Morrison Sund PLLC will provide you with the legal advice necessary to properly and effectively protect your goods and/or services.
Many business owners do not fully appreciate the real value of their intellectual property portfolio, or the expansive nature of intellectual property within every area of their business. Morrison Sund PLLC helps uncover and strengthen intellectual property portfolios through detailed intellectual property audits.
– The Summary Audit:
Due to the unpredictable potential of your intellectual property portfolio, a summary audit must be the first step in the process of understanding its true value. The objective of a summary audit is to complete a thorough review of the forms of patent, trademark and/or copyright encompassed in your business.
Morrison Sund PLLC then creates a proposed synopsis of your intellectual property. This includes an overview of various necessities in protecting and building your intellectual property portfolio.
It is important to understand the strength of your patent, trademark and/or copyright rights for the following reasons:
- To establish whether your intellectual property assets sufficiently protect your current and future business operations.
- To make sure that any listed trademarks, copyrights and/or patents actually belong to you.
- To identify any intellectual property rights held by others that may constrain the present or future operation of your business.
– The Comprehensive Audit:
The Comprehensive Audit utilizes the summary audit of your intellectual property and builds the value of your portfolio. The basic elements of an intellectual property audit include many components:
- An analysis of each form of intellectual property in order to ascertain your ability to exclude competition based on your intellectual property claims.
- A review of the status of all recorded rights in order to confirm that you have good title to your intellectual property assets and to confirm whether any of such assets are encumbered (i.e., pledges to third parties as security for a loan).
- A review of intellectual property held by other parties and utilized by you, so you can establish whether you have sufficiently protected yourself from liability and/or lawsuits involving the right to use another party’s property (i.e., software agreements and licensing agreements).
- A review of general third party contracts integrating limited patents, trademarks and/or copyrights in order to ascertain restrictions on your ability to use or assign such rights and other requirements (such as payment of license and fees and attainment of performance milestones) that must be fulfilled by your company in order to maintain access to these rights.
Morrison Sund PLLC understands a trademark can be one of the most essential assets a business owns. A trademark or service mark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs that identifies and distinguishes your company’s goods and/or services from those of others.
The importance of obtaining trademark and service mark protection is to care for and safeguard the time, energy and monetary investment your company has taken to develop your business and create brand recognition. Federal registration with the United States Patent and Trademark Office (“USPTO”) provides marketplace and competitive protection by preserving fair dealing, and allows a legal remedy for another’s misappropriation.
This recognition is a marketable asset for your company and the proper protection will ensure your efforts are not overtaken by a competitor who “rides the coattails” of your hard work.
Whether you are a new company, or a company with an established client base and fully developed brand recognition, we can protect your brand’s assets by obtaining a federal registration trademark.
Establishing a Trademark or Service Mark & Conducting a Search:
A trademark or service mark can take many different forms, so long as the mark is distinctive and functions to distinguish the source of your goods and services. A mark may take substantially any form, so be creative and consider the variables used for determining the registrability of a mark. The strength of a mark determines, to some degree, the breadth of protection given to the mark. “Strong” marks are given broad protection. A relatively narrow range of protection is given to “weak” marks as to both format variations and variety of products and services. The USPTO evaluates each proposed mark on a continuum, and categorizes a mark from strongest to weakest, including “fanciful,” “arbitrary,” “suggestive” or “descriptive.” It is imperative to establish a trademark or service mark that will identify who you are and distinguish you from the rest.
Once you have established a trademark or service mark, we analyze whether it is available for you to use and is distinctive enough for protection. A comprehensive review is the only means of determining the complete availability of a desired trademark. We will conduct a comprehensive search of state, national, Internet and foreign trademarks and service marks prior to registration. This search is commenced by a separate entity and subsequently reviewed by us to determine whether a confusingly similar mark is already in use in commerce. A registration can be completed without a comprehensive review, but the result can lead to delays or rejections by the USPTO. Another user could also file a Notice of Opposition against you during the publication period for your trademark or service mark if they deem it obtrusive.
As you may know, marks can be federally registered if they are not confusingly similar to registered marks, or not descriptive of your goods or services. The question of similarity is, by nature, a subjective judgment upon which reasonable people can differ. Our comprehensive review compares the marks themselves, considers the respective channels of trade, the sophistication of your customers, the number of other similar marks in use and other relevant factors, in determining the registrability of your proposed trademark or service mark.
Filing Your Trademark or Service Mark:
The process of registering a trademark or service mark with the USPTO involves many steps including a review conducted by a trademark examiner, correspondence addressing the mark’s strength and basis for rejections, required response in defense of your mark’s registrability and a publication period where any party believing it will be damaged by the registration of your mark has the opportunity to oppose your registration. We will be responsible for any responses necessary during the application process and consult you on your preferred strategy for each step involved in the registration process.
There are many advantages to federal registration of your trademark or service mark including the following:
- Registration gives nationwide constructive notice to all others of your claim to the trademark.
- Registration creates nationwide constructive use upon filing. Your claim of ownership will be located in a search, thereby discouraging third-party use.
- Registration allows you to use the registration symbol (®) in conjunction with your trademark.
- A registered mark can be recorded with the Bureau of Customs to exclude importation of goods bearing marks that infringe your trademark.
- Registration is prima facie evidence of your exclusive right to use, the validity of your trademark and your ownership in the trademark.
- The ability for your trademark to become “incontestable” after five years of continuous use, and upon the filing of an affidavit.
- The statutory right to sue for trademark infringement in Federal Court, including the chance to recover profits usurped by an infringer, your damages and costs. Treble damages and attorney’s fees are also possible for willful infringement. Registration makes counterfeiting your trademark a criminal offense.
- Registration can be used as a basis for obtaining registration in foreign countries, along with a priority date for filing.
Morrison Sund PLLC appreciates the valuable commodity contained in your company’s image. We will help you to establish your federal rights in these assets, and discuss other considerations you and your company should be aware of.
The success of Morrison Sund PLLC builds upon the experience and professionalism of the many talented attorneys we employ. The attorney to contact for assistance with your business and commercial law questions is:
Michael J. Murphy
Phone: (952) 277-0123
Mike has nearly thirty years of experience in the practice of business and commercial law, both in the United States and overseas. In addition to a thorough knowledge of business and commercial law, he recognizes and understands the practical business aspects of organizing and operating a business in a very competitive environment. Mike practices with an affirmative, “hands-on” approach to achieve swift, cost effective, and satisfactory results for his business and commercial clients.