Trademark


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:

  • Trademark clearance, registration, and enforcement.
  • Trademark oppositions and cancellations.
  • Trademark due diligence.
  • Negotiation of licenses and co-existence agreements.
  • Trademark and domain name.

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.


Transactional Activities.

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.


Anti-Counterfeiting Advice.

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 2015, 2013


Chambers USA 2016
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 Global 2017
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 Asia-Pacific 2017
2011 Asia Pacific Awards: Japan – International Firm of the Year
Japan: Intellectual Property: International Firms
Asia-Pacific Region: Intellectual Property
China: Intellectual Property: International Firms


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


U.S. News – Best Lawyers® Best Law Firms 2015
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 Recorder
Three IP Litigators named 2012 Attorney of the Year by The Recorder.


The National Law Journal 2015
IP Hot List


Legal 500 US 2016
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 2015
China: Foreign Firms
Hong Kong
Japan: International Firms and Joint Ventures


Managing IP: Patent Survey 2015
United States: Bio/Life Sciences
United States: Patent Contentious
United States: Patent Prosecution
United States: ITC
Japan: Patent – foreign firms


Asian Legal Business Japan Law Awards 2015
IP Law Firm of the Year


Benchmark Litigation Awards 2014
Intellectual Property Firm of the Year
California Firm of the Year
National Impact Case Award


IAM Patent 1000 2016
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 2013
Firm of the year: Patent Prosecution

Douglas L. Hendricks
Partner
San Francisco
(415) 268-7037

Jennifer Lee Taylor
Partner
San Francisco
(415) 268-6538

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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