50 years ahead

Trademark, Copyright, Advertising & Brand Management


2018 ABA Journal Web 100 Honoree 2017 ABA Journal Web 100 Honoree 



Trademarks, copyrights and advertising are the ambassadors of commerce, helping businesses build and maintain awareness of -- and demand for -- their products and services. To support this vital function, our clients, ranging from start-ups to global multinationals, regularly count on our international Trademark, Copyright, Advertising and Brand Management team for a variety of services, including:

  • Developing domestic and international brand management strategies
  • Selecting, researching, registering, enforcing, maintaining and licensing their trademarks and copyrights
  • Registering, transferring and enforcing their domain names
  • Providing counsel on unfair competition and false advertising matters
  • Performing intellectual property due diligence in M&A, financing and other business transactions
  • Strategic positioning of trademarked or copyrighted products and services through licensing programs that complement and expand upon core business operations
  • Negotiating distributorship, publishing, sponsorship, endorsement and similar types of agreements
  • Providing guidance on contests and other types of promotions
  • Advising on issues unique to online retail sales and social media marketing
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Representative Trademark and Copyright Clients
We have been helping clients with their brand management and copyright needs for more than 50 years. With more than 30 lawyers involved in our practice globally, our team has been recognized internationally for its quality and capabilities.

Some of our representative clients include:

 Sam Adams logo CHS Logo Caribou Coffee Logo

Illustrative Representations
Boston Beer Corp. We act as trademark counsel to our longtime client Boston Beer, the maker of the well-known SAMUEL ADAMS and REBEL IPA lines of beers and ales and ANGRY ORCHARD hard cider. During our representation of Boston Beer 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 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. We helped Caribou file new trademark applications in numerous jurisdictions, including Columbia, the European Union, Indonesia, Iraq and Libya. We also helped Caribou register new gTLDs and we filed Digital Millennium Copyright Act and trademark takedown requests with Google and Facebook to remove infringing Facebook pages and an infringing mobile application. In addition, we successfully defended and instituted trademark oppositions in the United Arab Emirates, Turkey and Mexico on behalf of Caribou.

Water Pik v. Piao Ying, WIPO Case No. D2014-2262 (2015). Successful Uniform Domain-Name Dispute-Resolution Policy (UDRP) complaint resulting in transfer of WATERPIK.ASIA domain name to client.

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.

Representative Trademark Litigation Matters
Working with the members of our Intellectual Property Litigation group, we assist clients when it is necessary to pursue litigation to protect and enforce their rights. A representative sample of some of the cases we have worked on would include:

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 United States.

American Registry of Radiologic Technologists v. Diane Bennet. Prevailed in copyright infringement case on behalf of nonprofit licensing organization against provider of examination preparation courses.

Cartier et. al v. Aviannes, Inc. (S.D.N.Y.) - 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.

Radisson Hotels International, Inc. v. Radisson Travels. Obtained domain name from cybersquatter in Uniform Dispute Resolution Policy proceeding.  



Elizabeth Buckingham
Practice Group Co-Chair

Industries & Practices

  • Antitrust & Competition Law
  • Franchise & Distribution Law
  • Intellectual Property Litigation
  • Patent Prosecution, Portfolio Strategy & Management
  • Technology Commerce
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