Trademark Law

Trademark Law

Trademark Capabilities

Henderson Franklin’s Intellectual Property Group provides clients with creative, problem-solving trademark counsel in a field that is becoming increasingly important and increasingly nuanced. Our Intellectual Property attorneys have knowledge in every aspect of trademark protection throughout all phases of the trademark lifecycle.

What is a Trademark?

A trademark is a type of intellectual property that functions to identify the source of goods or services and distinguishes those goods or services of one merchant from others. Trademarks can be words, symbols, phrases, sounds, smells or colors so long as they perform those functions. Trademarks can be designated by the following symbols:

• ™ (the "trademark symbol", which is the letters "TM" in superscript, for an unregistered trademark, a mark used to promote or brand goods)
• ℠ (which is the letters "SM" in superscript, for an unregistered service mark, a mark used to promote or brand services)
• ® (the letter "R" surrounded by a circle, for a registered trademark)

Trademarks and Branding

Henderson Franklin’s Intellectual Property attorneys understand branding and, even more so, the importance of strong, cohesive brand messaging. Branding is more than just trademarks and service marks, it can also include trade dress, product packaging, and product design. With this multi-faceted approach, we work with clients to provide valuable advice and assistance to help build and protect those brands. We have worked with clients ranging in size from home-based start-ups to Fortune 500 entities across a wide range of industries including:

• consumer products
• agriculture
• food and beverage, alcohol,
• restaurants and hospitality
• financial services
• insurance
• construction
• software development
• pharmaceuticals
• sporting goods and more.

The Importance of Trademark Selection

Often, before a business adopts a mark to identify a product, service, or even itself, dozens of potential marks are considered. Many potential trademark problems can be avoided or alleviated at this early stage. Our trademark attorneys work with clients at this brainstorming stage to help narrow the field of trademark candidates before adopting a mark. We offer economical and efficient preliminary trademark searches to help weed out marks that pose significant problems. We also work with clients to conduct full availability searches by analyzing a greater array of potential issues and then quantifying the risks a mark appears to have so our clients can make informed decisions before using that mark or launching their product or service.

Trademark Prosecution and Maintenance

Our Intellectual Property Group attorneys work with clients to develop domestic and international trademark filing strategies that make sense from the business and economic standpoint. We have extensive experience in the United States Patent & Trademark Office (“USPTO”) and help clients navigate through the routine and substantive issues that come up while a trademark application is pending and ensure deadlines are met. We have secured registrations for hundreds of clients, even overcoming substantive refusals to register.

Henderson Franklin’s Trademark Practice Group also works with clients to monitor and maintain their trademark registration portfolios. Whether a portfolio consists of only a handful of United States registered marks or dozens of marks, each registered in multiple international jurisdictions, Henderson Franklin provides cost effective, timely portfolio maintenance services that ensure our clients’ rights are protected.

Trademark Monitoring

It is incumbent on the owner of a trademark to police that trademark and take the steps that may be necessary to protect its rights against others. Failure to do so could result in an erosion, or even outright loss, of trademark rights. We work with clients to police their trademark rights by monitoring the market for potential infringers and counterfeiters and to help them understand the risks and issues associated with improper third-party uses and the response options. Finally, whether the response to a particular situation calls for a simple “shot across the bow” warning, immediate litigation in federal court, or an opposition or other proceeding in the USPTO, Henderson, Franklin is ready to step up to take the appropriate actions our clients need to protect their rights.

Trademark Licensing and Due Diligence

On either side of the transaction, trademark licensing presents both IP and other issues. As a firm with a broad business practice, Henderson Franklin has the experience and resources to advise our clients on both the IP issues, as well as the more general business, tax and regulatory matters a license touches upon. Further, given Henderson Franklin’s diverse business practice and experience in mergers, acquisitions, joint ventures, financing and other corporate transactions, we understand how intellectual property rights are impacted in transactions and are able to offer our clients IP due diligence to ensure that IP rights flow seamlessly through any kind of deal.

Please feel free to contact any of our Intellectual Property Trademark attorneys or the Practice Group Chair, Mark Nieds at mark.nieds@henlaw.com or by phone at 239-344-1153.

Click to download Henderson Franklin's Intellectual Property Brochure.