Trademark


Practice Areas

12538482_mRegistration

Osha Liang provides its clients with a wide range of trademark expertise including counseling, availability investigations, selection and branding strategies, US and international trademark application filing, and prosecution of applications to registration and enforcement.

The firm works successfully with its clients on hundreds of trademark/service mark applications and, while the number of registrations handled is significant, the firm provides experience and counseling along with quality application filing and prosecution. Members of the trademark group work with clients having only trademark concerns or to apply their experience in multiple intellectual property law areas to bring a uniquely coordinated approach for clients with other areas of IP business strength as well.

Osha Liang’s trademark group has a uniquely effective range of professional skills, allowing our clients to have the right level of expertise when handling any given situation.

The firm has experience and business knowledge to provide effective and important initial client counseling regarding selection, use, and prosecution of trademark applications for registration. The routine preparation and communications with the client representatives and the U.S. Patent and Trademark Office is handled efficiently, yet with great care to detect when attorney involvement and advice might be beneficial to the client.

Representation includes U.S. companies with significant operations overseas and many clients are overseas companies with a significant interest in the U.S. markets. Because our work has a large international scope, Osha Liang places strong emphasis on experience in other jurisdictions and on foreign language abilities. In addition to U.S. attorneys and paralegals, the firm has strong working relationships with trademark professionals in other countries throughout the world.

Opinions and Advice

Osha Liang’s trademark team has more than 20 years of trademark experience both in prosecution matters and litigation matters. Trademark legal concerns may arise in a wide number of situations, and the firm relies upon its specialized trademark education, ongoing training, and depth of experience to assist clients in understanding the potential ramifications of such a situation.

Trademark Licensing and other Agreements

Trademarks and service marks constitute a unique variety of intellectual property that has attributes of both property ownership and “regulation” and consumer protection against confusion as to the source and sponsorship of goods and services. Special provisions are required in agreements in order to effectively transfer trademark rights, and effective control provisions are important in licensing agreements to properly preserve the owner’s trademark rights. Osha Liang’s trademark team deals with contractual issues on a regular basis and works with its clients to obtain effective and enforceable trademark agreements.

Due Diligence and Investigations

In due diligence inquiries or litigation preparation, these issues are considered when determining the enforceability of licensed or transferred rights. Effective acquisition of valid trademark rights, appropriate licensing of trademark rights, maximizing the value of such rights, and fashioning business resolutions to disputes are all goals we pursue through properly prepared trademark related agreements.

Litigation

Attorneys of the Osha Liang trademark group have significant hands-on litigation experience in the federal court systems where trademark infringement disputes involving federal laws are addressed, in state courts where local trademark matters are often initiated, and at the U.S. Trademark Trial and Appeal Board (TTAB), where inter partes disputes regarding entitlement to registration are frequently determined.

We successfully assert and defend our clients’ rights and welcome a legitimate fight when required either defensively or offensively to insure our clients’ rights are protected. We cost effectively use TTAB proceedings to determine basic trademark issues to obtain desired results where possible without the full costs of federal court litigation. We effectively provide other alternatives to litigation, allowing our clients to creatively resolve disputes by considering with them, possibilities for sensible business solutions. We work to understand both the business realities of dispute situations and to use our understanding of legal principles, administrative proceedings, litigation strategies, and agreement tools, allowing our clients to obtain their business objectives and preserve their rights.

Trademark Searching

Osha Liang’s trademark team is versed in the capabilities of on-line investigations to respond to certain specific trademark questions. In cases of trademark selection we also understand the limitations of on-line searching tools. For more significant cases, we consult with the client to determine an appropriate search strategy, and it is often necessary to enlist the services of one of the best available trademark searching firms. In these situations, we effectively serve as the liaison between the searching firm and our clients to facilitate effective design of the search strategy and to critically analyze the results to provide guidance for mark selection, conflict avoidance and protection strategies.

Publications

Documenting Bona Fide Intent to Use a Mark
Texas Lawyer, January 2011
by John Montgomery, Richard Siluk, and Brian Wunder

Trade-mark Opposition and Litigation in BRIC and NAFTA Countries
by John Montgomery, Brian Wunder, Lucas Mikeska, and Leela Madan