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Trademark

While our award-winning trademark team represents regional and national clients, increasingly we serve large multinational corporations in a range of industries, handling their trademark portfolios that extend to virtually all the developed countries and some undeveloped ones as well. We deliver a combination of global experience, sophistication, innovation, knowledge base and bench depth. 

Clients know they can count on us to conceive creative solutions to complex matters such as these, and many more:

  • Recently a global service company turned to us after it fell victim to notorious trademark troll and domain cybersquatter, Michael Gleissner. As the kingpin behind thousands of shell companies worldwide, Mr. Gleissner has become infamous among trademark owners for his companies’ prolific filing of trademark applications and domain registrations closely resembling famous brands, and his well-funded legal team has successfully defended against challenges by major brands such as Starbucks and TiVo. While others may have chosen conciliation against this formidable opponent, we hit back hard and filed a Uniform Domain Resolution Proceeding (UDRP) complaint in the Switzerland-based World Intellectual Property Organization (WIPO), which ruled in our favor. Our client was among the first trademark owners to take an offensive approach against Gleissner by initiating, and gaining, a UDRP proceeding against him.
  • We also aggressively defended another client – a reality-TV celebrity who has an active lifestyles brand – against a fraudulent campaign that was launched to defame the celebrity and steal money from her fan base. While of course our client wanted us to “make it stop,” we knew we faced a stiff challenge in the context of such dark internet malfeasance. Undeterred, our team deployed a combination of tactics which included law enforcement, cutting off the defrauder’s money supply, filing an UDRP complaint, and threatening litigation. Through this creative and multi-pronged approach, we shut down the celebrity defamation and slammed the door on the internet-based scam.

Summary

Our lawyers are widely recognized as leaders in this area of law, with extensive experience before the Trademark Trial and Appeal Board (TTAB) and a leading role with the International Trademark Association (INTA). We help clients formulate and implement consistent policies and strategies on key issues, including international filing programs using the Madrid Protocol and Paris Convention. Clients tell us they value our ability to help them create protective measures to prevent problems from arising.

While we often compete with the 50 largest firms in the world, clients say they come to us because they appreciate the effective counsel we provide and the better-value proposition we bring to serve their needs in trademark clearance, registration, prosecution, enforcement, licensing, monetization, anti-counterfeiting and a host of other areas. We continually show that we respond quickly to their phone calls and emails and bring resolution to their matters as fast and efficiently as possible.

The global economy has transformed, and now half of the capitalized value of companies worldwide consists of brand equity. Along with our clients, our team embraces this new reality.

Defining Strengths

We work hard to drive brand value, boost brand strength, and lower the cost of global trademark portfolios. We understand that every trademark-related action must align with business strategy. To meet this need, we offer a full range of services at every step of a brand’s evolution, from the first list of potential names through emergence as a global brand, including:

  • Anti-Counterfeiting
  • Digital Business
  • Privacy and Data Protection
  • Franchising
  • Distribution
  • IP Litigation
  • Tax-Efficient IP Structures
  • IP Litigation and Dispute Resolution
  • Transactional IP