IP, Internet & Compliance

Trademarks

The name is the business. Protect it like one.

Your brand is often your most valuable asset, and protecting it takes more than filing a form. Hank Fasthoff has spent more than 29 years helping companies choose, apply for, register, license, and defend their trademarks, from the mark availability search through application and registration, through enforcement, whether in or out of the courthouse.

Hank evaluates the proposed mark for obvious problems and, when requested, commissions a clearance search to identify potentially conflicting marks, and counsels you on the level of risk associated with adopting the proposed mark and filing an application seeking registration. Once you decide you want to apply to register a mark, he identifies the right classes and the description of goods and services, files the application, and responds to office actions that may be issued by an examining attorney. While some office actions don't require a substantive response, those that do will incur additional fees for any legal briefing that may be required to adequately respond to the office action.

Hank also negotiates and drafts trademark licenses and commercial agreements, handles assignments and intellectual property due diligence in deals, and represents you in opposition and cancellation proceedings at the Trademark Trial and Appeal Board. When infringement or counterfeiting threatens your brand, he enforces your rights in your mark through demand letters, settlement, and litigation.

Hank has represented trademark clients ranging from Fortune 500 companies to recording artists to small businesses and startups, so you get counsel grounded in how these disputes resolve across very different stakes. On every engagement Hank works toward the same result, a mark you can own with confidence and seek to enforce without hesitation.

Services Include

  • Trademark clearance searches and availability opinions
  • Trademark applications and registration
  • Office action responses
  • TTAB oppositions and cancellations
  • Trademark licenses and commercial agreements
  • Assignments and IP due diligence
  • Trademark and trade dress enforcement
  • Trademark and unfair competition litigation

Trademarks Insights

What a Trademark Is and the Rights Federal Registration Provides

A trademark is any word, phrase, symbol, design, or combination of these that identifies the source of goods or services and distinguishes them from those offered by others. The name on the label, the logo on the packaging, the slogan in the advertising, and even the distinctive shape of a product or its packaging can all function as trademarks if consumers associate them with a particular source.

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Why Some Trademarks Are Stronger Than Others

Trademark strength depends on both inherent distinctiveness and marketplace recognition. Fanciful, arbitrary, and suggestive marks begin with an advantage, while descriptive terms require acquired distinctiveness and generic terms can't function as trademarks for the relevant goods or services.

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Why a Trademark Clearance Search Comes Before Everything Else

A trademark clearance search evaluates whether a proposed mark conflicts with earlier rights before a business commits money to the name. The review should cover federal records, state records, domain records, and unregistered uses that a USPTO search won't reveal.

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How Federal Trademark Registration Works at the USPTO

Federal trademark registration proceeds through filing, examination, publication, and either registration or a notice of allowance. Applicants must select the filing basis, identify the goods and services, submit any required specimen, meet response deadlines, and maintain the registration after issuance.

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Common Trademark Mistakes That Cost Businesses Time and Money

Trademark errors often begin before filing and may affect whether a business can use, register, and enforce its mark. A sound process addresses distinctiveness, clearance, filing basis, specimens, deadlines, consistent use, monitoring, and maintenance.

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TTAB Proceedings and How They Differ from Federal Court

The Trademark Trial and Appeal Board decides whether a party may obtain or retain a federal trademark registration. Opposition and cancellation proceedings resemble civil litigation, but the Board can't decide infringement, award damages, or prohibit trademark use.

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Enforcing Your Trademark Rights

A federal trademark registration provides nationwide constructive notice, evidentiary presumptions, and several enforcement tools. The owner remains responsible for finding unauthorized uses, assessing whether they threaten the registered rights, and selecting a response suited to the conduct.

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Trademark Protection for Buildings and Store Designs

A building exterior, interior, or store layout may function as protectable trade dress when consumers perceive it as identifying a source. Protection depends on source identifying use, distinctiveness, nonfunctionality, and likely confusion rather than architectural originality alone.

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Trademark Licensing and Quality Control

A trademark license authorizes another business to use a mark within agreed limits. Quality control, enforcement rights, royalty terms, and termination provisions determine how the parties manage that permission and protect the brand.

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