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
Trademarks and copyrights are one of a company’s most important assets and we understand their value. Our global team of attorneys helps our clients identify, register and protect the trademarks, copyrights and domain names that are identified with their products and services in the marketplace. Our team of professionals works closely with our clients to develop and understand their brand management and marketing strategies and the best ways to protect their commercial identities.
Manage and Leverage Your IP Assets
We currently manage over 17,000 trademark applications and registrations on behalf of small companies and large multi-national firms, both U.S. and foreign. We provide a full range of intellectual property services that our clients rely on to develop, maintain and extend their presence in the market.
Working with transactional colleagues, we evaluate the intellectual property portfolios of potential targets, conduct due diligence reviews and negotiate the trademark and copyright provisions related to corporate deals and financings.
Our group also works extensively with clients to strategically position technologies, trademarks or copyrighted products through licensing, sponsorship and publishing programs that complement and expand their core business operations. Our experience in technology transfers, advertising, sweepstakes, promotions and celebrity endorsement agreements provides the expertise needed to compete and win in today's global and electronic economy.
Protect Your Online IP
The Trademark, Copyright, Advertising and Brand Management practice group assists clients with registering, renewing and transferring ownership of Internet domain names. Through negotiation, the Uniform Dispute Resolution Policy and court litigation, we also recover clients’ domain names from infringers and cybersquatters, both domestically and internationally. We also help clients register their “.brand” top level domain names with the Internet Corporation for Assigned Names and numbers (ICANN).
Enforce 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 Intellectual Property Litigation team 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 which, in many disputes, is where the battle is won or lost. We also frequently represent clients in trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board.
Through our international offices and our relationships with foreign counsel, we have the ability to prosecute and defend our client’s intellectual property around the globe. Our U.S. trademark attorneys work extremely closely with our attorneys in Hong Kong and London to ensure that our clients’ portfolios are focused on the right international markets.
The lawyers in our Hong Kong office regularly counsel multinationals on implementing IP protection and licensing strategies in Hong Kong and greater China. Our Hong Kong office also counsels clients with respect to anti-counterfeiting and other IP enforcement actions, including trademark infringement and copyright piracy actions as well as company and domain name disputes.
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. Our dispute resolution practice includes representation before the English and European Union courts in all intellectual property matters as well as representation in trademark and design oppositions and invalidation actions before the UK Intellectual Property Office and the European Trademark and Design Registry. We also represent clients involved in company name and domain name disputes.
In addition to our Hong Kong and London offices, we have strong working relationships with firms around the world, giving us a truly global reach.
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:
MasterCard International Incorporated. We have acted as intellectual property advisor to MasterCard and assisted it with the enforcement of its trademarks in the U.S. and many countries throughout the world. We have provided advice to MasterCard with respect to hundreds of trademark matters, including the opposition or cancellation of third party trademark filings (both in the U.S. and abroad), cease and desist letters, domain name disputes and trademark clearing.
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:
Dell v. XYZ Company Nos. 1-25, et al. Trademark and copyright claims brought in effort to locate person(s) responsible for "phishing" scams.
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.
TCPIP Holding Company Inc. v. Haar Communications Inc., et al. Obtained preliminary injunction barring defendant from using domain names likely to dilute and infringe plaintiff's trademark. Granting of injunction upheld on appeal.
Radisson Hotels International, Inc. v. Radisson Travels. Obtained domain name from cybersquatter in Uniform Dispute Resolution Policy proceeding.
Industries & Practices
- Antitrust & Competition Law
- Biotech Patent Group
- Franchise & Distribution Law
- Intellectual Property Litigation
- Patent Prosecution, Portfolio Strategy & Management
- Technology Commerce