The trademarks and service marks of a
business -- the words, names, symbols, designs and product
configurations by which its goods and services are recognized
-- can be some of its most valuable assets. Our attorneys
have decades of experience helping a wide variety of clients
manage trademark selection, registration, licensing, and enforcement
issues.
Our full-service trademark practice can help you to:
- Select distinctive marks
- Search for conflicting marks
- Register your marks domestically and internationally
- Maintain your registrations
- Enforce your rights in court and the U.S. Patent and
Trademark Office (PTO)
- License your trademark portfolio effectively
- License the right to use another entity's mark
- Negotiate co-existence agreements
- Defend against claims of infringement by third parties
- Negotiate agreements with third parties to use their marks
- Defending, in conjunction with another law firm, a client's
practice of delivering "pop-up" ads on the Internet against
various claims of federal and state trademark infringement,
misappropriation and trespass to chattels. Since novel
issues necessitate novel approaches, part of the litigation
plan consisted of identifying and working with a Harvard
Business School professor to develop expert testimony
on how "pop-up" ads benefit consumers and enhance competition
in the marketplace. We also retained a nationally-recognized
survey expert to identify flaws in plaintiff's survey
evidence. When the U.S. District Court for the Eastern
District of Virginia ruled in favor of our client, the
judge's opinion adopted much of the reasoning of our brief.
- Clearing, protecting and maintaining a portfolio of
trademarks for a major telecommunications company.
- Protecting the University of Arkansas' collegiate logo,
"Razorbacks," against trademark infringement. The
Board of Trustees of the University of Arkansas v. Professional
Therapy Services, Inc., d/b/a Razorback Sports and Physical
Therapy Clinic, 873 F. Supp. 1280 (W.D. Ark. 1995).
- Obtaining trademark protection for the University of
Wisconsin's collegiate logo, "Bucky Badger," The University
Book Store, et al., v. The Board of Regents of the University
of Wisconsin System (33 U.S.P.Q.2D (BNA) 1385 1994).
- Successfully effecting trade dress protection for bottles
and containers, Paddington Corp. v. Attiki Importers
& Distributors, Inc., 996 F.2d 577 (2d Cir. 1993).
- Serving as co-counsel representing a mobile telephone
company in a registration proceeding before the PTO and
in a civil trademark action against the claim that its
mark is generic.
- Representing the owners of a historic inn at the center
of an important branch of the American Arts & Crafts movement,
in their efforts to protect trademarks used in connection
with the Inn and related merchandise.
- Defending a regional coffee service company against
service mark infringement and dilution claims of a national
coffee equipment manufacturer.
- Helping a national education association protect and
license its trademarks.
- Securing protection for the trademarks and service marks
of a large, regional alarm system company.
- Securing protection for the trademarks and service marks
of a gourmet New York area ice cream and Italian ices
chain.
- Protecting the trademark rights of a regional equine
advertising and information publication against infringement
by third parties.
- Protecting the flavored rum brand of a major alcoholic
beverage company against infringement by an ice cream
manufacturer.
- Protecting the interests of a variety of clients in
domain name disputes.
- Filing a declaratory judgment and injunctive action to ensure that a client’s new business
Advanced Lipodissolve Centers) can use the descriptive word Lipodissolve claimed as a trademark
by a third party defendant.
- Defending a client’s trademark application for IVY LEAGRO in an opposition proceeding before
the Trademark Trial and Appeal Board filed by the Council of Presidents of the Ivy League.
- Securing cancellation of a Boeing Company registration (FOREVER NEW FRONTIERS) that incorporated
a telecommunications client’s famous FRONTIER trademark.
- Advising Frontier, a national telecommunications company, on its branding and media campaigns.
- Assisting numerous start-up businesses in selecting and protecting names, logos and symbols.
- Counseling the U.S. subsidiary of a foreign cosmetics company on its trademark strategy.
- Developing a strategy for a domestic company to maintain its trademark rights in light
of Madrid Protocol filings claiming competing rights.
- Chairing a trademark subcommittee of the Intellectual Property Owners Association (IPO),
www.ipo.org, focusing on initial interest confusion.
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