Trademark Law Unveiled: Beyond Application To Defense And Infringement

Last updated on April 7, 2025

Navigating the intricate realm of trademark law requires a keen understanding of the application process and the nuances of defense and infringement. Our trademark attorneys can support you in the multifaceted world of trademarks, exploring not only the path to obtaining one but also the challenges that may arise along the way.

Our Dedicated Team

Founded in 2011, our attorneys at AU LLC have been at the forefront of business and intellectual property law, providing sophisticated and professional legal counsel. With over 20 years of experience, our seasoned attorneys stand as pillars of experience, dedicated to guiding you through the complexities of trademark law. Based in Chicago, we extend our services nationwide and globally, offering tailored solutions to protect your brand.

Comprehensive Trademark Overview

Trademark law is more than just filing an application; it’s a strategic journey encompassing defense and infringement considerations. We navigate this comprehensive landscape, ensuring your trademarks secure legal protection and stand resilient against potential challenges.

International Trademark Defense

Expanding your business globally requires a unique approach to trademark defense. We shed light on the distinctive challenges and strategies involved in safeguarding your trademarks on an international scale. Whether you’re in Chicago or reaching across borders, our attorneys are equipped to secure and defend your brand on a global stage.

Navigating Trademark Challenges

The path to obtaining a trademark is not without hurdles. Explore the challenges businesses face in securing and keeping this vital form of intellectual property. From navigating intricate application processes to overcoming objections, our lawyers at AU LLC stand as your unwavering partner, addressing challenges with precision and experience.

The Trademark Modernization Act: Tips For Registrants

The Trademark Modernization Act (TMA) of 2020, which fully came into effect in December 2021, introduces several key provisions aimed at streamlining and strengthening the process for securing trademark rights and combating fraudulent claims. Understanding the Trademark Modernization Act (TMA) is essential for maintaining the integrity and value of your trademarks.

Registered Trademarks Based On Actual Use In Commerce

One significant update brought by the TMA is the introduction of new procedures to challenge trademark applications and registrations that may not be legitimately in use. For trademarks registered in the U.S. based on a foreign registration or the Madrid Protocol, it’s required that the mark be used in commerce within three years of registration. If not, your registration could be vulnerable to expungement or cancellation proceedings for nonuse. For you as a registrant, this means:

• You need to ensure that your use of the trademark is clear, well-documented and genuine.
• When applying for a trademark, make sure to provide accurate and specific proof of use.
• Avoid broad claims that can’t be substantiated, as these could leave your trademark vulnerable to challenges.

Trademarks registered under Section 1(a), which are based on actual use in commerce, do not allow for claims of excusable nonuse in response to expungement or reexamination actions. It is crucial to ensure that your trademark was genuinely in use at the time of registration and throughout its lifespan, as you cannot later assert that nonuse during the application process was excusable.

Challenging Trademarks That Are Not In Use

The TMA also allows for faster cancellation of trademarks that are not in active use through an expedited review process. The result is that potential blocking registrations that are no longer in use can be cleared faster, thus creating a cleaner landscape for your own trademarks to thrive. However, it also means you must maintain diligent records of your trademark’s use in commerce to defend against any potential challenges to your rights.

Consider A Robust Monitoring System To Keep Track Of Deadlines

Additionally, the TMA has introduced more flexible response times for office actions. While this can provide you with more strategic control over your trademark applications, it requires careful attention to deadlines to avoid missing critical response windows. We recommend setting up a robust monitoring system to keep track of all trademark-related deadlines.

We advise you to regularly review your trademark portfolio and ensure that each mark is actively used and protected. Consider conducting periodic audits of your trademark use and updating your registrations as needed to reflect current use. This proactive approach can help safeguard your trademarks against challenges and strengthen your brand’s position in the market.

How A Trademark Lawyer Can Protect Your IP Internationally

The complexities of international trademark protection can be daunting for business owners, especially if they are just venturing into the global realm. A trademark lawyer with multinational experience can help safeguard your intellectual property (IP) across borders.

Here’s how they can help:

• Comprehensive trademark applications: A lawyer can help ensure your trademark applications are thorough and compliant with the regulations of each country where you seek protection. For instance, they can conduct extensive searches to avoid conflicts with existing trademarks and help ensure your application meets all legal requirements.
• Strategic trademark protection: Your representative can develop a strategic plan tailored to your business needs. For instance, they can help identify key markets and jurisdictions where trademark protection is essential. A proactive approach helps secure trademark rights in the specific regions critical to your business operations.
• Enforcement of trademark rights: Once your trademark is registered, an attorney can monitor its use globally, identifying potential infringements. They can take swift legal action to enforce your trademark rights, preventing unauthorized use that could dilute your brand’s value.
• Handle legal disputes: In the event of a dispute, an attorney with global trademark protection experience can represent you in negotiations or litigation, safeguarding your interests. Their knowledge of international IP law is crucial in navigating the legal landscapes of different countries.
• Advise on IP strategy: A skilled legal representative can provide ongoing advice on managing your IP portfolio, helping you maximize the value of your trademarks. Services can include advising on renewals, expansions and potential licensing opportunities.

Having an attorney with international experience is crucial because IP laws vary significantly from one country to another. A knowledgeable attorney can help you avoid pitfalls and implement global IP asset protections.

Why consult a trademark lawyer before an infringement occurs? Early guidance can help you establish strong trademark security from the outset, reducing the risk of costly disputes later. Business owners can benefit from a proactive approach, ensuring their trademarks are well protected and their brand remains a valuable asset in the global market.

Secure Your Brand Today

Trust our attorneys at AU LLC to be your legal guide in the dynamic landscape of trademark law. From Chicago to nationwide and beyond, our attorneys, with over 20 years of experience, are ready to safeguard your brand. Contact us at 312-900-9426 or online to make an appointment. Let’s embark on the journey of protecting and elevating your brand together.