NEW YORK TRADEMARK LAWYER

Focused on the protection and development of your trademark portfolio

Trademark Law Knowledge You can Rely on

  • Thomas M. Wilentz is a published writer on intellectual property law.
  • Thomas M. Wilentz’ articles about intellectual property law have been published in Intellectual Property Magazine’s March 2011 and May 2011 issues.
  • Fox News has turned to Thomas M. Wilentz for commentary and interviews concerning trademark law.
  • Thomas M. Wilentz was quoted on the Fox News website at http://www.foxnews.com/politics/2011/05/25/navy-seals-fights-mickey-mouse-trademark/ in the May 25, 2011 article Navy Fights Mickey Mouse for Seals Trademark.
  • On May 26, 2011 Thomas M. Wilentz was interviewed on several Fox News Radio programs about Disney’s applications to register the SEAL TEAM 6 trademark. The interviews were conducted by the following radio stations:
    • WFLF Orlando, FL
    • KFAB Omaha, NE
    • WFLA Tampa, FL
    • WERC Birmingham, AL
    • WSYR Syracuse, NY
    • WIMA Lima, OH
    • KPAY Chico, CA
    • WSJK Champagne, IL

Thomas M. Wilentz is a graduate of Columbia Law School with honors (Harlan Fiske Stone Scholar). He is a member of the American Bar Association, the New York State Bar Association, the New York State Bar Association Intellectual Property Section, and a member in good standing of the bars of New York and New Jersey. Mr. Wilentz has assisted U.S. and international clients ranging from small companies to large multinational corporations in their applications for registration and other trademark matters.

After working for several years as an associate with a prestigious Park Avenue law firm in New York City, Mr. Wilentz decided to found his own boutique firm focusing on trademark law. Since opening his doors in 2003, Mr. Wilentz has handled hundreds of trademarks for a wide variety of clients.

The firm’s policy is that every client matter is of the utmost importance. All client matters receive the requisite attention to detail that has made Mr. Wilentz successful in advocating for his clients before the USPTO. The free initial consultation and office action review allows prospective clients to sample the caliber of the services offered by the firm at no risk, without any obligation.

Each client can expect to be contacted by Mr. Wilentz as part of his efforts to discover any information that will be helpful in obtaining a favorable resolution of the client’s matter. If your company engages Mr. Wilentz’ services, you can be sure that he will be personally committed to making every effort to achieve success in the resolution of your matter. You will get more than an attorney. You’ll get an attorney who cares about your company. That’s why the firm’s clients get excellent value –especially under the flat task-based rates.

Clients of the Firm Get:

  • Initial Consultation and review of office action is always free of charge.
  • Mr. Wilentz’ personal attention to their matters
  • Firm ideology of involvement that requires “going the extra mile”
  • Firm policy to return client phone calls and respond to emails immediately whenever possible
  • Cost-effective flat rates available

Representative Matters

Prior results do not guarantee a similar outcome

Won summary judgment in a trademark opposition proceeding at the Trademark Trial and Appeal Board in a precedent-setting case concerning the enforceability of rights under an international trademark treaty.  Franpovi, S.A. v. Rosalinda Wessin and Daniel Pena, 89 U.S.P.Q.2d 1637, 2009 WL 353299 (T.T.A.B. 2009)

Obtained settlements for clients whose applications were opposed at the Trademark Trial and Appeal Board, resulting in the withdrawal of the oppositions and the registration of the trademarks

Successfully defended client’s applications at the Trademark Trial and Appeal Board against Opposer’s motions for summary judgment on ground that a word in the mark is descriptive and should have been disclaimed

Successfully petitioned the Trademark Trial and Appeal Board for cancellation of trademark registration resulting in the cancellation of the registration

Successfully opposed applications in opposition proceedings at the Trademark Trial and Appeal Board resulting in the abandonment of the applications

Overcame likelihood of confusion refusals for marks used in connection with various goods and services, including: computer software, advertising services, telephone calling cards, prepared food items, camps, polyethylene plastic pressure pipe, dietary supplements, custom engraving services, online retail store services, jewelry.

Overcame merely descriptive refusals by arguing the mark was not descriptive and submitting proof of acquired distinctiveness for marks used in connection with various goods and services, including: building stone, books, consulting services, retail market analysis software, text scanning software

Overcame various other refusals including primarily geographically deceptively misdescriptive refusal; refusal on the grounds that the services identified in the application are not a “service” as contemplated by the Trademark Act; refusal on the grounds that the mark does not function as a trademark

Provided legal services to clients such as providing counseling and advice, conducting trademark clearance, preparing and filing trademark applications, and responding to USPTO office actions, in connection with various trademarks including those used in the following fields:

  • Advertising & Marketing services
  • Aerosol and air freshening dispensers
  • Architecture and interior design services
  • Automobile paint enhancement products
  • Candy
  • Clothing
  • Computer networking equipment
  • Computer software
  • Cookware
  • Counseling services
  • Dietary Supplements, vitamins
  • Educational services
  • Electrical Contracting Services
  • Entertainment services
  • Eyewear
  • Financial services
  • Fishing tackle
  • Foods
  • Freight services
  • Genetic products for scientific and research use
  • Healthcare services
  • Limousine services
  • Music production services
  • Online magazines
  • Perfumes
  • Plumbing
  • Polyethylene plastic pressure pipe
  • Radio Programming
  • Real estate development projects and construction services
  • Restaurants
  • Retail Store and online retail store services
  • Shoes
  • Soft drinks
  • Spa & Salon services
  • sporting equipment
  • Sweetener products
  • Telecommunication services
  • Telephone calling cards
  • Waterproofing
  • Windshield Wiper Blades

Successfully petitioned the Commissioner of Trademarks for reinstatement of a trademark application for which an express abandonment had been fraudulently filed by an unauthorized third party.

Successfully prosecuted trademark applications in a wide range of industries.

Represented clients in trademark applications in a wide range of industries, including: computers, software, computer networking hardware and software, foodstuffs, business consulting, advertising, finance, real estate, retail, online retail, coffee, clothing, jewelry, telecommunications, restaurants, storage, stone, plumbing, air fresheners, cookware, swim aids, landscaping, web hosting, web design, personal training and coaching, camps, hats, footwear, eyewear, greeting cards, newspapers, luggage, handbags, surgical instruments, nutritional supplements, janitorial services, electricity distribution, electronic components, home theater systems, entertainment, radio programming, automobile care products, optometry, aromatherapy, flooring, vegetable brokerage, music production, sound recording, shampoos and moisturizers, magazines, educational services, information technology consulting, exterior waterproofing, books, building and construction, hardware, adhesives, machine parts, sporting equipment, retirement planning, safety lights

Clients located throughout the United States, and in Australia, Canada, China, Denmark, Ecuador, Hong Kong, Malaysia, Singapore, South Africa, Sweden, Switzerland, the U.A.E. and the UK.

Mr. Wilentz practices before the United States Patent and Trademark Office in trademark matters and is admitted to practice before the courts of New York and New Jersey.

*Past results do not guarantee a similar outcome