Regulatory, IP & people
Trademarks
Kaleo Legal prosecutes and maintains valuable trademark portfolios both domestically and throughout the world. Our flat-fee based trademark practice takes a practical approach to the entire process, from trademark selection through registration, renewal, and enforcement. Our trademark clients range from start-up technology companies to well-established, brick-and-mortar businesses in an array of industries including software, consumer products, alcohol, building supply, plumbing, home goods and appliances, e-commerce, professional services, restaurants, and hospitality.
Kaleo Legal uses state-of-the-art docketing software and techniques to monitor our clients’ trademark portfolios, which cumulatively encompass thousands of trademark applications and registrations in the United States and abroad. Our intellectual property attorneys have broad expertise in trademark selection, clearance searches, infringement analyses, prosecution, trade dress, litigation, and watch services.
Clearance
Our trademark clearance services range from conducting “knockout” searches at the USPTO to providing analysis of in-depth, comprehensive searches of the USPTO, domain name registers, common law uses, and state business and trademark registrie. We are experts at suggesting ways to deal with obstacles, including by narrowly tailoring applications and cancelling or acquiring blocking registrations.
Filing
We strategically draft U.S. trademark applications with the goal of avoiding objections that can delay publication or cost extra money in dealing with Office Actions. Internationally, we file applications through our trusted network of experienced foreign agents.
Where available, we also file for foreign protection through various international treaties, which provides clients with cost effective filings solutions while offering the most comprehensive geographic coverage.
Domain Name Disputes and Take-Downs
Kaleo Legal is exceptionally skilled at protecting our clients’ rights online. We assist our clients in acquiring and registering domain names, submitting domain name arbitrations under the Uniform Dispute Resolution Policy, and filing civil actions in federal court for cybersquatting and trademark infringement. As a result of our efforts, Kaleo Legal has caused numerous infringing websites to be taken down and many domain names to be rightfully transferred to our clients.
Licensing
We routinely prepare and negotiate all flavors of trademark licenses, including joint ownership and co-existence agreements, agreements in settlement of litigation, and complicated product merchandising agreements.
Maintenance
It is necessary to periodically file proof of use of the mark for the covered goods or services with the USPTO in order to maintain a trademark registration. Kaleo Legal dockets such maintenance deadlines in a state-of-the-art docketing system accessible to our clients, and we work with them to strategically maintain their portfolios of marks.
Monitoring and Watch Services
Trademark owners must be vigilant in protecting their rights. As part of our role in our clients’ policing efforts, Kaleo Legal arranges for trademark watch services, domestically and/or internationally. In that way, we can receive timely notice of confusingly similar marks and discuss with our clients whether to oppose registration. We eliminate the background noise by reviewing the watch notices in advance, so our clients don’t have to.
Oppositions and Cancellations
Kaleo Legal enforces our clients’ trademarks by vigorously (and regularly) pursuing opposition proceedings and cancellation actions before the Trademark Trial and Appeal Board.
In the event that a third party opposes an application or petitions to cancel a registration, we are there to defend our clients’ rights.
Because these proceedings closely resemble federal court litigation, our decades of litigation experience serves us well.
