USE CASE · US TRADEMARKS & DESIGNS
Trademark and Design Protection in the USA
Anyone wishing to protect a trade mark, product design or digital user interface in the US must tailor the availability, scope of protection and filing strategy to the US market. Separate rules and procedures also apply to Office Actions, opposition proceedings and allegations of infringement.
We assist companies from Germany and the DACH region with US trade mark and design matters. Matthias Schuhmacher and Raphael Tautz coordinate our German-language support services; Jacqueline Zion and Dor Cohen Zedek contribute their expertise in trade mark strategy, registration, portfolio management and enforcement.
The case at a glance
Background
A trade mark or design is to be registered, developed, licensed or defended against infringements in the USA.
Objective
Align availability, scope of protection and enforcement strategy with the commercial objectives for the US market.
Support
German-speaking contacts coordinate registration and strategy with the international trade mark and design practice.
Your situation
A trade mark used in Europe is not automatically available in the US or protected to the extent required. Prior to filing an application, searches, the list of goods and services, and actual or planned use may be decisive factors.
At a later stage, Office Actions, opposition proceedings or cancellation proceedings may arise before the Trademark Trial and Appeal Board (TTAB). In the case of product designs, trade dress, design patents and other intellectual property rights may be relevant.
Our support
We provide support with trademark clearance, filing and registration with the USPTO, responding to Office Actions, and managing international portfolios with a US component. Licensing and usage issues are incorporated into the protection strategy.
In the event of disputes, we assist with enforcement proceedings, TTAB proceedings and the defence against allegations of infringement. For product designs and digital interfaces, we work with the relevant team to assess which protection measures are appropriate for the specific design.
Discuss US brand and design strategy
Please describe the brand, design or current issue to Matthias Schuhmacher and Raphael Tautz. We will clarify the information required and involve the relevant members of the international practice.
Protecting and enforcing trade marks and designs in the USA
The appropriate strategy depends on the type of mark, its design, its use and any disputes. The following topics outline typical elements of US trade mark and design protection.
Trademark clearance and USPTO application
Assess availability and registration strategy prior to market entry.
A clearance search is intended to identify any existing rights and potential risks of conflict prior to filing an application or entering the market. The scope and significance of the search depend on the trade mark, goods, services and the intended territory of use.
On this basis, we coordinate the applicant, the design of the mark and the list of goods or services, and assist with the registration process at the USPTO. International filing strategies are coordinated with existing portfolios.
Office Actions and Portfolio Management
Handle USPTO objections and international intellectual property rights consistently.
USPTO Office Actions may relate to formal issues, descriptive content, likelihood of confusion or requirements regarding use. We categorise the objections and prepare a case-specific response.
For international portfolios, we coordinate deadlines, renewals, proofs of use and changes. Licences and transfers are documented in such a way that brand strategy and operational use are aligned.
TTAB, Enforcement and Defence
To conduct trademark disputes before the USPTO and in the courts in a targeted manner.
Opposition and cancellation proceedings before the TTAB relate to the registration or validity of trade mark rights. In addition, formal warnings, negotiations or legal action may be required to enforce or defend these rights.
We assess the legal position, usage, evidence and commercial objectives with the relevant team. Trade dress and issues of unfair competition may also be relevant, depending on the design and market presence.
Design patents and digital designs
Ensure that product designs and user interfaces are adequately protected.
Design patents can protect the decorative features of a product. For user interfaces, icons and other digital designs, the specific representation and an appropriate filing strategy are key.
We liaise with US patent practitioners to determine which illustrations and variants are required and how design protection complements trade marks, trade dress and other rights. Caleb Pollack can be engaged for matters relating to US design patents.
Your points of contact
Matthias Schuhmacher and Raphael Tautz coordinate German-language client support. Jacqueline Zion oversees the US trade marks practice; Dor Cohen Zedek brings international experience in trade marks and design strategy, as well as enforcement.
Partner · STEM Practice Group
Your contact in Munich
Partner · STEM Practice Group
Your contact in Munich
Partner · Chair of the US Trademarks Practice Group
US team in New York
Partner · Chair of the IL Trademarks and Designs Practice Group
International team in Tel Aviv
Frequently Asked Questions
A clearance search can identify potential risks of conflict with earlier marks. The scope and assessment must be tailored to the marks, goods, services and intended use.
It contains the USPTO’s objections or requirements regarding the trade mark application. These may relate, amongst other things, to formalities, the description, likelihood of confusion or evidence of use.
The Trademark Trial and Appeal Board rules, amongst other things, on oppositions to applications and requests for the cancellation of existing registrations. It generally deals with registrability, not necessarily all infringement issues.
A design patent can protect the decorative design of a functional object. The scope of protection and suitability depend on the illustrations submitted and the specific design.
Depending on their specific design, certain visual elements of digital interfaces may be eligible for design protection. In addition, issues relating to trade marks, copyright or trade dress may be relevant.
Further information
How to Obtain Trademark Protection in the US
What is a design patent?
Intellectual Property
Advice on trade marks, designs and other intellectual property rights.
US Trade Marks Practice
Pearl Cohen’s US trade mark practice.
Trademarks & Designs
International consultancy on trade marks and designs.
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English (United States) 
English (UK)