Trademarks and Unfair Competition

One of our core intellectual property practice areas is in the field of trademarks and unfair competition. We assist clients in a wide range of industries with a host of business and legal issues involving the development, securing, maintenance, exploitation, and enforcement of trademark and related intellectual property rights. Our expertise in consulting, transactions, and dispute resolution, along with our strong global focus, enable us to achieve our clients’ objectives to leverage their brands consistent with their business strategies for growth and greater competitive standing. For example, we have advised clients on the following:

  • Consulting and advice in the selection and registration of trademarks, trade names, and domain names, including clearance searches
  • Assisting with post-registration maintenance obligations
  • Fulfilling ongoing monitoring and policing duties
  • Issuing non-infringement and clearance opinions
  • Conducting due diligence on asset sales and licensing arrangements
  • Handling opposition, cancellation, and other related proceedings
  • Recording registered trademarks with the U.S. Customs and Border Protection
  • Issuing and responding to cease-and-desist letters
  • Facilitating the resolution of trademark and related disputes
  • Devising and enacting campaigns to enforce trademark, trade dress, and fair competition rights
  • Defending lawsuits alleging infringement and dilution of trademark and related rights

Our specific representative matters have included:

  • Applying for and securing trademark registrations on numerous well recognized brands for clients in a variety of industries, such as fashion, jewelry, physical fitness, automobile parts and accessories, accounting, consulting, legal services, software, and web-based businesses
  • Monitoring a jewelry client’s worldwide trademark portfolio for confusingly similar marks and assisting in complying with its post-registration renewal and maintenance obligations
  • Conducted trademark portfolio due diligence in connection with the acquisition of a pharmaceutical company
  • Advice regarding the transfer of patent and trademark assets in connection with the negotiation of a sales and distribution agreement regarding textile and garment products
  • Representing a major real estate developer in registering property-specific trademarks and in defending an opposition proceeding
  • Represented a private equity firm in enforcing its trademark rights against a direct competitor
  • Defended and successfully resolved accusations of selling counterfeit goods over the Internet against an on-line retailer
  • Represented a major European apparel company in a trademark infringement and breach of contract dispute
  • Successfully defended a software company against allegations of trademark infringement, dilution, and unfair competition brought by a purported senior mark owner
  • Drafted and sent a successful cease-and-desist letter on behalf of a personal services company to enforce its trademark rights against an infringing competitor
  • Represented a manufacturer of a high-end household appliance in a lawsuit brought against a competitor’s false television infomercial

In short, we aim to serve as a single provider for all of our clients’ trademark-related needs. We are a member of the International Trademark Association, and we represent clients in both state and federal courts, as well as handle numerous matters before the United States Patent and Trademark Office and coordinate the prosecution and maintenance of trademarks in foreign countries.