Intellectual Property Audits

An intellectual property audit identifies your or your organization’s intellectual property assets, including but not limited to trademarks and service marks, copyrights, patents, and trade secrets, and recommends steps for protecting these assets and minimizing conflicts with intellectual property owned by third parties.

Trademark Clearance, Prosecution, Enforcement and Defense:

Trademark Clearance

Trademark clearance is the process of assessing the availability for use and registration of the trademarks and service marks you or your organization currently use or intend to use to identify particular products and services, respectively.  The clearance process begins with a search of various databases to identify similar marks that are being used, have been registered or for which registration is sought.

A trademark or service mark is unavailable for use or registration if the consuming public will confuse the mark with a mark a third party is already using, has registered or has applied to register for use on a similar product or in connection with a similar service. The test, as much art as science, is whether there is a likelihood the public will believe that the respective products or services originate from the same source or that the owner of the preexisting mark (the “senior user”) is affiliated with the junior user or has licensed or approved of the use.

Trademark Prosecution

Trademark prosecution is the process of applying to register your or your organization’s marks with the U.S. Patent and Trademark Office (“PTO”) and interacting with the PTO’s attorneys who evaluate whether the mark is available for federal registration.

Trademark Enforcement and Defense

Trademark enforcement is the process of demanding that a third party cease use of a mark that is the same or confusingly similar to a mark owned by you or your organization. Trademark defense is the process of responding to such demands directed to you or your organization.

Copyright Prosecution, Enforcement and Defense:

The process of prosecuting, enforcing and defending copyrights is similar to that involving trademarks, but copyright applications are filed with the U.S. Copyright Office.

Contract Drafting and Negotiation:

Mr. Cantwell represents both owners and users of intellectual property and has extensive experience drafting and negotiating transactional agreements, including software, trademark and technology licenses and confidentiality, consulting, publishing, security interest, technology escrow, and web site and hosting agreements.