TRADEMARK LAW AND DISTINCTIVE SIGNS (DOMAIN NAME, COMMERCIAL NAME, LAST NAME)

ONE STOP FOR CLEARANCE, PROSECUTION, ENFORCEMENT & LITIGATION

GOMIS & LACKER helps its clients to choose and to secure rights on their distinctive signs and to define their filing strategy and enforcement policy in regard to trademarks and domain names. Protecting efficiently these assets give a competitive advantage and is a tool to secure businesses.

GOMIS & LACKER handles trademark prosecution, clearance (prior right search), registrability, and due diligence as well as the global management of trademarks and designs portfolio.

If litigation is required, GOMIS & LACKER assists and represents its client before the French PTO (INPI) as well the Community trademark Office (OHIM) but also before the French jurisdictions (District Court, Commercial court, Court of Appeals) as well in alternative dispute resolution (ADR) procedure (such as UDRP procedure or mediation)

CLEARANCE AND PROSECUTION OF TRADEMARK, DESIGNS AND MODELS:
  • – Management of trademark portfolio (French trademarks, Community trademarks, International trademarks as well as foreign trademarks through local counsels)
  • – Strategic counsel and trademark optimization (priority, seniority, conversion…)
  • – Clearance and trademark searches
  • – French trademark filing at the French PTO (INPI), Community trademark filing (OHIM), and international filing (WIPO) and prosecution (responses to Office Actions … )
  • – Recordal of trademark assignment, fusion, change of name at the French PTO and at the Community trademark Office as well as license, limitation, pledge and lien.
  • – Due diligence of intellectual property assets
ENFORCEMENT OF TRADEMARKS, DESIGNS, MODELS, PATENTS AND DOMAIN NAMES:
  • – Enforcement (Cease and desist, negotiation, drafting of settlement agreements)
  • – Litigation before all French jurisdictions (including urgent procedure) District Court, Commercial court, Court of Appeals
  • – Enforcement of famous trademarks against dilution and generic use
  • – Cybersquatting (identity theft, typosquatting …)
  • –  Expertise, ex parte proceedings, motions

PROCEDURES BEFORE THE FRENCH PTO (INPI) AND COMMUNITY TRADEMARK OFFICE (OHIM):
  • – Procedures before the French PTO (INPI) and Community Trademark Office (OHIM)
  • – Opposition before the French PTO
  • – Opposition before the CTO – Community Trademark Office (Opposition Division and Board of Appeal)
  • – Cancellation actions before OHIM
CONTRACTS ABOUT TRADEMARKS AND OTHER INTELLECTUAL PROPERTY ASSETS:
  • – Trademark Assignment
  • – Trademark license
  • – Negotiation and purchasing of trademarks and domain names
  • – Coexistence agreement