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Trademark

Calfee provides full-service trademark representation, including domestic and foreign registration, strategic portfolio management, licensing and litigation. We have provided trademark portfolio and enforcement support services for more than 20 years and have under our care more than 7,300 active trademark matters for clients.

Unlike IP “boutique” firms, our trademark practice is an important part of a leading general corporate and litigation firm. This distinction informs our trademark counsel from a business perspective, which often is critical to our clients’ success. We counsel both private and public companies, including those from the Fortune 500, on trademark and false advertising matters in a variety of industries, including the automotive parts, health care, home hardware, hotel, lighting, paints and specialty coatings, and sewing machine industries. For our many clients with trademark rights outside the United States, our attorneys work with and through an extensive network of foreign associates that covers virtually every jurisdiction around the world in which trademark rights are recognized.

Our vast experience in counseling on and prosecuting thousands of trademark matters for clients around the world allows us to devise cost-effective strategies to maximize prosecution success. It has been our experience that many routine “informalities” raised in office actions can be avoided by careful preparation in the early stages of the selection and prosecution process.

On the portfolio management side, each Calfee trademark client is assigned its own trademark administration team. Aided by a full-time docket staff and sophisticated IP docketing system, we stay in constant communication with our team to ensure responsiveness to our clients and quality and accuracy of our work.

While litigation is rarely desirable to our clients, the business and dispute resolution experience of our intellectual property lawyers is invaluable in a client counseling role to anticipate and avoid potential portfolio development and management disputes. It also can optimize a client’s position if litigation becomes unavoidable, because we understand the importance of monitoring how marks are used, the importance of careful searching techniques and protocols, and the need for thorough, systematic and continuous documentation efforts with respect to use of marks.

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