Trademark

Unlike IP boutique firms, Calfee’s trademark practice is an important part of a leading general corporate and litigation firm. Our attorneys provide full-service, domestic and foreign trademark representation, strategic portfolio management, licensing and litigation. We have provided trademark portfolio and enforcement support services for more than 20 years and have more than 8,500 active trademark matters for clients under our care.

We counsel both private and public companies on trademark and false advertising matters in a variety of industries. For 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. 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 helps us stay in constant communication with our team and ensures responsiveness to our clients and quality and accuracy of our work.

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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.

Prosecution & Portfolio Management

  • Trademark clearance searches
  • Preparation and prosecution of S. and certain international trademark applications
  • Counseling on and supervision of international trademark prosecution
  • Maintenance and renewal of registered trademarks
  • Counseling regarding 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 & Opinions

  • Prosecute and defend trademark, false advertising and unfair competition actions
  • Prosecute and defend trademark oppositions and cancellations in S.
  • Supervise international oppositions and cancellations
  • Negotiate and draft co-existence agreements in 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

 

Representative Projects

  • Successfully defended a coatings provider in a trademark dispute with a competitor seeking temporary injunctive relief
  • Represented a home medical products provider in a trade dress dispute
  • Represented a health care insurance provider in a service mark dispute with another provider that was vigorously contested and settled shortly before trial
  • Successful prosecution of dozens of domain name arbitration
  • Assisted a Fortune 500 company with devising and implementing a cost reduction program designed to reduce expenses associated with foreign trademark protection
  • Assisted a Fortune 500 company with the establishment of multiple intellectual property holding companies