Trademark Counseling & Prosecution

Steptoe lawyers understand the importance of trademark registration in protecting a brand and actively help clients find cost-effective ways to protect and grow their IP assets, particularly as their businesses expand into new product lines, marketplaces, or services.

Meaningful trademark protection starts with thorough brand research in the earliest stages of brand development to understand a mark’s relative strength and potential position in the marketplace. Steptoe lawyers work with clients to educate internal business teams about the importance of diligence early in the clearance process when submitting new ideas for trademarks, slogans, and logos – preferably before significant investment has been made in new branding elements. This is a vital first step as we partner with clients to formulate a coherent strategy to establish and protect IP assets designed to make the prosecution and enforcement of their brands far easier and much more cost-effective. 

As part of the branding process, Steptoe is able to advise clients on the current competitive landscape, how to select and position their brands, and how to protect those brands in order to maximize impact. Our analysis occurs on many levels. First, we analyze a mark to determine its inherent strength, based on the spectrum of distinctiveness. Second, we analyze a mark to determine its relative strength, based upon what is already in existence on the marketplace. We evaluate these factors in connection with every aspect of a customer’s experience – including websites, marketing materials, trade dress, as well as a mark’s ultimate presentation and appearance. When the time comes to pursue trademark clearance, we use proprietary tools developed to gather critical information about:

• The importance of the proposed mark(s) to a client’s overall portfolio.
• A client’s overall risk tolerance.
• The level of clearance we should undertake for a particular brand.
• The jurisdictions in which searches should be conducted.
• This information informs a series of searches to ensure the mark is available for use and registration. If necessary, we can provide guidance regarding how to make a proposed mark more distinctive and likely to achieve clearance, while minimizing changes to core branding elements.
• Steptoe emphasizes the implementation of a clearance strategy that is customized to meet a client’s business needs in order to achieve greater efficiencies in the subsequent aspects of the portfolio management process – especially prosecution and enforcement.
• Our team of trademark lawyers is skilled in the US trademark registration process and works with an elite network of international counsel to successfully register trademarks around the globe.

Following registration, Steptoe proactively continues to work with clients to maintain registrations for the life of the brand, ensuring that registrations are renewed in a timely manner and advising on any use of the marks that is necessary for maintenance. Our lawyers not only register and protect our clients’ trademarks, but strive to help develop and expand clients’ brands to meet their evolving business needs.