SOURCES SOUGHT
R -- NIH Trademark Legal Services
- Notice Date
- 10/16/2017
- Notice Type
- Sources Sought
- NAICS
- #541110
— Offices of Lawyers
- Contracting Office
- Department of Health and Human Services, National Institutes of Health, Office of Research Facilities, 9000 Rockville Pike, Bldg. 13, Rm. 2E47, MSC 5738, Bethesda, Maryland, 20892-5738, United States
- ZIP Code
- 20892-5738
- Solicitation Number
- HHS-NIH-OD-OLAO-SS-17-009
- Archive Date
- 11/14/2017
- Point of Contact
- Oghogho Joy Ajao, Phone: 3014435655
- E-Mail Address
-
ajaooj@mail.nih.gov
(ajaooj@mail.nih.gov)
- Small Business Set-Aside
- N/A
- Description
- This is a SMALL BUSINESS SOURCES SOUGHT NOTICE. The National Institutes of Health is doing a market survey to determine the availability and potential technical capability of ALL small business, 8(a), veteran-owned small business, service-disabled veteran owned small business, HUBZone small business, small disadvantaged business, and/or women owned small business to provide services to the NIH Branch of the Office of General Counsel ("NIH-OGC") in its role as the Department's lead provider of intellectual property legal counseling. NIH-OGC provides trademark searching and counseling; filing and prosecution of trademark applications with the U.S. Patent and Trademark Office; international trademark procurement and prosecution; brand management and counseling; domestic and international trademark licensing; and pre-litigation counseling and dispute resolution. Some of this work will be assigned to the Contractor. After considering the individual requirements, the work will be assigned through the issuance of a Task Order by NIH-OGC. Trademark search services, including domestic and international trademark searching and clearance and trademark infringement and validity searches, will be required. The contractor will be required to maintain a current case docket to ensure that actions are taken and fees paid on a timely basis. Generally, NIH-OGC will be responsible for the payment of all maintenance fees on U.S. and foreign trademarks and applications. The work will often require very quick turn-around times, sometimes as short as one or two days, and coverage every business day to make sure that Trademark Office deadlines can always be complied with. A strong and deeply staffed corporate infrastructure will be necessary to make sure that there are sufficient personnel to satisfy the expected episodic need for filing labor intensive oppositions and other administrative dispute remedies. It is possible that we could have two or three oppositions on-going simultaneously, and we would expect the contractor to be able to handle that volume of work. DRAFT STATEMENT OF WORK The following trademark-related services shall be required: 1.Search Services a.Domestic and international trademark searching and clearance. b.Trademark infringement and validity searches. 2.Trademark Prosecution Services The contractor shall perform all necessary and appropriate services in connection with the filing of trademark registration applications. All foreign trademark matters shall be handled by the contractor, or foreign associates under the direction of the contractor, in accordance with the applicable statues, regulations, and case law of the particular foreign jurisdiction. The trademark prosecution services to be provided to NIH-OGC are generally to be considered equivalent to those of "In-House Counsel" and are not to be considered merely equivalent to "Overflow Work." All trademark prosecution services will be conducted on a task order basis. The NIH-OGC Task Ordering Official will originate a Task Order Request for Quote that will describe the specific task and scope of work to be performed. See the "Task Orders" section, below, for additional details relating to the task ordering procedures. Some specific examples of requirements related to trademark prosecution services or for particular tasks that will not be enumerated on a task order are: a.Maintain a current case docket to ensure that actions are taken and fees paid on a timely basis. b.Generally, NIH-OGC will be responsible for the payment of all maintenance fees on U.S. and foreign trademarks and applications. c.Mailing copies of all papers filed in the U.S. or foreign trademark office (deliverables) to NIH-OGC and other recipients that are identified in the Task Order, or have been otherwise identified in writing by the NIH-OGC Task Ordering Official, within five (5) business days of the filing. d.When documents are filed with the USPTO or a foreign trademark office, a copy of the document will be forwarded to NIH-OGC. e.Mailing copies of official papers and attachments from the USPTO, other authorities, and foreign associate counsel (deliverables) within five (5) business days of their receipt to the NIH-OGC and other parties as identified in the "DELIVERY OF MATERIAL" section. An analysis of such official correspondence is not required. f.Preparing drafts of documents for submission to the USPTO and counterpart foreign authorities sufficiently prior to relevant response time for review and to provide substantive comments in advance of such deadlines and before extension fees might need to be paid; a reasonable time is dependent upon the facts of the circumstances of particular cases, however, the Government believes a minimum of ten (10) working days will be required for review and preparation of comments. 3.Oppositions and Cancellations The contractor shall, at the direction of NIH-OGC, file oppositions and cancellations with the Trademark Trial and Appeal Board (TTAB), and take necessary actions to represent NIH-OGC. The contractor shall work closely with the attorneys and staff at NIH-OGC throughout opposition and cancellation proceedings. 4.Domain Name Dispute Resolution Actions The contractor shall, at the direction of NIH-OGC, file UDRP, URS, or other domain name dispute resolution actions with entities offering domain name dispute resolution outside of the federal or state court systems, and take necessary actions to represent NIH-OGC. The contractor shall work closely with the attorneys and staff at NIH-OGC throughout the proceedings. 5.Licensing The contractor shall, upon request, provide counseling services to NIH-OGC about select licensing domestic and international licensing matters. The field of use of the license may vary. 6.Anti-Counterfeiting The contractor shall, upon request, consult with NIH-OGC on U.S. anti-counterfeiting matters, which includes the development of anti-counterfeiting strategies. The contractor may be asked to assist NIH-OGC with anti-counterfeiting matters before the U.S. Customs Service. Also, the contractor, through an appropriate foreign associate, shall represent NIH-OGC in anti-counterfeiting matters outside of the United States. 7.Ancillary Trademark Services and Other Work a.Obtaining copies of trademarks, file histories, assignment records, as requested; and b.Obtaining signatures of designated authorities on legal papers and deliver to the USPTO and/or foreign offices, under very tight time constraints; and c.Routine matters such as filing applications to register works or filing recordation of assignments at the U.S. Copyright Office, or a copyright office located outside of the United States. 8.Infringement a.Evaluate complex trademark law matters, particularly with respect to questions of priority, dilution, and infringement. b.Provide litigation-related support and services. Directions: 1.Firms responding should ensure that their firms have a strong trademark staff that are talented and have substantial experience and a proven record of litigating cases before the Trademark Trial and Appeal Board (TTAB) from the litigation of the case, through trial, and the completion of the process. 2.Firms must show man power and support staff capability to handle quick turn arounds, handle simultaneous oppositions and cancellations before the U.S. Patent and Trademark Office (USPTO) and Trademark Trial and Appeal Board (TTAB). 3.Firms must demonstrate that it has a solid network of law firms in many countries around the globe that can represent NIH, under their supervision in foreign trademark matters. 4.Firms must list the names of the proposed attorneys that they propose to work on this requirement. 5.Firms responding to this market survey should respond to all of the requirements above demonstrating capability. Responses should be concise with only the pertinent information requested, not to exceed 15 single-spaced pages. If you believe that your company has existing qualified personnel, relevant past performance experience, and the technical capability to perform the type of work described above, please submit the following information: 1.Company name and mailing address 2.Company point of contact 3.Capabilities statement describing the ability to perform the summarized scope of work along with past experience of a similar scope, size, complexity and relevance within the past 3 years. Provide the name of the project, contract number, value, and period of performance. If subcontracting or teaming is anticipated in order to meet the requirements, the prime contractor must demonstrate the ability to deliver the technical capabilities and maintain adequate labor, management and financial control of the project. The intended procurement will be classified under NAICS Code 541110, size standard $7.0 million. This market survey is being conducted through the FedBizOpps to reach the widest possible audience and to gather current market information. ALL INFORMATION SUBMITTED IN RESPONSE TO THIS ANNOUNCEMENT MUST BE RECEIVED ON OR BEFORE THE CLOSING DATE OF: October 30, 2017, at 11 a.m. Eastern Time. Emailed responses are the ONLY authorized responses (either in Microsoft or PDF), but it is the responsibility of the vendor to ensure that the email is received by the government. Responses by Facsimile (FAX) and hard copies WILL NOT be accepted. All responses and/or comments must be in writing and may be emailed to O. Joy Ajao at ajaooj@mail.nih.gov. Disclaimer and Important Notes: This notice does not obligate the Government to award a contract or otherwise pay for the information provided in response. The Government reserves the right to use information provided by respondents for any purpose deemed necessary and legally appropriate. Any organization responding to this notice should ensure that its response is complete and sufficiently detailed to allow the Government to determine the organization's qualifications to perform the work. Respondents are advised that the Government is under no obligation to acknowledge receipt of the information received or provide feedback to respondents with respect to any information submitted. After a review of the responses received, a pre-solicitation synopsis and solicitation may be published in Federal Business Opportunities. However, responses to this notice will not be considered adequate responses to a solicitation. Confidentiality: No proprietary, classified, confidential, or sensitive information should be included in your response. The Government reserves the right to use any non-proprietary technical information in any resultant solicitation(s).
- Web Link
-
FBO.gov Permalink
(https://www.fbo.gov/spg/HHS/NIH/OLAO/HHS-NIH-OD-OLAO-SS-17-009/listing.html)
- Place of Performance
- Address: 9000 Rockville Pike, Bethesda, Maryland, 20892, United States
- Zip Code: 20892
- Zip Code: 20892
- Record
- SN04713931-W 20171018/171016230638-efaeeb6d0948f22442e511ca7cb9c2ba (fbodaily.com)
- Source
-
FedBizOpps Link to This Notice
(may not be valid after Archive Date)
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