Trademark Prosecution

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Rothwell Figg's Trademark Prosecution practice offers expert management and prosecution of large, small, and single-trademark portfolios for a wide variety of clients, in industries ranging from the life sciences to consumer products to technology. In all such matters, we leverage our deep knowledge of both U.S. and international trademark law to provide expert, efficient guidance on the determination, adoption, and protection of trademarks.

The hallmark of our work in this area is our efficiency, and the cost-effectiveness it delivers. Within the general field of IP law, trademark law is exceptionally procedurally-driven. Particularly when dealing with a global trademark strategy, the rules and administrative requirements can be intricate, demanding, and very unforgiving. More than in most areas of the law, experience and coordinated attention to detail are critical. Mistakes can be very costly.

Rothwell Figg approaches our trademark work from both a tactical and a strategic perspective. Tactically, our team is supported by a group of specialized nonlawyers with decades of experience managing trademark programs, including a Trademark Operations Manager with thirty-plus years of experience with our firm and our clients. Because of the highly procedural nature of trademark law, experience and hands-on knowledge like this is an immense advantage.

Our attorneys know the ins and outs of trademark procedure, track deadlines, ensure cost containment, and deliver a level of client service unmatched anywhere. As a specific example, we are exceptionally good at managing the myriad of deadlines involved in trademark work, and always give clients plenty of time to evaluate, and decide upon, a course of action. From beginning to end, we help clients, and their trademarks, navigate the complex and demanding matrix of rules and procedures consistently and effectively.

By utilizing this approach, one that focuses on day-to-day operations at a high level of efficiency, we can control costs, and often price our work at standard professional rates. This not only saves our clients money, but also provides predictable, no-surprises pricing, which clients appreciate. It also enables the development of long-term relationships with clients, who benefit from the continuity, insights, and working relationship of a team that knows them, their business, and both their risks and opportunities.

Strategically, we begin every project with a business-oriented mindset. We understand that a trademark, for many clients, is an extremely valuable asset. It is the public face of the business and its products. Accordingly, we see that it is our job to ensure that infringement or dilution of a mark does not occur. The business impacts of failing to cross the necessary “t’s” and dot the needed “i’s” include lost revenue, brand/category leadership, or goodwill. We see our role as helping clients avoid these business outcomes, first and foremost.

Our business-first approach extends to the provision of an exceptional level of client service. We provide quick and thorough responses to inquiries. We develop accurate, carefully thought-out case management plans, and stick to them. We know that clients do not appreciate costs that exceed estimates or unnecessary change in initial legal advice. We routinely review and advise clients prior to filing documents with the U.S. Patent and Trademark Office (USPTO) so that the chance of rejection is reduced. This is a time and cost savings for the client. We strive to anticipate, and plan for, contingencies it is important to cover all options at the outset of a matter wherever possible.

Our attorneys also provide a worldwide versatility in navigating trademark law, prosecuting trademarks around the world, and in proceedings before the USPTO. To serve our European clients, our team includes a multilingual attorney who is an Italian national. This enables us to communicate effectively with clients who are familiar with the EU and/or a civil law system, as well as operating effectively throughout the European trademark system.

Our Trademark attorneys are a highly coordinated, experienced, and cost-effective group known for ensuring that the public face of the products and services our clients provide is secure, remains uninfringed, and continues to work hard for the businesses they represent.




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