Trademark

All-inclusive trademark practice involving both litigation and transactional work that is uniquely positioned to protect client brands around the globe.

We know trademarks. With a team of more than 25 lawyers, including Professor J. Thomas McCarthy, world-renowned author of the well-respected McCarthy on Trademarks and Unfair Competition, we are a one-stop practice for guarding valuable business assets. Our lawyers have deep experience as trademark prosecutors and litigators, and are highly skilled in advising clients on strategic trademark protection as well as defending their trademark rights when infringement issues arise.

Trademark Counseling

To help clients develop effective trademark protection strategies, we provide a full range of services, including:
  • Management of clients’ global trademark portfolios
  • Trademark clearance searching
  • Preparing, filing, prosecuting, and maintaining trademark applications and registrations
  • Negotiation of licensing and co-existence agreements
  • Representation in opposition and cancellation proceedings
Our clients come from a wide range of industries, including:
  • Food and beverage
  • Banking
  • Restaurants and entertainment
  • Investment management
  • Computer software and hardware
  • Hospitality
  • Telecommunications
  • Agriculture
  • Real estate development
  • Healthcare
  • Biotechnology
  • Pharmaceuticals
  • Apparel
  • Publishing
  • Retail services

To serve the trademark needs of multinational corporations, we work with a trusted network of global counsel to handle trademark filings and enforcement proceedings outside the United States. In order to deliver the best advice to all of our clients, our team works closely with transactional lawyers on trademark licenses, trademark due diligence for mergers and acquisitions, and various trademark issues in connection with the formation, operation, financing, and sale of businesses.

Trademark Litigation

As experienced litigators, our lawyers routinely secure both injunctions and defensive victories for clients. We represent clients in all types of trademark-related claims under both federal and state laws, including:

  • Trademark and trade name infringement
  • Trade dress infringement
  • Trademark dilution
  • Unfair competition
  • False advertising
  • Cybersquatting

In addition, our team has significant litigation experience with complex counterfeiting and gray market cases, and has obtained injunctive relief for our clients in in the U.S. and other countries. Clients regularly turn to us for advice on important business decisions relating to product distribution and packaging issues, and we help develop global enforcement and anti-counterfeiting strategies to aid in the worldwide protection of clients’ trademarks and copyrights. We also represent clients in disputes involving infringing Internet domain names and cybersquatting through ICANN’s arbitration procedures and U.S. Anti-Cybersquatting Consumer Protection Act actions.

Representative Experience

  • We represented The Museum of Modern Art in a trademark infringement and dilution action in the Southern District of New York, and obtained a preliminary injunction enjoining use of the mark MOMACHA for an art café.
  • We represented Ubiquiti Networks, Inc. in a trademark, trade dress, and copyright infringement action involving counterfeit wireless networking devices in the Northern District of California, and obtained both preliminary and permanent injunctive relief.
  • We successfully defended Restoration Hardware, Inc. to a favorable settlement in a trademark infringement action filed by Fritz Hansen A/S in the Southern District of New York concerning chair designs.
  • We represented Konami Digital Entertainment, Inc. in a trademark and copyright infringement action against The Upper Deck Company involving counterfeit trading cards in the Central District of California, and obtained a summary judgment on liability. The case settled during trial with a stipulated permanent injunction.
  • We represented One World Foods, Inc. in the Western District of Texas in a trademark infringement action against Stubb’s Austin Restaurant Company, based on our client’s STUBB’S mark for barbecue sauces, and obtained a stipulated permanent injunction.
  • We advised IAC Search and Media, Inc. in a trademark opposition and infringement action in Latvia over the Ask.fm social media website based on our client’s ASK marks, and obtained an EU-wide injunction against the use of the Ask.fm domain name.
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