415.398.3141 iplaw@evoke.law

 

Evoke Law assists and supports organizations of all sizes develop and expand their brands globally—by registering their trademarks, service marks, and trade dress and enforcing their intellectual property rights. Our firm encourages clients to carefully consider their overall marketing and business objectives when making decisions; we seek to understand each client’s level of risk tolerance and assist accordingly. Keep in mind registration of your marks and trade dress provides broader rights, which are critically important in disputes and in a court of law.

Click here for an overview of the trademark registration process.

Evoke Law’s range of trademark services:

 

  • Selection: Counseling on choosing marks that meet your objectives, whether merely available for adoption, meeting the standards for registration, or having the characteristics to make enforcement successful
  • Clearance: Counseling and written opinions on the availability, registrability, and enforceability of a proposed mark or family of marks
  • Registration: Drafting and filing applications with United States Patent and Trademark Office (USPTO) and State authorities
  • Prosecution: Shepherding applications through the examination process at the USPTO
  • Maintenance: Minding mandatory deadlines to keep a registration active
  • Enforcement: Challenging infringement to maintain exclusive ownership and value in a mark
  • Dispute Resolution: Defending against challenges of infringement, with the goal of avoiding litigation, unless absolutely necessary to achieve your goals
  • Licensing: Authorizing others to use and compensate you for using your mark per your quality control guidelines
  • Administrative Proceedings: Initiating or defending oppositions and cancellations before the Trademark Trial and Appeals Board (TTAB)
  • Use: Guiding you on proper use of your marks and the treatment of marks of others.
  • International: Advising about registering, protecting, and enforcing your brand internationally

 

PORTFOLIO MANAGEMENT

Managing an international trademark portfolio involves several phases and multiple resources. Strategically managing a portfolio requires proficiency and acumen to achieve a portfolio that meets the brand’s goals and fits into the company’s budget.

 

 

Clearance

Assessing the risk of adoption as well as registrability and enforceability of each mark is key to developing a successful branding program.

With highly trained researchers, an expansive global content set and well-designed technology tools, Shapiro Law relies on Corsearch, the premier clearance provider for trademark and brand professionals to easily, quickly, and flexibly monitor and protect brands in an increasingly complex business environment.

Domain Name Management

Managing an effective domain name portfolio can be challenging, especially because many countries require a local presence for a registration. Keeping a domain name actively registered can prevent disrupting your business.

We trust Corsearch, who offers services geared toward administering domains throughout the entire lifecycle. They assist in portfolio transfer and consolidation, global domain name renewal management, worldwide gTLD and ccTLD registrations, domain name Watch services, and even acquiring third-party domain names.

 

Calendaring

Prosecution and registration deadlines is essential to this process.

Tracking marks, matters and deadlines, many of which are unextendable, is key to managing a portfolio. The docketing software we rely on is WebTMS, a trademark management suite that builds on recordkeeping and docketing to support efficient trademark management. WebTMS software is used by leading law firms and brand owners around the world, including:  Apple, Avon, Coach, Gap, Google, Hallmark, Hershey, Kraft, Mars, Salesforce, and Yahoo.

Worldwide Relationships

The office maintains relationships with a global network of local intellectual property counsel, each knowledgeable in the arcane ways of their countries’ laws and procedures.  We are experienced and informed of international treaties such as the Madrid Protocol and the Paris Convention and take advantage of international filing practices, when appropriate.

 

Enforcement

A trademark owner has a duty to police and enforce its marks or risk losing the associated value and ability to enforce. Whether on the enforcement side or the receiving side of cease and desist letters, strategy and experience are critical to efficiently resolving disputes.

Maintaining the uniqueness of a mark is key to ensuring its continued value. Through Corsearch, we monitor new filings and publications of marks that may be confusingly similar to yours and be notified of possible issues, often before use of an infringing mark has commenced.

Up-to-Date

We receive daily reports on new cases, both at the Trademark Trial and Appeal Board and civil courts around the country. We attend continuing professional development  programs to maintain and enhance our knowledge and skills. Our network of local counsel regularly communicates changes in jurisdictions outside the U.S.  The firm is a member of INTA (International Trademark Association) and attends the Annual Meeting (“If you’re not there, you’re not serious about trademarks!”). In 2012, more than 9,500 intellectual property experts from 140 or more countries attended the meeting, which included seminars and sessions on a variety of trademark-related topics.