USE CASE · U.S. TRADEMARKS & DESIGNS
Trademark and Design Protection in the United States
Anyone wishing to protect a trademark, product design, or digital user interface in the United States must tailor the availability, scope of protection, and filing strategy to the U.S. 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 U.S. trademark and design matters. Matthias Schuhmacher and Raphael Tautz coordinate German-language support; Jacqueline Zion and Dor Cohen Zedek contribute their expertise in brand strategy, registration, portfolio management, and enforcement.
The Case at a Glance
Background
A trademark or design is to be registered, expanded, licensed, or defended against challenges in the United States.
Objective
Align availability, scope of protection, and enforcement strategy with the economic objectives for the U.S. market.
Support
German-speaking representatives coordinate registration and strategy with the international trademark and design practice.
Your Situation
A trademark used in Europe is not automatically available in the U.S. or protected to the extent required. Before filing an application, trademark searches, the list of goods and services, and actual or planned use can be decisive factors.
Later on, Office Actions, opposition proceedings, or cancellation proceedings may arise before the Trademark Trial and Appeal Board (TTAB). When it comes to product designs, trade dress, design patents, and other intellectual property rights may come into play.
Our Support
We provide support for trademark clearance, filing, and registration with the USPTO, as well as for responding to Office Actions and managing international portfolios with a U.S. component. Licensing and usage issues are incorporated into the protection strategy.
In the event of disputes, we assist with enforcement, TTAB proceedings, and the defense against allegations of infringement. For product designs and digital interfaces, we work with the relevant team to determine which protection measures are appropriate for the specific design.
Discuss U.S. Brand and Design Strategy
Describe the brand, design, or current issue to Matthias Schuhmacher and Raphael Tautz. We’ll determine what information is needed and bring in the appropriate members of our international practice.
Protecting and Enforcing Trademarks and Designs in the United States
The appropriate strategy depends on the trademark, design, use, and the nature of the dispute. The following topics outline typical components of U.S. trademark and design protection.
Trademark Clearance and USPTO Application
Assess availability and registration strategy before entering the market.
A clearance search is intended to identify any potential prior rights and identifiable risks of conflict before filing an application or entering the market. Its scope and significance depend on the mark, goods, services, and the intended territory of use.
Based on this, 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
Consistently address USPTO objections and international intellectual property rights.
USPTO Office Actions may concern formal issues, descriptive claims, likelihood of confusion, or requirements regarding use. We categorize the objections and prepare a case-specific response.
For international portfolios, we coordinate deadlines, extensions, proofs of use, and changes. Licenses and transfers are documented in a way that ensures brand strategy and operational use are aligned.
TTAB, Enforcement, and Defense
Effectively manage trademark disputes before the USPTO and in court.
Opposition and cancellation proceedings before the TTAB concern the registration or validity of trademark rights. In addition, cease-and-desist letters, negotiations, or legal action may be necessary to enforce or defend those rights.
We evaluate legal standing, use, evidence, and business objectives with the relevant team. Trade dress and issues of unfair competition may also play a role, depending on the design and market presence.
Design Patents and Digital Designs
Properly protect product designs and user interfaces.
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 coordinate with U.S. patent practice to determine which drawings and variations are required and how design protection complements trademarks, trade dress, and other rights. Caleb Pollack can be brought on board for U.S. design patent matters.
Your Contacts
Matthias Schuhmacher and Raphael Tautz coordinate German-language client support. Jacqueline Zion oversees the U.S. trademark practice; Dor Cohen Zedek brings international experience in trademark 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 U.S. Trademarks Practice Group
U.S. 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 conflicts with existing marks. The scope and evaluation must be tailored to the marks, goods, services, and intended use.
It contains the USPTO's objections or requirements regarding the trademark application. Reasons may include, among other things, formal issues, the description, likelihood of confusion, or evidence of use.
Among other things, the Trademark Trial and Appeal Board rules on oppositions to applications and requests to cancel existing registrations. It generally addresses registrability issues, not necessarily all infringement matters.
A design patent can protect the decorative design of a functional object. The scope of protection and suitability depend on the submitted illustrations and the specific design.
Depending on their design, certain visual elements of digital interfaces may be eligible for design protection. In addition, issues related to trademarks, copyrights, or trade dress may be relevant.
Additional Information
How to Obtain Trademark Protection in the US
What is a design patent?
Intellectual Property
Consulting on trademarks, designs, and other intellectual property rights.
U.S. Trademark Practice
Pearl Cohen's U.S. trademark practice.
Trademarks & Designs
International consulting on trademarks and designs.
German 
English (United States) 
English (UK)