Trademark


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.

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 2018
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)

National Law Journal - 2016 IP Hot List


Law 360 - IP Practice Group of the Year
IP Practice Group of the Year 2015, 2013


Chambers USA Winner 2013 - IP Firm of the Year
IP Firm of the Year


BTI Litigation Outlook
BTI Litigation Outlook
“IP VIP” (2015)
“IP Litigation Powerhouse” (2014)

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