Our filing and prosecution work is informed by a deep knowledge of the client’s business and future goals. When a client asks us to file a new trademark application in the U.S., we carefully prepare a filing strategy that fits their particular situation. We consider the format of the mark to be registered (word, stylized, logo), determine the applicable filing and registration bases (use based, intent to use, Paris Convention priority, foreign registration), and then locate and review acceptable specimens of use. We also help clients prepare accurate descriptions of goods and services for their applications in order to minimize the chances of receiving a refusal based on indefiniteness, avoid conflict with prior marks, and offer the broadest options for eventual foreign filings based on the U.S. application.

Upon receipt of a refusal from the USPTO, we advise our clients on the issues holding up their application, whether informal or substantive, and recommend the best strategies to overcome them. When a formal response is not the best or more efficient strategy, we are not afraid to think outside the box – successfully identifying leverage points for negotiating consent agreements, making the case to Examiners over the phone, and taking advantage of changes in the law to press our client’s case. Pierce Atwood trademark attorneys have extensive experience addressing all types of substantive issues before the USPTO including refusals based on likelihood of confusion, descriptiveness, genericness, geographic significance, surnames, ornamentation, and specimen issues. We have assisted clients with registration of trade dress, as well as other non-traditional marks such as model/grade designations, sound marks, and background designs. When necessary, we assist our clients in establishing secondary meaning through evidence of use, promotion, and consumer response.

When our clients are interested in filing applications for their marks outside the U.S., we start those discussions early in order to determine the best strategies and to ensure that the domestic application is filed in a way that will maximize the client’s foreign-filing options. We advise our clients on the advantages and disadvantages of using the Madrid Protocol to file applications outside the U.S., and we have considerable experience managing all aspects of the International Registration system. When our clients elect to file foreign applications on a national basis, we call upon our extensive network of firms and agents located throughout the world to assist with the process.