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General Strategic Advice

ArentFox Schiff works with clients to develop comprehensive and strategic trademark enforcement programs that combine stopping unauthorized third-party uses of similar brands with developing internal procedures for proper client trademark usage and quality controls.

Trademark rights are valid only for as long as they are adequately protected and enforced. While a federal trademark registration may provide evidence of the owner’s exclusive right to use a brand, that evidence may be rebutted with proof that other parties use similar brands with related goods, that the owner has failed to use the brand or control how licensees and others use it, or that the brand has become the generic name for the owner’s goods and services.

Clients often expend unnecessary resources maintaining registrations for marks they no longer use and overlook protecting vital marks in jurisdictions where they are used. We conduct global trademark audits to ensure that a client’s portfolio adequately protects its businesses and no unnecessary expenditures are made. We recently assisted a large trademark client with a “culling” process that allowed it to save thousands of dollars in unnecessary renewal costs.

ArentFox Schiff regularly helps clients conduct Internet sweeps to uncover potential infringements and to identify similar brands that are the subject of new trademark applications. We coordinate enforcement efforts to stop unauthorized uses, including in proceedings before the US Patent and Trademark Office, the US International Trade Commission, the Federal Trade Commission, and in federal and state courts throughout the country. Further, we conduct UDRP proceedings before Internet arbitrators internationally. As stated above, we rely on an extensive network of counsel who focus on the trademark laws of their home countries.

To help ensure that our clients’ brands remain strong and enforceable, we also assist with the development of trademark usage guidelines and license agreements.