US Trademark Paralegal Services

Black Hills IP trademark paralegals are highly trained and educated and able to support you throughout the trademark registration process.  After a registration issues, we offer support for renewal and other maintenance filings, portfolio transfers, and ownership changes.

Applications:

  • Intent to Use basis, Use in Commerce basis, International Priority basis 

Prosecution Matters:

  • Foreign filing reminders, and international filing cost estimates on request
  • Amendments/Responses to Official Actions, including analysis of objections and requirements for Responses, sending reminders as needed, drafting and ensuring timely filing of Responses
  • Management of Statement of Use and Extension Request deadlines, review of potential specimen materials, prepare documents and ensure timely filings

Post-registration Matters:

  • Renewals (§ 8,  9)
  • Declarations of Use & Incontestability (§ 8, 15)
  • Requests to Amend/Correct registrations (§ 7)

Oppositions/Contested Matters:

  • Notices of Opposition & Requests to Extend time to Oppose

Change of Ownership:

  • Prepare and record Assignments (single mark/multi-national portfolio of brands)
  • Obtain documents, and record Mergers and Name /Address changes
  • Recordation of Security Interests (and Releases)

Other services:

  • ”Knock-out” searches
  • Revocation/Powers of Attorney
  • Due diligence research
  • Chain-of-title review
  • Status watch on application of 3rd party/competitor
  • Management of docket for opposition matters

Our sister company Black Hills IP Renewals offers a low-cost Patent Annuity Management service.

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