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THIS IS A SMALL BUSINESS SOURCES SOUGHT NOTICE. THIS IS NOT A SOLICITATION AND DOES NOT ASSUME THE GOVERNMENT WILL AWARD A CONTRACT IN THE NEAR FUTURE. THIS NOTICE IS ONLY FOR MARKET RESEARCH PURPOSES.

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

PURPOSE

This requirement is for trademark-related services that may be required by 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. Unless directed to do so by NIH-OGC, the contractor shall not provide these services directly to any other component of the NIH or any other agency or organization on whose behalf the NIH-OGC is working.

BACKGROUND

In October 2008, NIH-OGC assumed responsibility for providing trademark services to all of the HHS operational divisions. NIH-OGC provides a variety of trademark services, including; trademark clearance and counseling; filing and prosecution of trademark applications with the U.S. Patent and Trademark Office; international trademark procurement, prosecution, and enforcement; brand management and counseling on brand protection and enforcement strategies; domestic and international trademark licensing; and pre-litigation counseling and dispute resolution. Some of this work will be assigned to the contractor.

WORKLOAD

Work Assignment

After considering the individual requirements, the work will be assigned through the issuance of a Task Order by NIH-OGC. No work may be undertaken by the contractor without the receipt of a completed Task Order form that has been signed by the NIH-OGC Task Ordering Official and approved for funding as signified by the assignment of an NIH procurement order number. In the event that a contractor cannot accept work due either to time and/or resource constraints or a professional conflict of interest, the contractor will timely notify NIH-OGC.

Conflict of Interest

Since contractors who submit proposals may also be involved in representing clients in the private sector on trademark matters, the Government anticipates that there may be potential for a professional conflict of interest. Accordingly, all contractors are required to prepare and submit Conflict of Interest Plans and Policies as part of their proposals. These plans are considered to be part of the contract.

However, because the basic purpose of the contract is to handle work as deemed appropriate by the NIH-OGC, it is imperative that the contractor generally be able to perform the work assigned to it under the contract.

Following award of the contract, the contractor will be required to certify on each Task Order that no conflict of interest exists regarding the work requirement.

The Government is not obligated to issue an order on a contract if the Government believes that the contractor may have a professional conflict of interest, and the contractor may decline to accept any order based on a professional conflict of interest. Should any questions be raised as to whether or not a situation is considered to be a conflict, the Contracting Officer Representative (COR) shall make the final determination.

DESCRIPTION OF SERVICES

The following trademark-related services shall be required:

Search Services

a. Domestic and international trademark searching and clearance of word marks and design marks.

b. Trademark infringement and validity searches of word marks and design marks.

Trademark Prosecution Services

The contractor shall perform all necessary and appropriate services in connection with the preparation and filing of trademark 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.”

The contract shall perform other prosecution-related work including response to office actions, appeals of refusals, preparation and filing of letters of protest and petitions.

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 trademark registrations, but may delegate this to the contractor as NIH-OGC deems necessary.

c. Sending electronic 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. Mailing copies of documents filed with the USPTO or a foreign trademark office 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.

e. Mailing copies of official papers and attachments, if any, 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 specified. An analysis of such official correspondence is not required. If said official papers and any attachments are only issued in electronic form by the USPTO or foreign trademark office, then contractor shall send electronic copies accordingly.

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.

g. Timely reporting of status updates, filings, actions taken, and communications from the USPTO, foreign trademark/ IP offices, and WIPO.

Oppositions and Cancellations

The contractor shall, at the direction of NIH-OGC, file oppositions and cancellations (or file extensions of time for filing 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.

The contractor shall, upon request, work with NIH-OGC on negotiating consent and other settlement agreements.

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.

Licensing

The contractor shall, upon request, provide counseling services to NIH-OGC about domestic and international licensing matters. The field of use of the license may vary.

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 and Border Protection (CBP), including the recordation of trademarks with CBP, brand monitoring, and preparation and submission of take-down notices to domestic and international e-platforms. Also, the contractor, through an appropriate foreign associate, shall represent NIH-OGC in anti-counterfeiting matters outside of the United States.

Ancillary Trademark Services and Other Work

a. Obtaining copies of trademark records, file histories, assignment records, as requested.

b. Obtaining signatures of designated authorities on legal papers and deliver to the USPTO and/or foreign offices, under very tight time constraints.

c. Routine matters such as filing applications to register works or filing recordations of assignments at the U.S. Copyright Office, or a copyright office located outside of the United States.

d. Provide weekly trademark watch service to identify any conflicting third party marks filed with the USPTO.

e. Provide service or software for monitoring the status of third party trademark applications.

f. Prepare and provide detailed status charts of domestic and international trademark application and registration matters.

Infringement

a. Evaluate complex trademark law matters, particularly with respect to questions of priority, dilution, infringement, and false association.

b. Prepare cease and desist letters.

c. Provide litigation-related support and services.

d. Provide a service to monitor infringing uses by individuals and entities, including the monitoring of major vendors and e-platforms, both national and international, e.g., Amazon, eBay, and Alibaba.

e. Work with requisite foreign associate on foreign infringement and enforcement matters.

SPECIFIC INSTRUCTIONS

Study and Evaluation

For Task Orders specifying the study and evaluation of trademarks or other materials, the contractor shall perform the study and evaluation and shall submit a report or legal opinion, as requested, to the NIH-OGC Task Ordering Official.

Deadlines

The contractor shall be responsible for timely handling and filing of submissions to the USPTO and other trademark authorities and must adequately determine and notify the NIH-OGC Task Ordering Official of relevant deadlines.

In the event of failure by the contractor to perform within established timeframes for filing and it is determined by the Contracting Officer (a contractual matter that is concurred by the Contracting Officer Representative (COR)) to have been due to a delay, a lack of action, or inappropriate action by the contractor, the contractor agrees that it and not the NIH-OGC shall be liable for any fees, expenses related to professional services, and other additional costs to revive or otherwise extend the period for response. Fees may include, for example, extension of time fees not previously authorized by NIH-OGC. Such failures may be considered by NIH-OGC in determinations regarding exercise of any option year under the contracts and as part of any past performance evaluation. Repeated failures may be considered grounds for termination of the contract.

Directions:

1. Firms responding should ensure that their firms have a robust and strong trademark staff that is talented, highly experienced, and has a proven record of litigating cases before the Trademark Trial and Appeal Board (TTAB) from the pleading stage, through trial, and the completion of the proceedings.


2. Firms must demonstrate the ability and expertise in handling a multitude of cease and desist matters, including take-downs of infringing matters from domestic and international e-platforms.


3. Firms must show man-power and support staff capability to handle projects with short turnaround time and handle simultaneous oppositions and cancellations before the TTAB.


4. Firms must demonstrate that it has a solid network of law firms in many countries around the globe that can represent NIH and other agencies of HHS under their supervision, in foreign trademark matters.


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, mailing address, DUNS, SAM Unique ID number and NAICS.


2. Company point of contact (name, title, email and telephone number).


3. Socioeconomic Classification (e.g. HubZone, 8(a), small business etc).


4. 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. Also, detail the firm’s subcontracting procedure including potential subcontractors in the Capability Statement. The intended procurement will be classified under NAICS Code 541110, size standard $11.0 million.

This market survey is being conducted through the SAM.gov 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: December 12, 2022, 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. NO pricing information should be sent with your capability statement.

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).

Point of Contact: O. Joy Ajao, Office of Logistics and Acquisition Operations (OLAO), 6011 Executive Blvd., Room 625C, Bethesda, Maryland 20892-7633. Email address: ajaooj@mail.nih.gov

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