Morrison & Foerster has a thriving and diverse trademark practice that includes all aspects of brand protection. Our trademark attorneys have represented numerous clients in a wide range of trademark-related matters, including:
Our trademark clients are drawn from a wide range of industries, including banking, sports, entertainment, consumer products, investment management, computer software and hardware, telecommunications, Internet, healthcare, biotechnology, pharmaceuticals, apparel, alcoholic and non-alcoholic beverages, publishing, and retail services.
We are pleased to have J. Thomas McCarthy, a renowned authority on trademarks and unfair competition and on the rights of publicity, as Of Counsel. Professor McCarthy, author of the well-respected McCarthy on Trademarks and Unfair Competition, consults with clients on trademark clearance and enforcement issues and advises on litigation strategy.
Trademark Registration and Counseling.
We help clients develop and protect the value of their trademarks and service marks by preparing, filing, prosecuting, and maintaining trademark applications and registrations; conducting trademark searches; working with clients to develop trademark protection strategies and to manage portfolios; negotiating trademark licenses and co-existence agreements; and handling opposition and cancellation proceedings. We have represented numerous clients in opposition and cancellation proceedings before the Trademark Trial and Appeal Board.
We work with an established network of non-U.S. counsel that handles trademark filings, oppositions, cancellations, and litigation outside the U.S. From time to time, we offer client seminars on new developments relating to trademarks. In addition, we work actively with clients to develop trademark handbooks, usage guidelines, and other educational programs to enhance trademark protection. We also help clients avoid potential infringement issues by reviewing, labeling, and marketing materials.
Our trademark attorneys work closely with our corporate lawyers on trademark licenses, trademark due diligence, and trademark issues in connection with the formation, operation, financing, and sale of businesses. We often provide clients with strategic advice that enables them to evaluate better their intellectual property portfolios, helping them consolidate and streamline their holdings both to protect their trademarks and service marks and to reduce the costs of maintaining their portfolios.
Trademark and Domain Name Litigation.
Our litigators represent clients in all types of trade practice claims under both federal and state laws: trademark, service mark, and trade dress infringement, and dilution, unfair competition, counterfeiting, cybersquatting, and unfair advertising cases. In addition, we have represented many clients in disputes involving infringing Internet domain names and cybersquatting through ICANN’s arbitration procedures.
We advise technology and entertainment clients on counterfeiting and customs issues and have obtained ex parte writs of seizure for counterfeit parts and labels in the U.S. and other countries. We work closely with clients to develop global enforcement and anti-counterfeiting programs and strategies to aid in the worldwide protection of trademarks and service marks.
Law360 IP Practice Group of the Year in 2013, 2015 and 2016
Chambers Global 2018 Global: Intellectual Property Asia-Pacific Region: Intellectual Property China: Intellectual Property: International Firms Japan: Intellectual Property: International Firms United States: Intellectual Property (Patent) United States: Intellectual Property (Section 337)
Chambers USA 2017 National: Intellectual Property National: International Trade: Intellectual Property (Section 337) California: Intellectual Property California: Intellectual Property (Patent Prosecution) New York: Technology & Outsourcing Washington D.C.: Intellectual Property (Litigation) Washington D.C.: Technology & Outsourcing
Chambers Asia-Pacific 2018 Japan: Intellectual Property: International Firms Asia-Pacific Region: Intellectual Property
U.S. News – Best Lawyers® Best Law Firms 2018 National: IP Litigation (Tier 1) National: Patent Litigation (Tier 1) National: Patent Law (Tier 1) Los Angeles: IP Litigation (Tier 1) Los Angeles: Patent Litigation (Tier 1) San Diego: IP Litigation (Tier 1) San Diego: Patent Litigation (Tier 1) San Diego: Patent Law (Tier 1) San Francisco: IP Litigation (Tier 1) San Francisco: Patent Litigation (Tier 1) San Francisco: Patent Law (Tier 1) Washington D.C.: IP Litigation (Tier 1) Washington D.C.: Patent Litigation (Tier 1)
The National Law Journal 2016 IP Hot List
Legal 500 US 2017 Copyright Patent Litigation: ITC Patent Litigation: Full Coverage Patents: Portfolio Management and Licensing Patent: Prosecution (Including re-examination and post-grant proceedings) Trade Secrets Trademarks: Litigation
Legal 500 Asia-Pacific 2018 China: Intellectual Property: Foreign Firms Hong Kong: Intellectual Property Japan: Intellectual Property: International Firms and Joint Ventures
Managing IP: American Awards Shortlist 2018 United States: Appellate United States: Life Sciences IP Litigation United States: ITC Japan: Patent – Foreign Firms
IAM Patent 1000 2017 California: Litigation (Gold) California: Transactions (Highly Recommended) California: Prosecution Hong Kong: Litigation & Transactions International Japan: Litigation and Licensing (Highly Recommended) National: Transactions National: Litigation Washington D.C.: Litigation
LMG Life Sciences 2017 Hatch-Waxman Patent Litigation Patent Prosecution (Highly Recommended) Patent Strategy and Management (Highly Recommended)
IP Practice Group of the Year 2015, 2013
IP Firm of the Year
BTI Litigation Outlook “IP VIP” (2015) “IP Litigation Powerhouse” (2014)
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