Sunstein Approach to Trademark Portfolio Development

We develop and maintain U.S. and worldwide trademark portfolios for our clients, providing complete trademark services, including pre-filing consultation, trademark selection, searching and clearance, trademark registration and maintenance, and trademark licensing, enforcement and policing.

We Educate Our Clients and Ourselves. We believe the first steps toward achieving our clients’ goals in the area of trademarks is understanding the business of our clients, and working with each client to understand—and often define—the client’s goals. This often involves educating ourselves about each client’s business and educating each client on the benefits of trademark protection, setting up procedures and policies consistent with the client’s culture, and providing cost-benefit analyses that can help a client make choices regarding the proper focus of its trademark strategy. We make it our business to take charge of the process, so that the client can leverage our expertise to achieve its goals, and so that the client can focus on running and growing its business.

We Develop a Comprehensive Plan. We pay special attention to developing strategies that take into account a client’s entire business, not just one segment, and to asking the questions the client doesn’t ask—but would if it had our expertise. This proactive approach, in the context of working as a team with our clients, allows both our attorneys and our clients to ensure not only the highest level of legal services, but the highest level of cooperation, which in turn leads to better overall service of our clients’ needs.

We Prioritize. We work closely with clients to develop a budget and a plan for protecting trademarks that focuses on protecting the key trademarks in a client’s key markets in the most economical way possible. This process involves not only developing plans for protection, but also plans for weeding out marks that are no longer used or for which protection is no longer cost-effective.

We Think Globally. Most of our clients do business outside the United States, and thus need protection in foreign countries as well. We team with trademark attorneys throughout the world to provide worldwide coverage for our clients.

We Are Tech-Savvy. We use the latest technological tools to manage our clients’ trademark portfolios.  When assisting clients with new trademark selection, we ask whether our clients have considered registering related domain names, and our trademark searching strategies include evaluation of domain names and web usage by others.  In the era of social media, we work with our clients to manage the potential risks  presented by use of their trademarks on Facebook or other sites.  While social media present our clients with fresh ways to market their products and services, they also provide a forum for wide-spread infringement by others.  We assist our clients in navigating this evolving legal landscape and provide practical guidance for addressing infringing activity.

We Police Our Clients’ Marks.   Enforcement of trademark rights is just as important as obtaining and maintaining trademark registrations, and we take enforcement very seriously. We regularly monitor third party uses of our clients’ marks, through electronic watch services and other means, to make sure that our clients’ hard-won rights are protected from infringers and those who would stray too close to our clients’ scope of protection. Where necessary, we take action in the United States and abroad to stop third parties from registering or using marks that infringe, all while working closely with each client to develop a cost-effective policing strategy.

Please contact an attorney in our Trademark Practice Group if you are interested in exploring how we can assist you in connection with trademark matters.