INDUSTRIES & PRACTICES

50 years ahead

Trademark, Copyright, Advertising & Brand Management

PROTECTING AND ENHANCING THE VALUE OF YOUR BRANDS AND IDEAS.

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 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
  • Selecting, researching, registering, enforcing, maintaining and licensing trademarks and copyrights
  • Registering, renewing transferring and enforcing domain names
  • Counseling on advertising claim substantiation, endorsements, testimonials and native advertising
  • Counseling on unfair competition and false advertising matters
  • Performing intellectual property due diligence in M&A, financing and other business transactions
  • Negotiation of purchase, sale and financing agreements related to intellectual property and assistance with the transfer of intellectual property rights and recordation of security interests and assignments related to corporate transactions
  • Strategic positioning of trademarked or copyrighted products and services through licensing and joint venture programs
  • 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 and social media marketing
Manage Your IP Assets + -
Worldwide Reach + -

Experience

Representative Trademark and Copyright Clients
Some of our representative clients include:

 Sam Adams logo CHS Logo Caribou Coffee Logo

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 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, file Digital Millennium Copyright Act and trademark takedown requests with Google and Facebook, and 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). We successfully filed a 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

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.

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.

Accolades

Contacts

Elizabeth Buckingham
Practice Group Co-Chair
Charlene Krogh
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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