INDUSTRIES & PRACTICES

inherently distinctive

Trademark, Copyright & Advertising
PROTECTING AND ENHANCING THE COMMERCIAL OBJECTIVES OF YOUR BRANDS AND CREATIVE RIGHTS.

Overview

Trademarks, copyrights and advertising are the ambassadors of commerce, helping businesses build and maintain awareness of -- and demand for -- their products and services. We have been helping clients protect, enforce and leverage these vital assets for more than 50 years and currently manage tens of thousands of active trademark and copyright applications and registrations on behalf of companies ranging from start-ups to global multinationals. Our team provides a full suite of services, including:

  • Developing domestic and international brand strategies
  • Searching, registering, and maintaining trademarks and copyrights
  • Registering, renewing, transferring and enforcing domain names
  • Counseling on advertising claim substantiation and evaluation of competitor ad substantiation
  • Endorsements, testimonials and social media marketing disclosures
  • Influencer agreements
  • Enforcing rights in brands and content
  • Performing intellectual property due diligence in M&A, financing and other business transactions
  • Negotiating purchase, sale and financing agreements related to intellectual property and assisting with the transfer of intellectual property rights and recording of security interests and assignments related to corporate transactions
  • Strategic positioning of trademarked or copyrighted products and services through licensing and joint venture programs
  • International license recordings
  • Negotiating distributorship, publishing, sponsorship, endorsement and similar types of agreements
  • Providing guidance on contests, sweepstakes and other types of promotions
  • Advising on issues unique to online retail sales
Manage Your IP Assets + -
Worldwide Reach + -

Experience

Illustrative Representations

  • Boston Beer Corp. During our time acting as Boston Beer’s trademark counsel we have reviewed hundreds of proposed brand names, advertising slogans and label designs. We have also provided advice on advertising substantiation, contests, endorsements, publishing agreements and domain name and copyright issues.
  • Caribou Coffee Company, Inc. We advise Caribou Coffee with respect to trademark prosecution and strategy, enforcement, litigation, licensing and transactional matters across the globe. Dorsey has helped Caribou and its subsidiaries achieve numerous strategic licensing and enforcement victories and continues to assist Caribou in expanding its international footprint.
  • Major Airline. We helped a major airline obtain a domain name registration from a cybersquatter by filing a complaint with the World Intellectual Property Organization.
  • Leading Healthcare Provider. We have served as trademark counsel for a world-famous leader in medical care since 1993. We manage the client's global trademark portfolio and assisted it in selecting and applying to register a new Chinese character mark for its core brand in Asia. We also provided advice in connection with the clinic's sponsorship of professional basketball teams and the enforcement of its rights on social media and mobile application platforms.
  • Global Beverage Distributor. We provide one of the world's largest distributors of premium alcoholic beverages with strategic advice concerning its adoption and use of trademarks. We enable the distributor to use the trademarks and marketing slogans they prefer in ways that avoid conflict and strengthen their rights in the marketplace.
  • Major Retailer. We successfully assisted a major retailer in connection with its application to the Internet Corporation for Assigned Names and Numbers (ICANN) to run its name as a “.brand” gTLD. In addition, we helped the retailer with several complex trademark enforcement matters involving the scraping of its website and the use of its brands in connection with credit card injection apps and internet browser plug-ins.
  • World's Largest Luggage Company. We manage and develop the entire domestic and international patent and trademark portfolio held by the largest travel luggage company in the world. We represent the client in IP licensing, the acquisition of IP assets, investigative matters and support the worldwide enforcement of its patent, trademark and copyright assets. We also provide IP due diligence services in connection with the client's M&A activities and we regularly clear all global product launches and assist with global customs and counterfeit enforcement matters.
  • Leading Provider of Oral Health Products. We help a global provider of oral health products to protect its many innovative products around the world. We provide clearance services prior to commercial introduction and represent the manufacturer in structuring its international distributor relationships and with respect to advertising issues and disputes. We also assist it with its aggressive efforts to thwart piracy in China and with regard to domain name and online infringement issues as well as grey goods and counterfeiting disputes around the world.
  • Leading Seller of Personal Care Products. We represent the U.S. subsidiary of one of the world's leading sellers of tissue and personal care products. We have provided advice and training on a wide variety of trademark and advertising issues, including claim substantiation, comparative advertising, online marketing and privacy issues.
  • Top U.S. Cooperative. Dorsey handles all trademark, copyright, label review, and intellectual property enforcement for one of the top ten largest cooperatives in the U.S. Dorsey has helped this client and its subsidiaries achieve numerous enforcement victories during the past year, handling over 70 enforcement and opposition matters in the U.S. during this time. Dorsey also cleared numerous new brands and analysed myriad product labels in connection with intellectual property, advertising and regulatory issues.
  • Leading worldwide retailer, designer, manufacturer, and marketer of products and accessories with sun-protective qualities. Dorsey’s assists with enforcement and prosecution matters and domain name acquisitions and management strategies.

Representative Trademark Litigation Matters

  • Shen Manufacturing Co. v. The Ritz Hotel, Ltd. Won in a series of trademark oppositions commenced against our client, the world famous Ritz Paris Hotel, concerning its right to register various RITZ trademarks in the U.S.
  • Cartier et. al v. Aviannes, Inc. Obtained permanent injunctions in action for trademark infringement and counterfeiting enjoining multiple defendants from selling Cartier watches that had been modified to include the setting of diamonds on the bezel of Cartier watches.

 

Accolades

US News Best Lawyers 2020 Tier 1 Trademark Law Firm

US Best Lawyers - Top Copyright Law Firm 2020

Dorsey Top US Trademark Firm-WTR 2020

Best Lawyers Tier 1 Trademark & IP Litigation 2019

US News Best Lawyers 2020 Tier 1 IP Litigation Firm

13 Dorsey Leading IP Lawyers-Chambers 2020

US News Best Lawyers 2020 Tier 1 Patent Litigation Law Firm

US News Best Lawyers 2020 Top Technology Law Firm

JD Supra Readers' Choice Top Firm 2020

TMCA Best Law Blog ABA 2018

Dorsey Highly Recommended IP Practice-Managing IP Handbook 2019

17 Dorsey IP Stars- Managing IP Handbook 2019

U.S. Regional Award for Trademark Prosecution Midwest Managing IP Americas 2019

2018 ABA Journal Web 100 Honoree

2017 ABA Journal Web 100 Honoree

USNews Trademark Law Firm of the Year 2017 wht

Shortlisted USA Awards Chambers 2017

Top 5% Law Firms - IP Litigation - BTI Consulting Group 2016

Dorsey Top Trademark Firm-IP Today 2014

Contacts

Charlene Krogh
Practice Group Chair
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