Boulware & Valoir has years of experience in developing and implementing branding strategies to fit the client’s need. Whether the goal is U.S. protection or global strategy, we have assisted clients in protecting their identity. This service includes creative non-traditional aspects of brand protection for product design and marketing programs.
We offer a wide range of branding related services including:
- Trademark prosecution (domestic & foreign)
- Trademark enforcement in federal court
- Trademark opposition and cancellation proceedings in the Trademark Trial and Appeal Board
- Domain name related matters
- Trademark clearance searches & opinions
- Branding strategy for new product launches
- Internet use & enforcement
- Trademark licensing and transfer agreements
- Trademark due diligence
- Trademark assignment and ownership registration
- Trademark compliance programs
TRADEMARK REGISTRATION & COUNSELING
Boulware & Valoir have significant experience advising clients on preparing, filing, and prosecuting applications to register trademarks, service marks, and trade dress in the U.S. In most cases, we prepare and file applications on a flat fee basis. We regularly provide trademark and searches and clearances before clients adopt a new identity or brand. We also have an extensive global network for protection in all countries.
TRADEMARK LITIGATION & ENFORCEMENT
Boulware & Valoir attorneys regularly advise clients on protecting their trademarks and service marks from infringement and dilution and have significant experience with trademark litigation in civil courts as well as before the PTO in opposition and cancellation proceedings. We are experienced in seeking and resisting preliminary injunctions and temporary restraining orders in federal courts.
Boulware & Valoir have first-hand experience handling trademark work in a variety of industries, including:
- Oil & Gas
- Oilfield Services
- Wind Energy
- Insurance and Financial Services
- Medical Devices
The creative look of a product or business presentation such as restaurant decor can be part of a protectable branding strategy. These trade dress rights can be used to prevent competitors from confusing consumers with “knock-off” products or look of a business. Protectable trade dress can take many forms, the most common types are product packaging or product design, each of which can be particularly valuable when distinguishing from competitive products. It may be helpful to a branding program to protect and enforce any trade dress rights in addition to traditional marks.
Trade dress includes the image and overall appearance of products or a combination or a creative combination design features that indicates the source or origin of the goods or services. A trade dress is protectable if it is: (a) non-functional; and (b) inherently distinctive or has recognition in the minds of consumers.
If you have invested in creating a look for your products or services that has created recognition in the marketplace, you may want to consider protection available through federal registration. Boulware & Valoir has experience in trade dress protection as part of an overall branding program.
FEATURES SUBJECT TO TRADE DRESS PROTECTION
The following can be considered for trade dress protection:
- Shape of product
- Unique packaging
- Color or color combinations of product or packaging
- Business decor
REGISTERING TRADE DRESS
Certain trade dress can be registered with the U.S. Patent and Trademark Office (www.uspto.gov) pursuant to federal law.
DOMAIN NAME RECOVERY
Domain names are intended to be used as business identifiers for an online business. Third parties, however, often try to profit by exploiting the system and registering numerous valuable domain names, only to offer them for sale at higher prices or to use them to attract business to their own sites. This type of practice is known as cybersquatting. Other times, the practice known as typosquatting is employed. In this situation, a third party will register various spellings of a domain name that could be easily confused with the actual mark.
Boulware & Valoir can help you file a complaint under the Uniform Dispute Resolution Policy (UDRP) to gain ownership of the cybersquatted domain name. Under UDRP procedures, the trademark owner must file a complaint and prove: (1) that the domain name is identical or confusingly similar to a trademark in which it has rights; (2) the current domain name holder has no rights or legitimate interests in the domain name; and (3) the domain name has been registered and is being used in bad faith. We are experienced in preparing complaints under the UDRP and can assist you with the domain name recovery process.
ANTICYBERSQUATING CONSUMER PROTECTION ACT
In addition to the UDRP under ICANN, a domain dispute can be resolved by suit in federal court under the Anticybersquatting Consumer Protection Act (ACPA). The Anticybersquatting Consumer Protection Act generally prohibits using a domain name containing another’s trademark with an intent to profit. Under this Act, anyone who in bad faith uses, sells, or tries to sell a domain name that infringes another’s trademark, may be subject to penalties of up to $100,000 per domain name abuse incident. Other possible avenues of protection could include protection under trademark law or unfair competition laws. Boulware & Valoir attorneys have experience assessing the protection afforded to a trademark owner and can help prevent cybersquatting.