Trademarks

With two attorneys named among the “World’s Leading Trademark Practitioners” by Managing Intellectual Property, Lathrop & Gage protects clients’ brands, marketing campaigns and products. Our attorneys have extensive experience in searching and clearing marks for adoption and use, then filing and prosecuting applications before the U.S. Patent and Trademark Office. When necessary, we excel in advocating our clients’ interests in proceedings before the Trademark Trial and Appeal Board.

International Capabilities. We manage the international registration programs for companies with presence overseas. We routinely deal with trademark registrations in the European community and a host of other foreign jurisdictions, and through our leadership and participation in the International Trademark Association, we have developed a network of foreign associates who can provide on-the-ground assistance.

Online Savvy. Our attorneys are heavily involved in protecting client brands online, including stopping Internet scams and frauds, terminating unauthorized online auctions, counseling on First Amendment and fair-use issues, and participating in domain name proceedings against cybersquatters before the World Intellectual Property Organization.

Representative Experience:

• Represent an international alliance of professional services firms in the planning and execution of a large-scale foreign filing program for trademarks. Deal with related foreign oppositions and litigation in a coherent, planned strategy using coordinated arguments allowed under local law.
• On behalf of a pharmaceutical company, execute administrative actions with the World Intellectual Property Organization to take down search engine ad text containing client’s trademarks used by a third party in ads that link to competitive products or to illegal products, such as counterfeit generics.
• Handle international and domestic trademark portfolio for major international jewelry brand, including counseling client on enforcement, protection, policing and when/where to file applications.
• Provide ongoing trademark and advertising advice for a national bridal retailer. Scope of work includes filing and obtaining trademarks; handling disputes raised by consumers and the Better Business Bureau related to advertising and marketing; asserting trademark claims on behalf of client; presenting policies, procedures and training programs for state-specific advertising issues to protect intellectual property rights and avoid infringement as well as handling various sweepstakes, contests and other promotions.
• Manage trademark portfolio work and disputes, including infringement matters, for a nationwide food product manufacturer and retailer.