Trademarks
Protect Your Brand

Some of the best known companies and household brands can attribute their success to the protection of their trademarks. When used effectively, trademarks powerfully communicate ideas and information and help build loyalty and value for a business. Businesses can gain substantial commercial advantage by registering their brands and other marketing tools.

Head, Johnson & Kachigian's professional staff understand the importance of trademarks and take the time and effort to understand our clients' businesses, their marketing strategies and the markets in which they compete. We match the right people within Head, Johnson & Kachigian to ensure that we deliver the highest caliber and most cost-effective services. Our trademark expertise covers a broad range of industries, including food, beverage, entertainment, media, telecommunications, I.T., electronics, textiles, fashion, automotive, finance, chemicals, pharmaceuticals, mining, manufacturing and retail.

Head, Johnson & Kachigian offers services that are commercially focused and pro-active. We provide clients with timely and clear advice which sets out options and alternatives, to allow clients to make the right commercial decisions in managing their trademarks. Our professionals anticipate opportunities and problems and help clients position themselves favorably against competitors. We are at the forefront of the significant developments in trademark law and practice, and we can find creative ways to exploit these developments for the commercial benefit of clients.

Our services include:

• Registrability and infringement searches
• Filing and prosecuting U.S. and foreign trademarks
• Investigating and advising on infringement and the validity of registrations
• Trademark oppositions, non-use and revocation actions
• Dispute resolution and litigation
• Trademark watching, monitoring and surveillance
• Defending trademark registrations
• Trademark management and strategizing
• Trademark due diligence and audits
• Trademark licensing and commercialization

Many Head, Johnson & Kachigian clients operate global businesses. We are able to service our clients' trademark needs around the world. The special relationships developed by Head, Johnson & Kachigian with many attorney firms in key foreign markets provide ongoing, substantial benefits to our internationally focused trademark clients.

Trademark Searching and Policing

Head, Johnson & Kachigian is often called upon to advise on the registrability of proposed trademarks and to screen such trademarks for conflicts with existing trademarks. Our professional staff works closely with our clients on the creation and adoption of new trademarks.

Searches are necessary to ensure that a new trademark does not infringe the rights of another person and to ensure no prior trademarks exist that could prevent registration. A search detects conflicting trademarks before costs are incurred in packaging, labeling or promotional materials. An early search may save a client the considerable expense of having to withdraw and modify such material, not to mention the costs involved in a possible infringement action.

Head, Johnson & Kachigian's trademark searchers work closely with our professional staff to ensure searches are carried out and reported promptly and cost-effectively. Head, Johnson & Kachigian can also call upon our network of foreign associates to carry out detailed searches in all foreign markets.
One of the key aspects of effective trademark management is knowing what competitors are doing and where brands are being infringed or diluted. Head, Johnson & Kachigian provides a full range of U.S. and international policing services for clients, including policing of particular competitors, of classes of goods/services and of trademarks. We work with clients to devise policing strategies that provide suitable protection for key brands at a modest cost.

Infringment

The growth in the value of trademarks creates an increasing demand for the protection of these valuable assets in the market place. Businesses that value their trademark assets are increasingly sensitive to the damage caused by unchecked infringements.

Head, Johnson & Kachigian is active in protecting clients' trademarks through immediate action, including issuing cease and desist letters and taking court proceedings if necessary. Our litigation lawyers are experienced in seeking relief from the Courts for trademark infringement and for the related actions of passing off and contravention of the consumer protection provisions of the Trade Practices Act. Our focus is on expeditious and cost-effective resolution of disputes, including the use of mediation to settle disputes where suitable.

Our litigators are also skilled at defending trademark infringement proceedings and in negotiating favorable settlements of claims against our clients.

Trademark Audits

An IP audit is a comprehensive analysis of a company's IP assets, including its trademarks, which identifies and documents those assets for future use. Often, businesses fail to recognize, identify or protect their less obvious trademarks and other marketing tools such as shapes, aspects of packaging, colors, sounds and scents. IP and trademark assets can be put to work for the ultimate success of a business. This analysis enables the implementation of long-term IP management which ensures that IP assets are:

• Protected to ensure future value as an asset and safeguarded as a valuable revenue stream and provide a competitive edge.
• Brought to account on a balance sheet, thereby boosting the net worth of a business.
• Increasing a business' profitability through licensing, selling or raising finance against them.

Trademark Licensing and Transfer

The increasing emphasis on the attractive force of trademarks has fuelled an explosion in licensing and franchising. Companies whose brands are used by licensees and franchisees turn to Head, Johnson & Kachigian for the negotiation and drafting of clear, effective and workable agreements and for advice in relation to licensing issues and disputes. A well-drafted license agreement is a pre-requisite to a successful licensing program.

Head, Johnson & Kachigian's lawyers advise on all aspects of the commercialization and transfer of trademarks.

Trademark Renewels

Intellectual property offices in most countries, including the U.S., charge periodic fees to keep trademarks in force.

In the U.S., the renewal fees for a registered trademark are payable every 10 years, with the first renewal being due 10 years from the filing date of the trademark.

It is imperative that deadlines for paying renewal fees are closely monitored. Failure to pay a renewal fee by the required deadline may result in loss of intellectual property rights.

Filing Trademarks

A trademark may comprise words, letters, digits, logos and devices, or any combination of these. In the U.S., as well as in many other countries, it is now also possible to register as trademarks other marketing tools, such as shapes, aspects of packaging, colors, sounds and scents. Indeed, any sign that distinguishes one trader's goods or services from those of another can be registered as a trademark.
Head, Johnson & Kachigian offers a full range of services relating to the filing, prosecution and registration of trademarks. We work with clients to devise cost-effective strategies for protecting their trademarks in the markets in which they operate around the world.

Head, Johnson & Kachigian has a proven track record in the successful prosecution of complex and difficult trademark prosecution cases, such as the registration of shapes, aspects of packaging, colors and descriptive word marks.

Trademark Oppositions, Non-use and Revocation Actions

The effective management of trademark oppositions is vital to achieve and maintain a competitive advantage through trademarks. Opposition proceedings can be taken against applications to register trademarks that are the same or similar to an existing trademark, whose use may cause confusion or which are otherwise contrary to law. Oppositions are necessary to prevent the registration of trademarks which may confuse the public, dilute the distinctiveness of an existing mark, or adversely impact on the business of an existing trademark owner.

Once registered, a trademark can also be removed from the Register by a non-use action (if the registered mark has not been used for a continuous period of three years) or by a revocation action (if the trademark was wrongly registered or wrongly remains on the Register). Such actions often form part of a broader trademark strategy, for example in assisting another person to secure registration for the same or a similar mark.

Head, Johnson & Kachigian's attorneys have a proven track record in the successful conduct of oppositions, non-use and revocations actions, including complex and difficult matters. Our attorneys have considerable experience in preparing evidence and legal submissions, attending Trademarks Office hearings and arguing in support of our clients.