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Trademarks and Brand Management

Intro


The trademark attorneys and paralegals in Warner Norcross + Judd's Intellectual Property group are experienced in all aspects of establishing, managing and aggressively protecting trademarks. We combine practical, real-world advice with efficient, effective legal services for a broad range of intellectual property issues.

Brands are the lifeblood of any business. We recognize that trademarks and service marks are invaluable assets that help define a company’s unique corporate identity. These assets are vital to maintaining a competitive advantage in the marketplace, and managing them effectively is critical to regularly delivering return on investment.

Developing brands is not easy–but protecting them should be.
 
Overview
 
  • We manage thousands of trademark registrations and applications, spanning dozens of industry sectors, in more than 100 countries around the world.
  • We work with domestic and foreign companies and legal counsel to ensure trademarks are handled properly both in the U.S. and abroad. In fact, Warner Norcross has fluent capabilities in nearly a dozen languages.
  • Our expertise includes non-traditional marks such as packaging, product configuration and sound.
  • We prepare, file and prosecute trademark and service mark applications to register marks with the U.S. Patent and Trademark Office, state trademark offices, the World Intellectual Property Organization and other filing offices.
  • We develop and utilize technology to continually improve and streamline our workflow process and deliver effective and efficient service, at competitive rates.

Professionals

Order list by:
Photo of Charles Burpee
Charles Burpee
+1.616.752.2141
Photo of Catherine Collins
Catherine Collins
+1.616.752.2473
Photo of Christy Cyrlin
Christy Cyrlin
+1.248.784.5145
Photo of Julie Dawes
Julie Dawes
+1.616.752.2471
Photo of Raquel Johnson
Raquel Johnson
+1.616.752.2262
Photo of R. Scott Keller
R. Scott Keller
+1.616.752.2479
Photo of Kimberly Niebling
Kimberly Niebling
+1.616.752.2275
Photo of Darlene Santiago
Darlene Santiago
+1.616.752.2285
Photo of James Scott
James Scott
+1.616.752.2469
Photo of Amber Underhill
Amber Underhill
+1.616.752.2797
Photo of Brian Wassom
Brian Wassom
+1.248.784.5039

Services

Selection and Clearance

Our services start at a mark’s inception. We consider business strategy, budget, channels of trade and product life cycle to balance business risks and costs with the benefits of registration and scope of protection available for particular marks.
 
  • We routinely conduct preliminary and full trademark searches on proposed marks and provide opinions on mark availability for both use and registration.
  • We provide same-day turnaround on screening searches. We can also obtain in-depth full searches in a matter of days under normal circumstances or on an expedited basis (even the same day) if needed.
  • We offer educational seminars so the individuals who are responsible for the trademark process at our clients are well informed about laws–and strategies–necessary for effective selection and protection of their marks.


Prosecution

In most cases we prepare a federal trademark application electronically on the same day we receive the request. Our goal is to give the practical counsel needed to reduce infringement exposure and ensure optimal protection for the marks. Other prosecution services we provide include:
 
  • Advice on risks and costs of prosecution, with a focus on balancing them against returns.
  • Advice on budgeting and timing strategies for efficient use of resources.
  • Consider international treaties and conventions to obtain the broadest protection at the lowest cost.
  • Work closely with our network of international counsel to prosecute and register marks worldwide.
  • Register and maintain general and country-specific domain names associated with marks.


Maintenance

Warner maintains an extensive database with information on every mark in each client's portfolio, including countries of registration, goods or services covered, registration status, renewal and other due dates and prosecution history. We also regularly review trademark portfolios.

We provide advice on proper trademark usage in different mediums and regularly review marketing and promotional materials for appropriate usage.

Additional maintenance services we provide include:
 
  • Receive, process and review filing receipts, notices of publication and other correspondence from the U.S. Patent and Trademark Office, from associate foreign counsel firms and other relevant authorities.
  • File amendments to various legal documents to maintain domestic and international registrations.
  • Administer general and country-specific top level domain names.
  • Conduct due diligence on trademark assets in connection with complex mergers, acquisitions and other transactions.
  • Draft, review and negotiate third-party license agreements to complement and expand upon core business operations.
  • Draft and negotiate consent, co-existence, concurrent use, manufacturing, private label and distribution agreements.
  • Assist in acquiring trademarks, domain names and other intellectual property assets from third parties.


Enforcement

Warner assists with the development and implementation of effective enforcement strategies, including:
 
  • The use of watch services on a national or global scale to identify potentially conflicting trademark applications.
  • Cost-effective resolutions that protect our clients’ trademark interests and prevent consumer confusion in the marketplace.
  • Research of infringing third parties and investigation into the scope and strength of their rights.
  • Send and respond to cease-and-desist letters.
  • Negotiate consent and co-existence arrangements.
  • File, prosecute and defend against inter partes actions before the Trademark Trial and Appeal Board, including oppositions, cancellation actions and concurrent use proceedings.
  • Work closely with a network of firms internationally to enforce and defend client marks.
  • Prosecute actions under the Internet Corporation for Assigned Names and Numbers (ICANN) and Uniform Domain Name Dispute Resolution Policy (UDRP).
  • Record trademark registrations with U.S. Customs Service.


Other Services

Warner offers several services that help protect our clients’ brands, including:
 
  • Monitor and study new developments in domestic and international trademark law and report matters of interest.
  • Conduct intellectual property audits.
  • Provide free in-house seminars on topics of interest.
  • Develop trademark use manuals.
  • Prepare quarterly trademark status reports.

Capsis® Trademark Management Platform
 
The soaring number of trademark applications in the U.S—which has increased six-fold over the past 20 years—is creating unprecedented challenges for companies trying to manage trademark portfolios and keep tabs on their competitors. Capsis can help.
 
Capsis supports strategic decision making by compiling and presenting meaningful data regarding a brand owner’s trademarks and those of its competitors, monitoring Trademark Office activity for threats to the owner’s marks and brand strategy, streamlining workflow process for trademark clearance, prosecution, and enforcement tasks, and providing immediate access to legal professionals. Features include the following:
 
Portfolio Management
 
  • Compiles and assimilates data from various sources to provide current information about each mark in the company’s portfolio, including mark, status, goods/services, first use dates, prosecution history and relevant documents.
  • Avoids costly corrective actions by alerting the company promptly of upcoming deadlines or decision points.
  • Supports brand expansion and marketing strategy by allowing the company to view and report its portfolio data using different filters to identify gaps in brand protection.
  • Streamlines trademark administration and maintenance by providing a library of information with answers to questions frequently asked by marketing professionals about trademark use, rights and maintenance (e.g., proper marking, first use dates, specimen requirements).

Protection and Enforcement
 
  • Identifies potential conflicts by alerting the company when one of its marks is cited as an obstacle to registration of a third party’s mark.
  • Ensures quick action in response to potential threats by alerting the company of status changes for selected marks.
  • Monitors competitive trademark filing activities of relevant third parties by tracking the applications they file and providing access to associated documents.
  • Mitigates harm to the company’s brand by alerting it to applications and published marks that present infringement threats.

Workflow Management
 
  • Reduces cost and frees time and resources for supporting the company’s strategic plans by streamlining the workflow process for routine administrative tasks.
  • Drives better and faster decision making by providing one-click telephone or email access to legal professionals and services.

Any brand owner will benefit from using the Capsis platform. The potential benefits and leverage increase with the portfolio size and market competition. There is no cost for using Capsis in itself–it is available to Warner clients and can be incorporated within a flat rate fee structure for trademark services.

Professionals


R. Scott Keller
616.752.2479
Grand Rapids

James L. Scott
616.752.2469
Grand Rapids

Catherine S. Collins
616.752.2473
Grand Rapids

Amber M. Underhill
616.752.2797
Grand Rapids           

Case Studies

Testimonials

Events

Nov 2017
07
November 07, 2017

Emerging Intellectual Property Legal Trends for 2017 and Beyond

Detroit Marriott Troy

OESA and Warner Norcross & Judd LLP invite supplier executives to a breakfast briefing addressing emerging intellectual property (IP) legal trends. The event, “Emerging Intellectual Prope...

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