Analysis and investigations

Before applying for a trademark or company name registration and starting to use a name, it is important to investigate whether there are already trademarks or company names that may prevent the registration and use of the intended name. It is also essential to check whether the intended name is available as a domain name under relevant top-level domains. It is also useful to be aware of competitors’ trademark rights.

Preliminary investigation

Identifies applied for or registered trademarks that are identical or similar to the trademark under investigation and that may prevent registration and use of the trademark. In the case of a new company name, the availability of the name as a company name is investigated. Identifies whether the intended trademark or company name is available as a domain name under relevant top-level domains.

Competitor surveillance

Continuous surveillance of named competitors to keep up to date with their new trademark applications and thus market activities.

Trademark applications and domain name registrations

One of the key services offered is assistance with preparing and submitting trademark applications and pursuing them towards registration, as well as registering the associated domain names. Bergenstråhle offers various services in relation with trademark and domain name registration:

Strategic advice

Advice on which trademarks should be registered and in what way, as well as how the goods and/or services should be classified to enable the best possible legal protection and business value. Advice on the top-level domains under which the trademark should be registered as a domain name.

Drafting the trademark application

Based on the documentation and discussion with you, a list of goods and services is prepared.

Application management (prosecution)

Management of the application process, including submitting of the trademark application and correspondence with registration authorities. Responding to injunctions.

Domain name registration

Registration of domain names worldwide.

Trademark applications internationally

When doing business with other countries, it is important to protect the trademark internationally. Bergenstråhle assists with:

International strategies

Advice on how to best protect your trademarks internationally, including EU trademark strategies, international registration under the Madrid Protocol and national applications, e.g. in Europe, North America and Asia.

Trademark management, domain name management and portfolio management

Once a trademark and domain name has been registered, it is important to manage it effectively. Bergenstråhle offers services such as:

Portfolio management

Advice and assistance in structuring and optimizing your trademark and domain name portfolio to maximize business value.

Contact with registration authorities/registrars

Assistance in registering transfers and name changes with registration authorities/registrars.

Renewals

Management of renewal and payment of fees to keep the trademark registration or domain name registration in force.

Surveillance of trademarks and domain names

As a trademark owner, it is your responsibility to ensure that your trademark is not infringed. Through surveillance, you can ensure that the investment and exclusive rights in your trademark are not infringed by third parties over time. Bergenstråhle offers various forms of surveillance:

Trademark surveillance

You will receive ongoing information about new trademark applications that could be confused with your trademark. We can then advise and assist with measures to be taken in relation to the trademark that has emerged.

Domain name surveillance

You will receive ongoing information about new domain name registrations that include your trademark. We can then advise and assist with actions to be taken in relation to the domain name that has emerged.

Online brand surveillance

You will receive ongoing information about your trademark’s presence on marketplaces, social media and websites. We can then advise and assist with measures to be taken in relation to the trademark use that has emerged.

Trademark and domain name litigations and defense

When trademark or domain name litigations arise, Bergenstråhle offers comprehensive support, including:

Oppositions

Advice and assistance in defending your trademark in the event of an opposition (i.e. when an opposing party challenges your approved trademark application). Also assist if you want to oppose a competitor’s approved trademark application.

Infringement analysis/warning letters

Assessing whether another company’s trademark infringes your trademark registration. Drafting and handling warning letters.

Cancellation

Defending your trademark when an opponent challenges your registration and applying for cancellation on your behalf against another’s registered trademark.

Customs surveillance/intervention

Assists prevent pirated goods from entering the market. By applying for customs action, companies can actively protect their intellectual property rights such as trademarks.

Court litigation

Represents you in court, e.g. if someone infringes your trademark or if you are accused of infringing another party’s trademark.

Litigation resolution

Legal support and representation in trademark litigations at registration authorities, courts and in alternative domain name litigation resolution procedures such as UDRP and ATF. Negotiation of e.g. coexistence agreements,

Takedown

Assists you with a takedown, i.e. taking down websites with e.g. trademark infringement.

Advice related to trademarks and domain names

To get the most out of trademark rights and domain name registrations, Bergenstråhle offers advice on:

Identification of trademark rights and domain names, so-called Asset Insight

Identification and review of all your company’s intellectual property rights, e.g. trademarks and domain names.

Intellectual property strategy (IP strategy)

Development of IP strategy, including trademark strategy, that is in line with the company’s overall business objectives and business plan and that the domain strategy is in line with the overall trademark strategy.

Due Diligence

Assistance with handling trademark-related issues during due diligence, e.g. when raising capital

Valuation of intellectual property rights

Assistance with valuation of trademark rights and domain names

Training in IP and trademarks and domain names

Offers training/workshops etc to increase knowledge of IP and trademarks and domain names in companies. These trainings/workshops are customized to your needs.

Contract services related to trademarks and domain names

Assignment agreements

Management of assignment agreements.

License and royalty agreements

To ensure the best commercial arrangements.

Coexistence agreements

To regulate coexistence between company trademarks.

Domain name technology and security

DNS

Management of zones, name servers, domain name redirection.

DNSSEC, Domain Lock & Registry Lock

Enabled for increased security.

SSL

Management of SSL certificates for secure website.

You are welcome to contact one of our experts.

Camilla Hamrin
Trademark Manager, Attorney at Law
camilla.hamrin@bergenstrahle.se
+46 70 595 25 74