Intellectual Property 

We offer comprehensive trademark clearance due diligence under federal law, common law and even several key international jurisdictions as well as registration services that can be handled for an affordable fixed fee.

Please contact us for a quote or if you have any questions about any of our services:

• Allegation of Use Filings for "Intent to Use" Applications and Other Additional Filings, Extensions & Amendments
• Declarations (Section 8: filed between the 5th and 6th year)
• Renewals (Section 9: filed between 9th and 10th year) & Incontestability Filings (Section 15: may be filed after the 5th year)
• Responses to USPTO Office Actions
• USPTO Trial and Appellate Board (TTAB) Oppositions, Petitions and Appeals 
• International Trademarks & Madrid Protocols
• Trademark Licenses and Assignments
• Cease & Desist Letters / Trademark Dispute Matters

Office Actions

After your trademark application is filed with the United States Patent and Trademark Office (USPTO) an examining attorney will review the application to determine whether it complies with all applicable rules and statutes and includes all required fees.

A complete review includes a search for conflicting marks, and an examination of the written application, the drawing, and any specimen (the proof of use in commerce).

If the examining attorney decides that a mark should not be registered, the examining attorney will issue a letter – an Office Action - explaining any substantive reasons for refusal, and any technical or procedural deficiencies in the application. If the examining attorney sends an Office Action, the applicant’s response to the Office Action must be received in the Office within six months of the mailing date of the Office Action, or the application will be declared abandoned. A trademark owner will lose his or her intellectual property rights in the mark if it is declared abandoned. Moreover, if the applicant’s response does not overcome all objections in an Office Action, the examining attorney will issue a final refusal. To attempt to overcome a final refusal, the applicant may, for an additional fee, appeal to the Trademark Trial and Appeal Board (TTAB), an administrative tribunal within the USPTO.

Office Actions typically fall into two categories: substantive objections and procedural/non-substantive objections. An example of a substantive objection is an Office Action objection based on the examiner’s opinion that the mark is merely descriptive, meaning it just describes what goods or services are on offer (e.g., a business that builds houses and seeks to register the mark: Home Builder) or that is confusingly similar to another mark already registered or has an application pending at the USPTO.

To save you time and money we typically separate Office Action responses into two phases. First, we carefully review your Office Action and provide you with analysis and a recommended course of action. The second part is the implementation phase, where we implement the recommended course of action. Because some objections likely will not be overcome, breaking up the process in this manner could save you on office and attorney fees. Moreover, it gives you an opportunity to consider your options carefully and make an informed decision based on your budget and needs.

If you are facing a USPTO Office Action rejection, contact us today to set up a consultation.

"It protects works of authorship, such as writings, music, and works of art that have been tangibly expressed."

Copyright protects “original works of authorship” that are fixed in a tangible form of expression. Copyrightable works include literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture. Copyright does not protect facts, ideas, systems, or methods of operation, although it may protect the particular way these things are expressed.

Generally, the U.S. Copyright Act gives the owner of copyright the exclusive right to do and to authorize others to do the following:

• To reproduce the work.
• To prepare derivative works based upon the work.
• To distribute copies of the work to the public by sale or other transfer of ownership, or by rental, lease, or lending.
• To perform the work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, motion pictures and other audiovisual works.
• To display the work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work; and
• In the case of sound recordings, to perform the work publicly by means of a digital audio transmission.

Copyright law provides several advantages to encourage copyright owners to make a timely registration. Among these advantages are the following:

• Registration establishes a public record of the copyright claim.
• Before an infringement suit may be filed in court, registration is necessary for works of U.S. origin.
• If registration is made prior to an infringement of the work, statutory damages and attorney’s fees will be available to the copyright owner in court actions. Otherwise, only an award of actual damages and profits is available to the copyright owner.
• If made before or within 5 years of publication, registration will establish prima facie evidence in court of the validity of the copyright and of the facts stated in the certificate
• Registration allows the owner of the copyright to record the registration with the U.S. Customs Service for protection against the importation of infringing copies.
  

Protect your creativity and originality and keep your IP ducks in order. Let our Copyright experience work for you. The attorneys at Buckley & Zopf handle a variety of copyright matters for the entrepreneur, small business and artist including:

• All manners of US Copyright Office Registrations
• Licensing transactions (EULA preparation, assignments, software as a service / platform as a service)
• Digital Millennium Copyright Act (DMCA) matters such as Take Downs and responses 
• Copyright dispute issues including Cease & Desist / Infringement Letter Matters 
• Copyright Case Consultation and Analysis (Fair Use, Infringement, Internet Related Matters, etc...)

If you have a copyright related matter don’t hesitate to contact us today for a consultation.