Oblon Spivak’s trademark attorneys handle all trademark-related matters, from prosecuting applications to full litigation.
Screening, clearance and registrations
In counselling clients before the adoption of new marks, we offer a variety of screening and clearance search options. In addition to the widely available trademark databases, our geographic proximity to the US Patent and Trademark Office (USPTO) allows face-to-face interviews with examiners and their supervisors, which greatly contributes to our success in prosecuting our clients’ applications. Securing registrations for marks in the United States and throughout the world is an important aspect of our trademark practice.
Enforcement, protection and suppression
Oblon Spivak has an extensive litigation practice for the enforcement and protection of trademark rights and the suppression of acts of unfair competition. Drawing on both the depth of our experience before the Trademark Trial and Appeal Board (TTAB) and our proximity to the TTAB’s offices, our attorneys are active and respected representatives in a full range of opposition and cancellation proceedings. Our international practice enables us to protect and enforce the trademark rights of our clients wherever infringement occurs.
Our attorneys maintain close ties to a worldwide network of trademark practitioners to facilitate international registration for our US clients through our active participation in the International Trademark Association, the European Communities Trademark Practitioners Association and the International Association for the Protection of Intellectual Property. We also regularly assist our international clients with Madrid System filings – the international system for facilitating the registration of trademarks in multiple jurisdictions.
Jeffrey H Kaufman
Jeffrey H Kaufman chairs the firm's trademark and copyright practice group and is also a member of the management committee. He practises primarily in the areas of trademark, copyright and unfair competition law, with an emphasis on counselling and assisting clients in protecting their intellectual property and combating counterfeits.
A former trademark attorney with the USPTO, Mr Kaufman applies his insider’s perspective and deep knowledge of trademark practice when representing clients before the TTAB and when asserting their rights in federal district courts.
Mr Kaufman advises clients on trademark and copyright issues, various forms of IP protection and the preservation of trade secrets. A respected authority on internet law, he possesses extensive experience in domain name and internetrelated IP issues. Mr Kaufman has been involved in the development of laws relating to domain name issues and trademarks, serving as a member of INTA’s special taskforce on internet domain names. He chaired the sub-committee that worked with the US government, and participated in the creation of the Internet Corporation for Assigned Names and Numbers. Mr Kaufman served as the first chair of the American Intellectual Property Law Association Committee on Anti-counterfeiting and Anti-piracy.
Mr Kaufman is a arbitrator for the World Intellectual Property Organisation for domain name disputes He has been named one of the world’s leading trademark law practitioners. He has served on the editorial board of INTA’s Trademark Reporter.
Roberta S Bren
Roberta (Robin) Bren co-chairs the copyright practice group and practises in the firm's trademark and litigation practice groups. With extensive legal experience and a strong business perspective, she counsels clients on the full range of trademark and copyright law issues and advises on trade dress, unfair competition, false advertising, website content protection, plus name selection and protection. Additionally, Ms Bren helps foreign and domestic clients to adopt, clear and protect their trademarks and defend them against infringement. Large multinational companies regularly rely on her to manage and protect worldwide trademark portfolios consisting of hundreds of marks. She also actively protects clients’ marks in oppositions and cancellation actions, as well as in the courts.
A former examining attorney at the USPTO, Ms Bren brings a unique perspective and is known for considering not only legal principles, but also business realities and marketing objectives, resulting in costeffective, practical advice. Ms Bren’s clients range from healthcare providers and medical device manufacturers to leading electrical, wiring and connector and lighting companies.
Ms Bren lectures extensively on negotiation and settlement approaches and on the adoption and protection of marks, including search strategies, licensing, prosecution and ex parte and inter partes proceedings before the USPTO. She has taught trademark law at the George Mason University Law School and has lectured at the George Washington University Law School.
1940 Duke Street
Roberta (Robin) S Bren, Partner, co-chair, copyright practice group
Jeffrey H Kaufman, Partner, chair, trademark and copyright practice group