Trademarks

Protecting a company’s trade identity can mean more than asserting rights in traditional trademarks and service marks. Today protection rights can extend to a broad array of trade identities including product configurations, retail store lay-outs, color, smell, and sound. Trademark counseling is important not just to expand the parameters of a company’s own rights, but to help avoid infringement of other parties’ expanding claims as well.

Members of the group advise clients regarding the domestic and international acquisition and protection of trade identity rights to foster marketing efforts in all types of media; prepare and prosecute applications to register all types of names and marks; represent clients in trade identity litigation, ex parte, and inter partes proceedings before the U.S. Patent and Trademark Office and the U.S. Trademark Trial and Appeal Board, and Uniform Domain Name Dispute Resolution Policy proceedings. We also negotiate and draft trademark assignments and licenses, and provide proper trade identity use training to avoid the loss of trade identity rights. 

• Conducted an international trademark audit for a large media conglomerate and its 80 subsidiaries, involving approximately 600 trademarks. The audit was completed in less than 18 hours of attorney time, and included a memorandum with specific recommendations on how to reduce the client's holdings with the least amount of impact on the client's rights. The audit also revealed that the client was paying to maintain registrations for a company that the client had spun off. 
• Successfully pursued trademark and anti-counterfeit claims against a variety of importers, suppliers and distributors of counterfeit products for a major electrical control and distribution equipment company, obtaining injunctions requiring defendants to recall the counterfeit products in jurisdictions throughout the U.S.
• Reviewed and analyzed all commercial communications from a large client for compliance with existing contracts, trademark, copyright, and advertising laws, FTC regulations, third party rights of publicity, hazardous materials statutes and regulations, laws governing the conduct of e-commerce, and website rules. Upon completion, we delivered an extensive report and accompanying exhibits, along with an executive summary, and presented our findings to the client's Board.