A registered trademark is a must for any IT project nowadays. Without it, one sunny day could become not as nice as you may be banned from using your brand name and domain you have invested a lot in. From that moment, the mysterious stranger will get it and will develop its project, which would make the world a better place, using your intangible assets. 

A practice of “knocking out” apps from online stores using trademarks is gaining momentum. Domain arbitrations instruct registrars to re-assign domains to new owners, and companies are left with nothing. Whether or not to register a trademark for IT business is not a subject for thought, but a question “why haven’t I applied yet?”

The trademark registration for the IT business is one of the most important components of branding strategy and product protection.

Let’s discuss some examples.

Case No. 1. The nutritional application got first million subscribers but was “knocked out” or banned from the store following a complaint by its competitor with a very similar name, which registered a trademark in the USA.

Case No. 2. As part of the international arbitration on the UDRP, a complaint was filed against a content creation services site by its competitor with a practically identical name, which has just registered a trademark and immediately rushed into battle. At the same time, the defendant’s company has its own trademarks in several jurisdictions and is already known on the market. The company has something to defend itself with.

Sometimes it happens that as part of the trademark registration process, an examining registrar issues an office action and points on some issues to be overcome to proceed with registration (e.g. additional explanations/amendments to the application are needed). After the response is sent and appropriate amendments are done, the trademark will be registered successfully. It is also a possible situation when oppositions to trademark registration are filed by competitors who believe that its registration will lead to a violation of their rights. In this case, a competent legal position set out in the relevant procedural document can also help.

Our services

Filing an application

for trademark registration

  • Class and goods/services selection, consulting on the chances of successful registration
  • Submission of an application for trademark registration in the USA, EU, UK, Canada, Ukraine, and Australia (the choice is yours :))

Fixed price + official fees

Consulting and preparation

of procedural documents on trademarks registration

  • Help with overcoming office action
  • Legal assistance at trademark sale/transfer transaction
  • Brand Consulting
  • Submission of oppositions for registration of trademarks

110 USD / hour

Legal support

of trademark disputes

  • Legal assistance in domain disputes in national courts and arbitration
  • Trademark Conflict Consulting
  • Legal assistance at the pre-trial / trial stage in trademark conflicts

Negotiable

Trademark registration experts

Kateryna Namaka
IT / IP lawyer

Kateryna Petrenko
IT lawyer

Andriy Zakaliuk

Senior IT lawyer

Our expertise

We have registered many trademarks for the IT industry in the US, EU, and other jurisdictions.
We “beat off” applications from unscrupulous competitors and won domain arbitration.
We know the specifics of registration and protection of trademarks specifically for the IT business.
We will be happy to assist you!

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