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
Dorsey offers a coordinated worldwide team to provide core trademark, copyright, advertising and brand management services. We evaluate intellectual property portfolios of potential targets, conduct due diligence reviews and negotiate the trademark and copyright provisions related to corporate deals and financings. We also work closely with Dorsey technology commerce, and cybersecurity and privacy attorneys to provide a full range of intellectual property services in a fast-paced and rapidly-evolving legal landscape related to technology licensing, cybersecurity, privacy and regulatory laws that affect our clients. We are well poised to offer our clients industry best practices and provide comprehensive and practical legal solutions.
Enforce and Defend Your Rights
Effective IP protection can require decisive offensive or defensive action. When it is time to enforce your intellectual property rights, the members of our team enforce and defend matters before the U.S. Trademark Trial and Appeal Board, through Uniform Domain Dispute Resolution Proceedings, at the NAD and FTC and on social media platforms. We also regularly issue and respond to demand and cease and desist letters and DMCA takedown notices. When matters require court litigation, we work with our experienced Intellectual Property Litigation team to pursue litigation. Dorsey’s intellectual property litigation attorneys combine technical proficiency with courtroom experience in disputes concerning rights of publicity and privacy, trademark infringement and dilution, unfair competition, trade dress protection, false advertising and copyright infringement. We have over 50 years of experience in seeking and opposing temporary restraining orders and injunctions.
Through our international offices and our relationships with foreign counsel, we are able to prosecute and defend our clients’ intellectual property around the globe. Our IP attorneys work closely with our international practitioners in Hong Kong, Shanghai, Beijing, and London to ensure that our clients’ IP portfolios are properly protected and enforced in the world’s two largest markets outside the United States. The lawyers in our international offices counsel clients operating in Europe and Asia, and we also have relationships with firms throughout the world, giving us a truly global reach.
Hong Kong and Greater China
Dorsey’s Greater China Trademark team handles a broad range of intellectual property matters, with particular focus on trademark in Greater China. Equipped with the industry knowledge, our lawyers provide tailored solutions to multinational corporations in a broad range of industries in relation to acquiring and maintaining intellectual property rights and to implementing brand protection and licensing strategies in China and Hong Kong.
Our London attorneys focus on the enforcement, protection and commercialization of intellectual property rights in Europe. We represent clients in the areas of trademarks, trade secrets, copyright, designs, patents and other technology-related matters as well as clients involved in company name and domain name disputes.
- Beijing-based Ninebot completes strategic acquisition of Segway
- Coming together to grow nutritional supplement sales in China
- Competitor helmet maker’s trade dress not protectable
- Coolibar sets stage for growth with ownership change
- Founders sell oil and gas software business to private equity buyer
- 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.