also challenges since worldwide commercial exposure results in a heightened risk of counterfeiting.
We advise clients on resolving counterfeiting, infringement, piracy, and copying threats that both US and international companies face. Our anti-counterfeiting solutions range from preventative counterfeiting measures, such as implementing an effective Trademark Registration & Maintenance plan and recording registrations with US Customs and Border Protection (CBP) to Trademark Watching services. In the event counterfeiters can still place counterfeits in the market, we use cease-and-desist letters and federal court counterfeiting complaints to stop the counterfeiting as soon as possible, if not nearly immediately. We are also experienced in pursuing anti-counterfeiting proceedings at the CBP, including drafting “e-allegations” and pursuing forfeiture proceedings once the CBP has seized goods at the US Border.
Using our entire portfolio of services, Trademark, Copyright and Brand Protection, Copyright Protection, IP Litigation, and Internet and E-commerce Law, we can provide effective planning services and enforcement solutions to protect against counterfeiting.