I have written a number of articles on intellectual property law in the past, but I wanted to take this opportunity to write a blog post specifically about the trademark portion of my intellectual property law and business law practice. For those seeking the services of a trademark lawyer I humbly submit that you consider my law firm for your trademark and intellectual property needs. I am based in Venice, Florida and serve all of Sarasota County and the surrounding area.
Next, lets talk a little about the specific services I offer in the context of trademark law.
Freedom to Operate Opinions
One of the most heartbreaking stories I hear about trademark law comes from the business owner that started their company around a specific business name, and invested a bunch of time and money into that business name – only to realize months down the line that their business name has already been claimed by an existing trademark. Typically, the business learns about this the hard way: in the form of a cease and desist letter, or if they are really unlucky, by way of a lawsuit.
Nothing pains me more than to hear these kinds of stories because they are almost always avoidable. If you are considering investing in a new business venture you really should have what is commonly known as a “Freedom to Operate Search” or a “Freedom to Operate Opinion” done. A couple hours of attorney time could save you and your business thousands of dollars and the world of pain and aggravation that accompanies trademark infringement. The old adage that “an ounce of prevention is worth a pound of cure” couldn’t be more appropriate here.
Trademark Applications
Of course as a trademark lawyer I file lots of trademark applications. This is the meat and potatoes of my trademark practice and it is centered around preparing and filing federal trademark applications with the United States Patent and Trademark Office (USPTO). Typically how this works is I meet with you, spend some time to learn about you and your business, determine what your trademark needs and goals are, and then put together a plan of action to reach those objectives.
Oftentimes we start out with registering a simple wordmark. This typically offers the broadest form of protection and provides the best bang for your buck. From there we can explore trademarking logos and hybrid marks as we fill out your portfolio to protect the valuable intellectual property you have built your business around.
Trademark Enforcement
The truth is, trademarks are only worth something if you enforce them. As the owner of a trademark, you are solely responsible for the enforcement of your mark. I help business and individuals enforce their trademarks through both the legal system and outside of court by advising them of their rights and then helping them take appropriate action.
A typical enforcement action begins with a demand letter or a cease and desist letter. Sometimes that is enough to solve the problem. Other times more aggressive action needs to be taken. No two cases are ever alike, and I employ a variety of techniques tailored to my client’s specific needs and circumstances to meet their goals.
Trademark Infringement Defense
The other side of a trademark enforcement equation is trademark infringement defense. If you are at the receiving-end of a trademark infringement demand letter or lawsuit, you need someone to help you navigate these delicate proceedings. I advise clients of their rights and help guide them through these difficult situations. Once again, rarely are two cases ever alike. I spend the time to learn the facts and provide advice on a case by case basis.
Trademark Licensing
I help businesses and individuals license trademarks. Whether you are the trademark owner (the “licensor”) or the party seeking to license the mark (the “licensee”) I will assist you in all aspects of the licensing process.
Licensing is complex because there are a host of potential downstream activities that a licensing agreement must contemplate for. With licensing deals you have royalties to consider, milestones to achieve, and a host of other issues that can crop up as you contemplate factors such as exclusive vs. nonexclusive licenses, sub-licensing, liability, tax implications, and the scope of the property actually being licensed.
I help parties with the negotiation of a license, drafting the licensing agreement, as well as help interpreting and enforcing the provisions of a licensing agreement.
Sarasota Trademark Attorney – Final Thoughts
I hope this article has helped you understand some of the services I offer as a trademark lawyer. If you have any questions, or if I can be of any assistance to your or your business please contact my office at (941) 882-4367.
