Osha Liang’s trademark and industrial design specialists have a wide range of experience including availability investigations, global trademark application filings, prosecution and enforcement, and opposition and cancellation actions before the U.S. Trademark Trial and Appeal Board (TTAB). We assist clients in building design portfolios covering all major commercial markets in the United States, Europe, and Asia, either directly or via brand protection professionals in countries throughout the world. We build cost-effective brand protection covering both the supply chain and consumer products, ensuring that our clients can protect their brands worldwide. We also help clients develop their global domain name strategy and actively patrol for potential infringement by third parties on the Internet. Furthermore, we have represented clients in private negotiations, litigation and domain name proceedings, including cost-effective resolution before the Internet Corporation for Assigned Names and Numbers (ICANN) using Uniform Dispute Resolution Procedures (UDRP) and Uniform Rapid Suspension (URS) tools.
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.
We works successfully with its clients on hundreds of trademark/service mark applications and, while the number of registrations handled is significant, we provides experience and counseling along with quality application filing and prosecution. Our Trademark Group works with clients having only trademark concerns or to apply their experience in multiple IP law areas to bring a uniquely coordinated approach for clients with other areas of IP business strength as well.
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
Our Trademark Group 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 we rely upon our Group’s trademark knowledge, 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. Our 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.
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 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.
Our Trademark Group 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.