JSTMS offers standard packages designed for businesses who want both personal assistance from a trademark attorney and greater cost certainty when registering a trademark with the USPTO. The packages include thorough due diligence pre-filing so that informed strategic decisions can be made at an early stage of the process. Unless the application runs into a substantive legal refusal (JSTMS will help you understand the probability of this occurring as part of the due diligence process), the packages include all the legal assistance necessary to take clients from start to registration.
For businesses who want to register a trademark with special considerations (e.g., a significant probability of a substantive legal refusal, goods and services falling under many classes, a foreign registration basis, etc.), JSTMS can customize a flat-fee package that provides greater cost certainty while being appropriate for the circumstances.about JSTMS's flat-fee USPTO trademark registration packages.
Conducting due diligence before submitting a trademark application to the USPTO is essential to avoid costly setbacks. The process, which involves a comprehensive search and analysis by Jared, helps identify potential obstacles in the registration process, including issues with the trademark itself and the risk of conflicts with existing trademarks. Detecting these challenges early allows clients to make informed decisions, minimizing the risk of investing time and resources into a mark that may be unregistrable or unenforceable.
Comprehensive trademark due diligence is included in the standard flat-fee trademark registration packages.
JSTMS assists clients with responses to all types of office actions, including substantive refusals (e.g., likelihood of confusion, descriptiveness, and failure to function as a trademark refusals) and procedural issues (e.g., specimen deficiencies and clarification requests). Jared will walk you through your options, develop a strategic response tailored to your case, and work to resolve the issues effectively to keep your trademark application on track. Learn more about office actions.
Responses to non-substantive refusals are included in the standard flat-fee trademark registration packages.
A Statement of Use filing is required for intent-to-use trademark applications to show that the mark is actively being used in commerce. It must include a valid specimen demonstrating how the trademark is used with the goods or services listed in the application. Failure to file a timely and complete statement of use can result in abandonment of the application. Learn more about statement of use filings.
Assistance with preparing and filing the Statement of Use, as well as up to five deadline extension requests, is included in the flat-fee intent-to-use trademark registration package. JSTMS can also assist clients who have not used the package with preparing and filing these documents in compliance with USPTO requirements.
A trademark consent agreement is a legally binding document in which one party agrees to allow another party to register and use a similar trademark, typically to overcome a USPTO likelihood of confusion refusal. These agreements are often used when both parties believe that their marks can coexist without causing consumer confusion and want to avoid prolonged disputes. JSTMS assists in negotiating, drafting, and reviewing consent agreements, helping clients define key terms such as scope of use, geographic restrictions, and marketing limitations. A well-structured consent agreement can be instrumental in securing a USPTO trademark registration while protecting both parties' interests.
JSTMS can monitor newly filed and published trademark applications in the USPTO and other major trademark offices worldwide and promptly alert clients to trademarks that are the same or confusingly similar to theirs. By identifying these risks early, clients have the opportunity to file oppositions or take other action before problematic trademarks become registered.
In addition to protecting their legal rights, clients can also this service to obtain potentially valuable business information by monitoring the activity of other firms.
Maintaining a registered trademark requires timely filings and ensuring that the registration accurately reflects actual usage in commerce. The USPTO mandates several key maintenance filings that are due between the 5th and 6th year after registration, between the 9th and 10th year after registration, and every 10 years thereafter. Failing to submit these filings on time or providing incorrect information can result in cancellation of the trademark.
Maintaining a trademark involves more than just periodic paperwork. Ensuring that the registration accurately reflects actual use (correct goods/services, owner name, proper specimens, etc.) is crucial to avoiding challenges or enforcement issues. JSTMS provides strategic advice to help clients avoid issues resulting from changes in the way their trademark is used post-registration.
JSTMS offers comprehensive trademark portfolio development and management services, ensuring that clients' trademarks are properly registered, maintained, monitored, and enforced. From co-ordinating international trademark filings to conducting audits, identifying registerable assets, and strengthening brand protection strategies, JSTMS helps enhance the protection and value of trademark assets.
If a pending trademark application poses a risk to a client's brand, JSTMS can assist in filing an opposition to prevent its registration. An opposition is filed with the TTAB when a party believes that a newly applied-for mark is likely to cause confusion, is descriptive, deceptive, or otherwise ineligible for registration. Oppositions or a deadline extension request must be filed within 30 days of the application’s publication, making prompt action essential.
If a registered trademark conflicts with a client's rights, a TTAB cancellation proceeding may be the best way to remove it from the USPTO register. A cancellation can be filed for various reasons, including abandonment, fraud, lack of distinctiveness, or likelihood of confusion with a prior mark. In some cases, a mark may have been improperly registered or is no longer in active use, making it vulnerable to cancellation. JSTMS assists clients in identifying strong grounds for cancellation and then handling the process.
JSTMS helps clients combat online infringement by removing unauthorized trademark use across e-commerce platforms, social media, websites, and digital ads. This includes filing takedown requests on Amazon, eBay, Etsy, and Shopify, addressing Google Ads trademark misuse, and enforcing rights against imposter social media accounts and domain squatters.
JSTMS helps clients work with US Customs and Border Protection (CBP) to block unauthorized imports that misuse their trademarks. This includes recording trademarks with CBP, helping clients provide enforcement guidance to customs officers, and advising on seizures of counterfeit, copycat, or unauthorized gray market goods.
Strategic negotiations can often lead to mutually beneficial resolutions. JSTMS helps clients explore a range of settlement options, including coexistence agreements that define the terms under which both parties can use their marks, licensing agreements that allow controlled use while preserving brand integrity, and other tailored resolutions that may involve rebranding timelines, geographic limitations, or phased transitions. A well-negotiated settlement can help avoid costly litigation, reduce uncertainty, and protect long-term business interests.
Ex parte expungement and reexamination proceedings provide a more efficient way to challenge trademark registrations for nonuse. Expungement applies to registrations where the trademark has never been used in US commerce, while reexamination targets registrations where the mark was not in use at a specific required date. These proceedings, introduced under the Trademark Modernization Act of 2020, allow third parties to petition the USPTO Director to remove improperly maintained trademarks, helping clear the register of unused marks.
Transferring ownership of a registered trademark requires a legally binding assignment agreement and proper recordation with the USPTO to establish the new owner’s rights. JSTMS assists clients with drafting, negotiating, reviewing, and filing trademark assignment agreements in compliance with USPTO requirements. Whether part of a business acquisition, rebranding, or intellectual property sale, JSTMS provides the legal support needed for a smooth and enforceable transition.
A trademark license grants another party the right to use a trademark under defined terms while the owner retains control. It is an essential element of franchising, co-branding, and other forms of expanding a brand’s reach using third parties. JSTMS drafts, negotiates, and reviews trademark licensing agreements to structure clear enforceable terms that protect brand integrity. A strong agreement outlines scope of use, quality control, royalties, duration, and termination rights to prevent brand dilution and unauthorized use.
A trademark coexistence agreement allows two parties to use similar trademarks under mutually agreed conditions. JSTMS assists in drafting and negotiating these agreements to establish clear boundaries for use, such as geographic limitations, product distinctions, and marketing restrictions. By defining each party’s rights, a coexistence agreement helps prevent conflicts and provides a structured framework for maintaining brand identity. These agreements are particularly useful when two businesses operate in related industries but can co-exist without causing consumer confusion.
Trademarks are valuable business assets that can be used as collateral for loans, financing, or investment deals. JSTMS assists clients in structuring trademark security agreements, allowing businesses to leverage their intellectual property for financial growth. A properly executed collateralization agreement outlines the rights of the lender, conditions for repayment, and enforcement provisions in case of default. By using trademarks as secured assets, businesses can access capital while maintaining ownership and control over their brand identity.
Strategic brand partnerships allow businesses to collaborate while leveraging each other’s trademarks for mutual benefit. JSTMS assists in drafting and negotiating brand partnership agreements, setting clear terms for trademark use, co-branding rights, revenue sharing, and quality control to prevent conflicts and brand dilution. Well-structured agreements help maintain brand integrity while maximizing the value of collaboration. From joint marketing campaigns to product collaborations, brand partnerships can expand market reach and create new growth opportunities.
Trademark due diligence is a critical step in mergers, acquisitions, and trademark transfers, helping buyers and investors assess the strength, validity, and potential risks associated with a brand’s intellectual property. JSTMS conducts comprehensive trademark evaluations, verifying ownership, registration status, renewal deadlines, prior disputes, and infringement risks. A thorough review also includes examining licensing agreements, coexistence agreements, and any encumbrances such as security interests or litigation history. Identifying potential issues before a transaction helps prevent legal complications, protect investments, and facilitates a smooth transfer of trademark rights.
Businesses expanding into the US can extend their foreign trademark rights through Madrid Protocol filings or foreign registration-based applications with the USPTO. JSTMS provides full legal support for international trademark owners seeking USPTO registration, from pre-filing due diligence through to post-registration matters.
Expanding trademark protection beyond the US is essential for businesses entering global markets. JSTMS advises clients on the best strategies for securing international trademark rights, whether through the Madrid Protocol or direct national filings in key foreign jurisdictions. The process involves assessing eligibility, cost considerations, and potential conflicts to determine the most effective approach. Where appropriate, JSTMS coordinates with local trademark attorneys to handle jurisdiction-specific requirements.
