Overview of Our Trademark Legal Services

Trademark Search, Registration & Enforcement Services

Our Chicago business attorneys provide a range of trademark legal services, including trademark registration and trademark enforcement services, to clients throughout Illinois, the United States, and internationally. Our law firm has a strong focus on helping clients protect their brands and we have successfully assisted clients register a wide variety of trademarks, including slogans, logos, service and product names, certifications, and more. Our attorneys are responsive, professional and have received recognition from various legal publications. We represent businesses of all sizes, start-ups, franchisors, inventors, product developers, online sellers and entrepreneurs in many different product and service industries.

Our core trademark legal services include:

  • Trademark Searching: A comprehensive search of existing trademarks to ensure that a proposed trademark does not infringe on the rights of others.
  • Trademark Application Preparation and Filing: Preparing and filing a trademark application with the United States Patent and Trademark Office (USPTO) or other relevant trademark offices, such as the Illinois Secretary of State trademark office.
  • Trademark Prosecution: Assisting clients in navigating the trademark application process, responding to USPTO office actions, and negotiating with examiners to secure trademark registration.
  • Trademark Registration & Renewals: Assisting clients in maintaining their trademark registrations, and addressing periodic trademark renewals required by the USPTO.
  • Trademark Monitoring: Monitoring the use of trademarks to ensure that they are being used legally and to protect clients from infringement by others.
  • Trademark Oppositions and Cancellations: Assisting clients with initiating and defending trademark oppositions and trademark cancellations proceedings before the Trademark Trial and Appeal Board of the USPTO.
  • Trademark Infringement Litigation: Representing clients in trademark infringement lawsuits, including filing complaints, conducting discovery, and litigating in court.
  • Trademark Licensing and Assignment: Negotiating, drafting, and enforcing trademark license and assignment agreements.
  • Trademark Portfolio Management: Managing clients’ trademark portfolios, including reviewing and renewing trademarks, monitoring use, and ensuring compliance with trademark law.

Trademark Search & Federal Trademark Registration

Our law firm’s trademark search and federal trademark registration services typically involve a few key steps. The process often begins with a preliminary trademark search. This is conducted to determine if the desired trademark, or a similar one, is already registered or applied for in any state or federal (USPTO) database. This trademark search a critical step in avoiding potential trademark infringement issues.

Following the trademark search, if it appears that the trademark is unique and can potentially be registered, our attorneys will provide an specific advice to the client on the likelihood of registration success and any potential issues that may arise during the registration process. This may include advice on the distinctiveness of the trademark, potential conflicts, and whether the trademark is descriptive or generic, which could affect its registrability.

Our attorneys will then proceeds to prepare and file the trademark application with the USPTO. This involves carefully drafting the identification of goods and/or services to ensure that the client’s trademark is properly protected. Our attorneys will also select the appropriate basis for filing, such as use in commerce or intent to use.

Once the trademark application is filed, our attorneys will monitor the trademark application’s progress through the USPTO’s review process. This includes responding to any standard inquires or Office Actions issued by the USPTO’s examining attorneys, which may require legal argumentation or further clarification about the trademark application.

After the USPTO approves the trademark for publication, there is a 30-day period where third parties may oppose its registration. Our attorneys, if requested, will respond to any oppositions during this period.

Finally, if the trademark application survives any opposition and is approved by the USPTO, our attorneys will assist with maintaining the trademark registration, which includes filing necessary maintenance documents at regular intervals to keep the trademark active.

Registering a trademark with the USPTO provides a number of important legal benefits:

  • Nationwide Protection: Unlike unregistered or common law trademarks, which usually only offer protection in the geographical areas where the mark is used, a federally registered trademark provides protection across all 50 states.
  • Public Notice: Federal registration serves as a public notice to all that you claim ownership of the mark, helping to deter others from using a similar mark on related goods or services.
  • Legal Presumptions: It provides a legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods or services listed in the registration. This can be critical in trademark infringement lawsuits.
  • Listing in USPTO’s Online Databases: A federal trademark registration will be listed in the USPTO’s online databases, which is commonly searched by others considering the adoption or registration of a new mark.
  • Ability to Bring Action in Federal Court: If someone else is using your mark, having a federally registered trademark allows you to bring an action concerning the trademark in federal court.
  • Use of the ® Symbol: Once your trademark is registered, you have the right to use the ® symbol with your mark, signaling your federal registration and potentially deterring would-be infringers.
  • Basis for Foreign Filing: If you are considering international business, a U.S. federal trademark registration can be used as a basis for applying for a trademark registration in some foreign countries.
  • Ability to Record with U.S. Customs and Border Protection: You can record a U.S. trademark registration with the U.S. Customs and Border Protection (CBP) to assist in preventing the importation of infringing foreign goods.

Please remember that these are just some of the benefits, and each individual situation may be different. It’s always best to consult with a legal professional or a trademark attorney for specific advice.

Trademark Registration Services

A trademark is any word, phrase, symbol, design, or combination thereof that identifies your products and/or services and distinguishes your brand from your commercial competitors. Establishing brand recognition in the marketplace through strong trademarks is one of its most important and valuable assets of any business. Federal trademark registrations issued by the USPTO confer significant legal advantages to a trademark owner, including nationwide priority and exclusive rights in the trademark. If you or your business would like register one or multiple trademarks with the USPTO, our attorneys can assist!  Please do not hesitate to give us a call or fill out our contact form.  There is absolutely no charge to schedule an initial consultation with one of our trademark attorneys. *The average fees estimated below include USPTO filing fees.

Below are the 3 most requested trademark registration services

Search & Registration

$950*Average Fee
  • Our trademark attorneys will conduct a comprehensive search of all state, US territories, and federal trademark databases to determine if your trademark is available for federal registration. We will provide you with a detailed trademark search report and analysis of any potentially conflicting trademarks.
  • Consultation w/ Trademark Attorney & Filing of Trademark Application
  • Trademark Tracking & Responding to Standard USPTO Inquiries

Trademark Monitoring

  • Our trademark attorneys will monitor all new state and federal trademark filings for similar or identical applied-for trademarks. We will provide you with a detailed trademark search report and analysis of any potentially conflicting (or infringing) trademarks, including options to oppose conflicting applications.
  • Consultation w/ Trademark Attorney To Discuss Conflicting Marks
  • Filing Extension of Time to Oppose & Trademark Tracking

Trademark Renewals

$$975*Average Fee
  • Our trademark attorneys will review all appropriate information regarding the trademark registered with the USPTO and its renewal requirements and deadlines. We will select the appropriate evidence to show the USPTO continued use of the trademark in commerce with the specified goods or services.
  • Consultation w/ Trademark Attorney To Discuss Trademark Renewal
  • Responding to Standard USPTO Inquiries & Trademark Tracking

Trademark Clearance Search

A trademark clearance search is a comprehensive investigation conducted to identify any potential conflicts or issues before a new trademark is registered and used. This is an important step to minimize the risk of infringing on the rights of another trademark owner. The trademark clearance search involves both state and federal components.

On the federal level, our attorneys will search the USPTO database, looking for registered trademarks and pending applications that are identical or similar to the proposed trademark. This trademark database covers trademarks that are federally registered or applied for throughout the US. Our attorneys not only look for exact matches, but we also look for phonetic equivalents, similar designs, and other marks that could potentially be confused with the proposed trademark.

On a state level, our attorneys will check with each state’s Secretary of State’s office or other relevant state trademark office that handle trademark registrations. These state (and US territories) databases include trademarks registered at the state level, which may not appear in the federal databases.

In addition to these formal state and federal databases, our attorneys may also conduct a wider search that includes checking business directories, internet search engines, domain name registries, product catalogs, and more. This is often referred to as a common law search, and it can reveal unregistered trademarks that are in use. In the US, unregistered trademarks can have certain rights based on use, so it’s important to identify any potential conflicts here too.

After all the trademark searches are completed, our attorneys will analyze the results to evaluate any potential risks associated with using and registering the proposed trademark. This can include assessing the risk of infringement, the likelihood of being able to register the trademark, and any other potential legal implications. Our attorneys will then advise the client on the best course of action based on the search results.

USPTO Trademark Office Actions

A USPTO Office Action is a formal memorandum issued by an examining attorney from the USPTO. It signifies that there are issues with a pending trademark application that need to be addressed before the application can proceed towards registration.

Office Actions are typically issued after the examining attorney has completed their review of the filed trademark application. The time frame for this can vary depending on the examining attorney’s workload and the complexity of the application, but a first Office Action is usually issued around eight (8) months after the initial trademark application filing.

The reasons for an Office Action can be numerous. They may be issued for administrative issues, such as a missing or improper specimen of use, or a description of goods and services that is too broad or unclear. For instance, if the applicant hasn’t submitted a proper example of the trademark being used in commerce in relation to the goods or services identified in the application, the examining attorney might issue an Office Action asking for an acceptable specimen.

More complex issues can also prompt an Office Action. These include a likelihood of confusion with a pre-existing registered or pending trademark, or a finding that the trademark is merely descriptive or generic for the associated goods or services. For example, if the trademark is considered too similar to a trademark that’s pending or already registered, creating a likelihood of confusion in the mind of the consumer, the examining attorney will issue an Office Action refusing registration based on a Section 2(d) likelihood of confusion basis.

When an Office Action is issued, the applicant is given three (3) months to respond to the issues raised by the examining attorney. If the applicant doesn’t respond within this time frame, the application will be declared abandoned. It’s essential that applicants take Office Actions seriously, as they provide crucial information on the viability of a proposed trademark, and often require a knowledgeable response to successfully overcome the issues raised.

The following are a few of the most common reasons why Office Actions are issued by USPTO examining attorneys:
Likelihood of Confusion: An examining attorney may find that the applied-for mark is too similar to a registered or pending trademark, leading to a likelihood of confusion for consumers.

  • Descriptiveness: If the mark is merely descriptive or deceptively misdescriptive of the goods or services, it may be refused registration.
  • Genericness: If the mark is deemed generic, that is, it represents the common name for goods or services, it can’t be registered.
  • Improper Specimen of Use: If the specimen provided doesn’t show the mark in use in commerce for the listed goods or services, an office action may be issued.
  • Identification of Goods/Services Issues: The identification of goods and/or services may be indefinite, too broad, or otherwise unacceptable.
  • Format Issues: The mark as submitted doesn’t meet the formal requirements for trademark registration.
  • Information Missing or Incorrect: The application may have missing or incorrect information, such as missing the owner’s name or citizenship, or incorrect dates of first use.
  • Geographically Descriptive or Deceptive: If the mark is primarily geographically descriptive or deceptive, it may be refused.
  • Ornamentation: The applied-for mark is merely a decorative feature or ornamentation.
  • Scandalous or Immoral Matter: The mark consists of or comprises immoral, deceptive, or scandalous matter.

Trademark Monitoring

Trademark monitoring services are an essential part of maintaining a registered trademark and protecting it from possible infringement. Our trademark attorneys can provide trademark monitoring services to holders of registered trademarks issued by the USPTO.

Our trademark monitoring services typically involve continuous surveillance of the marketplace and the state and federal trademark databases to identify any new trademark applications or uses that could potentially infringe on our client’s registered trademark(s). Monitoring often includes searching for trademarks that are identical or similar, and that apply to related goods or services, which might cause confusion among consumers in the marketplace.

When potential infringements are identified, our attorneys will assess the severity of the infringement and potential risks. We will then advise our client on the best course of action. This could involve reaching out to the potential infringer to seek voluntary compliance, sending a cease and desist letter, or pursuing formal legal action, such as opposition proceedings in the USPTO’s Trademark Trial and Appeal Board or a lawsuit in federal court.

In addition to monitoring for possible trademark infringement, our attorneys will keep track of important deadlines and maintenance requirements related to our client’s registered trademark(s). This includes filing necessary documents and fees at specified intervals to maintain active registration status.

By providing these trademark monitoring services, our attorneys assist in not only preserving the integrity and value of our client’s trademark(s), but also in taking prompt action when potential trademark infringements arise. This proactive approach can help prevent dilution of the brand and protect our client’s business reputation and market position.

Trademark Assignment

Trademark assignment services are important for holders of registered trademarks issued by state trademark offices and the USPTO who wish to transfer their ownership rights in a trademark.  A trademark assignment involves the transfer of ownership of a trademark from one party (the assignor) to another (the assignee). This process includes several key steps, and our trademark attorneys are typically engaged to ensure the process is legally sound and properly executed.

Initially, our attorneys will often conduct due diligence to confirm the assignor’s ownership of the trademark and verify the scope of rights associated with the trademark. Our attorneys will also generally review any potential encumbrances or limitations on the trademark, such as existing licensing or co-existence agreements.

The next step usually involves drafting and negotiating the assignment agreement. The trademark assignment is a legal document that outlines the specifics of the transfer, including the parties involved, the rights being transferred, and any accompanying terms and conditions. Our attorneys will ensure that the trademark assignment agreement fully reflects the intentions of the parties and complies with relevant state or federal trademark laws.

Once the assignment agreement is signed, our attorneys will assist with recording the assignment with the relevant trademark office. For trademarks registered with the USPTO, the assignment must be recorded in the Assignment Recordation Branch of the USPTO. Similarly, assignments of state-registered trademarks should typically be recorded with the appropriate state agency.

Recording the assignment provides notice of the change in ownership to the public. If the assignment is not properly recorded, it may be ineffective against subsequent purchasers or mortgagees of the trademark.

NOTE – Under Trademark Law, trademark assignments “in gross” are prohibited. An assignment in gross occurs when a trademark’s ownership is transferred without the corresponding transfer of the goodwill associated with the trademark. Goodwill is the recognition and reputation that a brand and its trademark have built up over time. It’s this goodwill that gives the trademark its value and distinguishes the associated goods or services in the marketplace.

Trademark Maintenance & Renewal Filings

Trademark maintenance and renewal services provided by our attorneys ensure our clients trademarks continue to be registered and remain active. After a trademark is registered, it’s not simply protected indefinitely. There are specific maintenance requirements and deadlines that must be met to keep the registration alive. Our trademark attorneys assist clients by tracking these important dates and preparing the necessary documents for submission.

In the case of trademarks registered with the USPTO, maintenance documents and fees must be submitted at certain intervals. Specifically, a Declaration of Use (Section 8 Affidavit) must be filed between the 5th and 6th year after registration, and a combined Declaration of Use and Application for Renewal (Section 8 and 9) must be filed between the 9th and 10th year after registration, and every 10 years thereafter. A request for Incontestability (Section 15) may also be submitted with the Declaration of Use between the 5th and 6h year after registration.

Each of these filings requires a specimen showing the mark is in current use in commerce for each class of goods or services identified in the registration. Our trademark attorneys can assist in determining suitable specimens and properly preparing and submitting the necessary filings.

As for state-registered trademarks, the maintenance requirements and renewal procedures can vary by state. In Illinois, state trademark registrations must be renewed every 5 years.  Further, renewals may only be accepted within 60 days prior to the expiration date.

If maintenance and renewal deadlines are missed, a trademark registration can be cancelled or expire, and it may not be possible to reinstate the registration. Hence, our law firm’s role in these processes is not just about filing the correct documents, but also about providing valuable peace of mind that our client’s trademark rights will be properly maintained and protected.

Trademark Opposition Proceedings

Trademark opposition proceedings occur when a third party believes they may be harmed by the registration of a pending trademark application and challenges it before the Trademark Trial & Appeal Board of the USPTO.

Typically, once a trademark application is approved by an examining attorney at the USPTO, it’s published in the Trademark Official Gazette (TOG), a weekly online publication. Third parties then have 30 days to file a formal opposition to the registration of the applied-for trademark.

If an opposition is filed against a client’s pending trademark application, our trademark attorneys can assist in various ways. We can evaluate the opposition claim, provide advice on potential responses, and represent the client in any subsequent proceedings before the TTAB. These trademark opposition proceedings are much like a litigation process, involving pleadings, discovery, and potentially a trial and final decision.

On the flip side, if a client wishes to oppose a newly published trademark application that they believe may infringe on their own registered trademark, our trademark attorneys can analyze the potential grounds for opposition, prepare and file the Notice of Opposition, and represent the client through the opposition proceeding.

Regardless of whether a client is the opposer or the applicant facing opposition, our role is to protect the client’s interests and seek a resolution that safeguards their trademark rights. The ultimate goal is to either secure the registration of our client’s trademark or prevent the registration of a conflicting mark, as the case may be.

Trademark Cancellation Proceedings

Trademark cancellation is a proceeding in which a party seeks to cancel an existing registration of a trademark. These trademark cancellations proceedings take place before the Trademark Trial and Appeal Board (TTAB) of the USPTO. There can be several reasons for seeking a cancellation, such as allegations that a trademark is likely to cause confusion with an earlier used or registered trademark, or that a mark has become generic or abandoned.

If a client wishes to initiate a cancellation proceeding against a registered trademark, our trademark attorneys can assist in several ways. We can evaluate the grounds for cancellation, prepare and file a Petition to Cancel, and represent the client throughout the cancellation proceeding. This process is similar to litigation, involving pleadings, discovery, potential trial, and a final decision.

On the other hand, if a client’s registered trademark is subject to a cancellation proceeding, our trademark attorneys can help defend the trademark registration. This involves assessing the claim, advising on potential defenses, and representing the client before the TTAB.

No matter which side of a cancellation proceeding a client is on, our law firm’s role is to advocate for our client’s interests, seek a favorable resolution, and protect our client’s trademark rights.

Trademark Enforcement

Trademark enforcement services involve efforts to protect a client’s trademark rights and respond to potential infringements. Our trademark attorneys provide these services to holders of both Illinois-registered trademarks and federally registered trademarks issued by the USPTO.

A primary aspect of trademark enforcement involves monitoring the marketplace and relevant databases for potentially infringing use or new trademark applications. This could be a trademark that is identical or confusingly similar to the client’s trademark being used for related goods or services. By continuously monitoring, our attorneys can identify potential issues early and take prompt action.

If potential infringement is identified, our attorneys typically conduct an analysis to assess the risk and impact on the client’s trademark rights. We advise clients on the best course of action, which might range from doing nothing (if the risk is minimal), to reaching out to the infringing party to seek voluntary compliance, to pursuing formal legal action.

When necessary, our attorneys may draft and send cease and desist letters. These letters inform the infringing party of the client’s trademark rights and demand that the infringing activity stop. In many cases, cease and desist letters can resolve disputes without the need for further legal action.

If the infringement continues, or if the potential damage to the client’s brand is significant, more formal legal action may be necessary. For federally registered trademarks, this could involve filing a lawsuit in federal court, or initiating opposition or cancellation proceedings at the USPTO’s Trademark Trial and Appeal Board. For state-registered trademarks, enforcement actions typically take place in state courts. In all of these actions, the aim of a trademark attorney is to protect the client’s trademark rights and the value of their brand.