Trademark Prosecution and Enforcement Services

Derek A. Simpson


Pre-application analysis

I don’t treat applications to register trademarks like routine, perfunctory tasks. To properly protect a client’s trademark rights, I develop a comprehensive understanding of the client’s business operations, marketing and branding strategy, and its competitive environment. Before ever filing an application, I identify my client’s marks, prioritize them according to their importance, and identify the trade channels through which the goods or services move. Then I assess third-party registrations and use of marks that could affect my client’s trademark registration strategy.

By identifying and evaluating third-party registrations and applications, I can describe my client’s goods or services in a manner that give my client the broadest rights of exclusivity or the best chance for obtaining the registration, even under challenging circumstances. Or I can approach third parties to obtain consent letters or co-existence agreements, permitting my client’s application to proceed to registration.


Prosecution advocacy

After filing the application, I advocate, as necessary, for my client while prosecuting the matter before the U.S. Patent and Trademark Office. The positions my client takes while prosecuting the trademark application can affect its future trademark enforcement matters in important ways. Persuading the PTO to register a mark as non-descriptive, for example, may bolster the strength that a future court affords the mark in the event a client files suit against an infringer.

I develop creative strategies to overcome objections raised in Office Action letters, to obtain appropriate registrations as efficiently as possible.



Trademark Trial and Appeals Board Proceedings

Litigating matters before the TTAB is an integral part of my trademark prosecution services. Using the TTAB’s cancellation and partial cancellation procedures is an important, and proper, way to obtain registrations where the Trademark Office initially refused registration.


Monitoring and Portfolio Management

During the prosecution of the application and after registration, I monitor third-party use and applications to register marks that could encroach on my clients’ rights to the exclusive use of the mark. I issue cease-and-desist letters, obtain co-existence agreements, and, when necessary, file opposition proceedings before the TTAB or commence litigation against the infringing party.


International Trademark Counseling

Successful brands sell their products and provide their services around the world. And their trademark rights must be secured in all countries where they’re doing or plan to do significant business. I obtain registrations in the foreign jurisdictions critical to their business success. Where possible I prosecute the applications myself through the U.S. Patent & Trademark Office using the Madrid Protocol and, where appropriate, I enlist my network of international attorneys to deliver efficient results for my clients.