Trademark Prosecution

Sterne Kessler’s trademark prosecution team conducts trademark selection, prosecution and enforcement on a global scale producing high-value results.

When it comes to counseling on trademark selection, protection, enhancement and enforcement, "client focus" is not just a buzzword. It is a defining part of Sterne Kessler’s trademark practice. We approach each project by determining the most efficient and cost-effective strategy to produce high-quality, high-value client results.

Trademarks are the most enduring of all forms of intellectual property, capable of distinguishing an organization’s identity and reputation from competitors' for the life of the business, products and services.

Our trademark team is extremely client-oriented. That team of legal professionals includes directors recognized by the trademark industry as leaders in the field, combined with a mix of associates, trademark specialists and paralegals with competitive billing rates. We approach each project with an eye toward adopting the most efficient and cost-effective strategy that will produce high-quality, high-value results for our client.

We have a diverse client base, providing counsel to companies operating in virtually every market segment. We work with both in-house counsel and business teams to assess the needs of their organization and recommend the best course of action to effectively and efficiently meet their goals. We also work with clients to ensure their trademark strategy evolves with the business.

There are clear reasons why clients choose Sterne Kessler to assist them in obtaining, protecting and enforcing their trademarks — and protecting their brands — on a global basis:

  • We work closely with clients to identify and create strong brand identity strategies
  • We take a results-oriented approach that considers trademark protection, leverage and enforcement in alignment with business goals
  • We regularly audit materials and media to ensure maximum exposure and proper use of trademarks and other IP
  • We negotiate trademark license and coexistence agreements, and sponsorship and endorsement agreements for strategic advantage
  • We are registered as a Trademark Agent for the Trademark Clearinghouse, and assist clients with planning and implementing strategies relating to the launch of the new generic top-level domain names (gTLDs)
  • We successfully represent both complainants and respondents in Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceedings

Trademark services include:

  • Federal, state, and foreign trademark registration
  • Managing global trademark portfolios
  • Trademark licensing
  • Trademark enforcement and defense
  • Trademark clearinghouse registration and domain name dispute resolution
  • Alternative dispute resolution (mediation and arbitration)
  • Oppositions and cancellations
  • Trade dress protection of non-traditional marks (shape, sound, color, scent)
  • Review of product literature/labeling and websites for proper trademark usage
  • Negotiating IP transactions
  • Trademark valuation
  • Branding guidelines and programs

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