Trademarks and service marks
We counsel clients regarding all aspects of selecting, protecting, licensing, and otherwise promoting and enforcing their valuable brands and related trademark and service marks.
Our attorneys regularly counsel established and start-up companies regarding:
- Trademark and service mark selection: We assist our clients in finding distinctive and protectable marks.
- Mark availability searches and opinions: We help clients avoid risks of conflict with established marks and in selecting registrable marks to which our clients can claim and enforce exclusive rights.
- Trade dress and non-traditional marks: We assist clients in evaluating, selecting, registering and protecting distinctive and valuable trade dress as well as non-traditional marks such as colors, sounds and scents.
- U.S. and international mark applications and registrations: We work with clients to maximize the scope of protection of their marks through an established, streamlined, efficient process from mark selection to registration, including drawing upon our many global relationships in expanding the geographic reach of mark rights.
- Representing clients in actions before the Trademark Trial and Appeal Board: We appeal refusals of registration and bring and defend against opposition and cancellation proceedings.
- Filing and defending opposition proceedings: We protect clients by preventing registration of similar marks and crafting legal arguments to achieve successful registration of opposed marks.
- Enforcement of trademark rights: We help maintain the strength of client marks through enforcement against similar marks. Though we avoid litigation when possible, we vigorously represent clients when litigation is necessary.
- Domain name acquisition and portfolio management: We assist with purchase offers, negotiations and maintenance strategies and have direct involvement in the domain registration transfer process.
- Domain name infringement resolution: We provide representation in Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceedings, litigation of Anticybersquatting Consumer Protection Act (ACPA) claims and litigation of trademark infringement claims in domain name context.
- Brand protection in social media and other online contexts: We enforce rights against misuse in social media, assist in establishing a social media presence, reserve desired links and user names in advance of social media launch and address deceptive or infringing use of search engine pay-for-placement results.
- Licensing and promotional tie-ins: We draft and negotiate licensing agreements for: expansion of brand; international licensing/franchising agreements for domestic, regional or global expansion; celebrity endorsements for exposure and promotion of mark; event sponsorship and brand presence; and athletic team, venue, or event sponsorships and related promotions.
- Transactional issues: We provide due diligence in evaluating trademark rights and oversee proper recordation of assignments or transfers of valuable mark, domain and online assets, as well as security interest and security interest release recordings.
- Generic top level domains (gTLDs): As the Internet rapidly expands beyond the familiar .com, .org and .edu top level domain names, we help businesses protect their trade and service marks by creating strategies and processes for addressing the roll out of new gTLDs, and developing protection plans that guide businesses’ efforts to grow and safeguard their valuable brands.