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Overview

Unlike IP boutique firms, Calfee’s Trademark practice is an important part of a leading general corporate and litigation firm. Our trademark attorneys provide full-service representation in all aspects of trademark law, including domestic and foreign trademark registration, strategic portfolio management and enforcement, oppositions and cancellations, licensing and litigation of trademark, trade dress, domain name and unfair competition claims such as false advertising.

We have provided trademark portfolio and enforcement support services for more than 20 years and have nearly 13,000 active trademark matters for clients under our care.

We counsel both private and public companies in a variety of industries on trademark and unfair competition matters such as false advertising.

For clients with trademark rights outside the United States, our trademark 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.

On the portfolio management side, each of our trademark clients is assigned its own trademark administration team. Our full-time docket staff and sophisticated IP docketing system help us ensure responsiveness to our clients and maintain quality and accuracy of our work.

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.

While litigation is rarely desirable to our clients, the business and dispute resolution experience of our intellectual property lawyers is invaluable as it enables our attorneys to anticipate and help 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 systematic and continuous documentation efforts with respect to the use of marks.

Noteworthy

Chambers USA Leading Law Firm Rankings

Since 2004, Calfee has been recognized as a Leading Law Firm for Intellectual Property by Chambers USA, most recently in Band 1 in Ohio (2024). Clients provided feedback to Chambers USA researchers, "Calfee is esteemed for its handling of IP litigation and portfolio management on behalf of large clients in Ohio and the Midwest and across the USA. The IP team is highly experienced in the engineering, chemical, and biological sectors, with notable abilities in handling matters for consumer products and manufacturing clients. The team is responsive, practical, and extremely knowledgeable."

Clients interviewed by Chambers USA said, "The firm offers excellent value for its services. The team is dedicated and provides sophisticated IP legal services at an attractive cost. Calfee's IP attorneys are highly regarded; they are true experts, and they do excellent work for their clients. This is a power bench; the team works well together and supports each other well. Each individual is responsive and knowledgeable in their expertise and experience. This is definitely one of my favorite firms to work with."

Chambers USA researchers also found Calfee's IP team to be held in "very high regard by fellow practitioners who note Calfee's extensive experience representing clients in wider patent and trademark matters, IP litigation matters, appellate work, and advising companies on managing IP assets in China."

Best Lawyers® “Best Law Firms” Rankings

Calfee was selected for inclusion in the 2025 "Best Law Firms" rankings in the following areas:

  • Copyright Law (Regional Tier 2 Cleveland)
  • Litigation – Intellectual Property (National Tier 3, Regional Tier 1 Cleveland)
  • Patent Law (Regional Tier 1 Cleveland, Regional Tier 2 Cincinnati)

World Trademark Review 1000 – The World’s Leading Trademark Professionals

Calfee's Intellectual Property practice group has been selected as a Leading Trademark Law Firm (Gold Ranking), and Calfee Partner Raymond Rundelli has been selected as a Leading Lawyer (Silver Ranking) by the World Trademark Review 1000 – The World’s Leading Trademark Professionals publication from 2015-2025. The annual WTR 1000 research directory recognizes the world’s leading trademark firms and professionals. Each year, WTR conducts exhaustive qualitative research to identify the firms and individuals that are deemed outstanding in this critical area of practice.

Professionals

Experience

Experience

  • Handle patent prosecution and IP strategy, management and strategy of patent and trademark portfolios, and advice on IP strategy and litigation for a publicly traded, Fortune 1000 multinational and global manufacturer. (2024)
  • Serve as primary IP counsel for a publicly traded, Fortune 1000 manufacturing company and its operating companies with regard to IP clearance and right-to-use and non-infringement analyses and opinions. With regard to procurement, we provide patentability and registrability analyses and opinions. We also prepare, file, and prosecute patent and trademark applications. We also are and have been involved as counsel on several IP litigations for the company. (2024)
  • Serve as primary IP counsel for a publicly traded, Fortune 1000 manufacturing company and its operating companies. With regard to clearance, we provide right-to-use and non-infringement analyses and opinions. With regard to procurement, we provide patentability and registrability analyses and opinions. We also prepare, file, and prosecute patent and trademark applications. (2024)
  • Represent a multibillion-dollar international manufacturer in domestic and foreign patent litigation, patent and trademark prosecution, and IP strategy. We also provide management and strategy services for its patent and trademark portfolios and advise on IP strategy. Calfee is essentially the client’s “go-to” intellectual property counsel on all IP matters. (2024)
  • Serve as Chief Outside Intellectual Property Counsel for a publicly traded, Fortune 500, multibillion-dollar, multinational holding company with multiple operating companies based in the U.S. and abroad. Calfee is responsible for patent annuity payments on all patent matters and assists many of the operating companies with the prosecution of patent applications, both in the U.S. and abroad. Calfee manages the U.S. trademark and patent work directly and supervises a network of foreign associates when action is required in foreign jurisdictions. Calfee regularly assists the client with enforcement matters involving any aspect of IP, including representing the operating companies in infringement litigation brought by or against them. Calfee also offers primary counsel on the impact of corporate reorganization efforts on the ownership and management of the operating companies’ IP. Calfee IP lawyers also supervise most of the intellectual property due diligence related to the mergers and acquisition activity of the client. Calfee represents the company in several trade secret matters. (2024)
  • Manage the entire IP portfolio, including patent and trademark portfolios, for a leading mineral mining services company with facilities across North America. This includes preparing and prosecuting patent and trademark applications both in the U.S. and internationally, counseling and advising on patent and trademark strategy, including patent and trademark clearance analyses, patentability, agreements, and licensing, as well as competitor portfolio analysis. (2024)
  • Handle a portion of a publicly traded, Fortune 100 financial service company client's domestic and international trademark portfolio, including clearance, registration and maintenance work, transactional matters, and enforcement work. (2024)

Services

Services

Prosecution and Portfolio Management

  • Trademark clearance searches
  • Preparation and prosecution of U.S. and certain international trademark applications
  • Counseling on and supervising an international trademark prosecution
  • Maintenance and renewal of registered trademarks
  • Counseling regarding the interplay of trademark and domain name issues
  • Intellectual property inventories and audits
  • Design and implementation of maintenance and enforcement programs
  • Advertising clearance advice and counseling regarding substantiation of advertising claims
  • Educational programs for clients and their employees

Transactional

  • Licensing agreements
  • Counseling regarding trademark, false advertising, and licensing issues in connection with mergers and acquisitions
  • Due diligence for mergers and acquisitions as well as financing
  • Preparation and recordation of assignments and other events affecting ownership 

Litigation and Opinions

  • Prosecute and defend trademark, false advertising, and unfair competition actions
  • Prosecute and defend trademark oppositions and cancellations in the U.S. and globally
  • Supervise international oppositions and cancellations
  • Negotiate and draft co-existence agreements in the settlement of trademark disputes
  • Provide trademark and trade dress infringement analysis
  • Provide false advertising analysis and render opinions
  • Provide trademark dilution analysis
  • Conduct trademark vitality and infringement studies and render opinions

Feedback

Feedback

  • "Offering 360-degree trademark support, Calfee Halter & Griswold LLP operates with agility and efficiency. As one of the Midwest’s largest IP practices within a corporate firm, the skilled attorneys offer industry-specific insights across bioscience, tech and beyond, managing nearly 13,000 active trademark matters with precision." – WTR 1000 2025
  • "Calfee's IP team is responsive, practical, and extremely knowledgeable."– Client quote, Chambers USA 2023
  • "They manage situations so they can be handled cost-effectively, they're great at communicating and make strong, practical recommendations, rather than just legal assessments." – Client quote, Chambers USA 2022
  • "Calfee does phenomenal work and has become our go-to firm for IP services." – Client quote, Chambers USA 2022
  • "They have a really good spectrum of talent across sectors and expertise, particularly in the technology space." – Client quote, Chambers USA 2022

News & Events

News

Blog Posts

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"Calfee's IP group is esteemed for its handling of IP litigation and portfolio management on behalf of large clients in Ohio, the Midwest, and across the USA. They are highly experienced in the engineering, chemical, and biological sectors, with notable abilities in handling matters for consumer products and manufacturing clients."

Researcher comments, Chambers USA

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