Trademark Prosecution

Strong trademark rights begin with thoughtful brand selection, careful clearance, and a registration strategy designed around the client's business. Effective trademark prosecution requires more than preparing and filing applications. It requires understanding how a brand will be used in the marketplace, identifying potential obstacles before they become problems, and developing a strategy that supports both immediate commercial objectives and long-term brand growth.

At Perilla Knox & Hildebrandt, our trademark attorneys counsel clients throughout the trademark lifecycle, from brand development and clearance through application, examination, registration, maintenance, and portfolio management. We prepare and prosecute U.S. trademark applications before the United States Patent and Trademark Office (USPTO), coordinate international trademark protection, and advise clients regarding the development and expansion of trademark portfolios as their businesses grow.

Our approach combines prosecution experience with the perspective of a full-service intellectual property firm. We work closely with clients to understand their brands, products, services, customers, competitive landscape, and future business plans so that trademark protection reflects not only current use, but also where the business is headed.

Our trademark prosecution and portfolio experience spans a broad range of products, services, and industries. We have handled trademark matters involving eyecare and vision products, household and consumer goods, beer and distilled spirits, non-alcoholic beverages, apparel and clothing, cancer therapies and other life sciences products, building and construction products, recreational and dog park equipment, online streaming and digital media platforms, mobile applications, software, and other technology products and services. This breadth of experience allows our attorneys to quickly understand different markets, distribution channels, purchasing decisions, and competitive environments—considerations that can be critical when evaluating trademark availability and developing an effective registration strategy.

Comprehensive trademark prosecution experience.

Our intellectual property practice represents businesses throughout the lifecycle of their trademark rights—from initial brand selection and clearance through prosecution, registration, portfolio development, licensing, enforcement, and defense. That experience provides our trademark attorneys with a practical understanding of how registration decisions made today can affect the scope, strength, and enforceability of trademark rights for years to come.

Trademark prosecution frequently involves strategic issues extending well beyond the mechanics of filing an application. We counsel clients regarding the availability and registrability of proposed marks, appropriate identification and classification of goods and services, filing bases, specimens of use, ownership, priority, geographic considerations, and the potential impact of existing third-party rights.

We prepare and prosecute applications for trademarks, service marks, logos, slogans, trade dress, and other source-identifying matter. When the USPTO raises an objection or refusal, we develop responses addressing issues including likelihood of confusion, descriptiveness, genericness, geographic significance, ornamental use, failure to function, specimens of use, identification and classification requirements, disclaimers, and other substantive and procedural requirements.

Brand understanding. Prosecution strategy.

Trademark protection begins with understanding the brand and the business behind it. Our attorneys consider not only the mark itself, but also the client's products and services, intended customers, channels of trade, geographic markets, competitive environment, and plans for future expansion.

Before filing, we help clients evaluate proposed marks and identify potential conflicts through trademark clearance and searching. Where potential obstacles exist, we assess their practical significance and help clients determine whether to proceed, modify the proposed mark, narrow or adjust the application strategy, seek consent or coexistence, or consider alternative branding.

We also develop filing strategies designed to obtain commercially meaningful protection. That may include determining whether to pursue protection for word marks, logos, product names, slogans, or other brand elements; identifying the appropriate goods and services; coordinating multiple applications; and considering how a U.S. filing fits within a broader international trademark portfolio.

For established portfolios, we work with clients to identify gaps in protection, consolidate and organize trademark holdings, evaluate new filings as products and services evolve, and develop practical approaches to maintaining registrations and protecting important brands.

From clearance through registration and beyond.

Effective trademark prosecution often begins well before an application is filed. We counsel clients during the brand-development process, conduct and evaluate trademark searches, assess registration and infringement risks, and develop filing strategies based on the client's commercial priorities.

Once an application is filed, we manage the prosecution process through examination and registration. We respond to USPTO Office Actions, communicate with examining attorneys, address substantive refusals and procedural requirements, prepare amendments and declarations, submit specimens and evidence of use, and pursue appeals to the Trademark Trial and Appeal Board when appropriate.

Our work continues after registration. We assist clients with declarations of use, renewals, incontestability filings, ownership changes, assignments, recordation, portfolio audits, and other matters necessary to maintain and strengthen trademark rights.

For businesses operating internationally, we coordinate foreign trademark protection through the Madrid Protocol and direct national filings, working with trusted foreign associates to develop efficient filing and prosecution strategies across jurisdictions. We also help clients prioritize international protection based on manufacturing, sales, distribution, expansion plans, and the particular importance of individual brands and markets.

Our Clients.

We represent emerging companies, established businesses, entrepreneurs, manufacturers, retailers, technology companies, and multinational corporations in developing and managing trademark portfolios. Our experience spans a wide variety of industries and technologies, including both business-to-business sellers and companies providing consumer goods and services of all types.

Some clients come to us with a single new brand requiring clearance and registration. Others maintain substantial domestic and international trademark portfolios involving house marks, product brands, logos, slogans, and other intellectual property across numerous jurisdictions. In each case, our objective is the same: develop trademark protection that reflects the importance of the brand, the realities of the marketplace, and the client's broader commercial strategy.

We recognize that trademark prosecution is ultimately about more than obtaining registrations. A successful trademark strategy should help preserve freedom to operate, reduce the risk of costly branding disputes, create enforceable rights, support expansion into new products and markets, and build long-term value in the client's brands. Our attorneys work closely with clients to ensure that their trademark portfolios continue to evolve alongside their businesses.