Menu

Trademarks

What’s in a name? As much as 85 percent of the market capitalization of today’s Fortune 500 now lies in intellectual property rather than tangible assets, and Forbes reports that trademarks are the single largest source of intangible value for a company.

Fortune 500 companies and organizations of all sizes trust Lathrop Gage to help establish, guard, maintain and enforce trademarks.

Key Facts

  • Lathrop Gage has a dedicated team of attorneys who specialize in trademarks, led by a former U.S. Patent and Trademark Office examining attorney.
  • We manage over 5,000 trademarks for clients in a wide variety of industries, from financial services to entertainment to consumer goods.
  • We are currently responsible for trademarks in over 150 countries, from Algeria to the Yemeni Republic.
  • Every year, we initiate over 500 trademark applications.  Last year, more than 300 trademark registrations were granted for Lathrop Gage clients. We rank among the 30 most productive trademark prosecution firms in the country.
  • Annually we file more than 550 trademarks.  

Industry Recognition

  • Lathrop Gage has a Tier 1 ranking from U.S. News and World Report for trademark law nationwide. We also have the top ranking in Boston, Kansas City and the state of Colorado.
  • Partners on our trademark team are listed as “IP Stars” by Managing Intellectual Property, named among The Best Lawyers in America, recognized as Superlawyers, and recognized as “Leading Lawyers” by Chambers USA.

A Value Approach

We know trademarks are a business asset – and unpredictable legal fees should not diminish their ROI. We partner with our clients to develop alternative fee arrangements that provide predictability and efficiency. For example, we set flat fees for trademark applications, cease-and-desist letters, and Office Action responses, among others. We also can implement portfolio retainers for larger clients.

We pride ourselves on experience, flexibility, responsiveness and a commitment to value.

Trademark Prosecution and Portfolio Management

Lathrop Gage secures hundreds of new marks each year and monitors a number of large trademark portfolios. We excel at the cost-effective management of complex portfolios – for clients including a household name in candy, the No. 1 shoe retailer in the U.S., and a Fortune 50 global financial services leader – and are equally adept advising start-ups whose brand equity is just beginning.

When it comes to trademark prosecution, Lathrop Gage offers clients a significant advantage: Three members of our team formerly worked at the U.S. Patent and Trademark Office. In fact, one leader of our trademark practice, Amy Brozenic, served as an examining attorney there. Because her job was to identify problems with trademark applications, she can navigate the trademark process with efficiency and effectiveness – she knows how to draft applications for expeditious approval.

We protect our clients’ marks worldwide. We work with our clients to develop appropriate strategies for protection and enforcement in foreign jurisdictions, and partner with a trusted network of trademark lawyers and agents who serve as “boots on the ground” to complete the relevant foreign filings.

Among our recent experience:

  • Serve as IP counsel for a Fortune 50 global financial services company; the work includes trademark prosecution, trademark licensing, IP clearance and trade secret evaluation and protection.
  • Provide ongoing trademark advice for a national bridal retailer. The scope of work includes filing and obtaining trademarks; asserting trademark claims on behalf of our client; and presenting policies and training programs to protect IP rights and avoid infringement.
  • Handle international and domestic trademark portfolio for major international jewelry brand, including counseling client on enforcement, protection, policing and when/where to file applications.
  • Serve as IP counsel for a $2.3B national retailer providing portfolio advice and management, much of which at fixed rates.

Licensing and Transactions

We help clients generate additional revenue from their trademark assets by structuring sound licensing programs. We work with clients throughout this process, from the preparation and negotiation of license agreements (both domestic and foreign) to the creation of internal compliance programs to the handling of alleged violations. We seek to balance the profitable exploitation of trademarks with the clear preservation of ownership rights.

When business transactions involve trademarks, we work with clients to obtain proper valuation and protect business objectives. Lathrop Gage advises clients on the trademark issues involved in mergers and acquisitions, strategic alliances, joint ventures, bankruptcies and more. Our work includes transaction opinions; trademark portfolio evaluation; due diligence; and the preparation of agreements and licenses. We are able to call upon our colleagues across the firm – from corporate to tax to bankruptcy – to provide comprehensive deal counsel.

Among our recent licensing and transaction experience:

  • Managed the IP facets of the $650 million sale of Silpada Designs to Avon Products, Inc., and the subsequent buyback from the original owners.
  • Served as counsel for a high-net-worth individual regarding angel investments for a do-it-yourself medical test and a new method for copper manufacture. Performed due diligence, including an audit and evaluation of IP protection and procedures; negotiated the terms of the investments.
  • Provide IP counsel to Dartmouth College, including assistance in the college’s licensing program.
  • Counsel a manufacturer of probiotic dietary additives with regard to licensing and related corporate issues.
  • Represent an internationally known artist and illustrator regarding the licensing of artwork for a variety of products.

Advertising and Marketing

We empower our clients to tell their stories in the marketplace. Lathrop Gage has a solid background in all advertising-specific concerns: We conduct comprehensive pre-publication/pre-broadcast review for verification and adherence to Federal Trade Commission standards, and advise clients on social media tactics, mobile campaigns and Internet advertising – including compliance with the rules governing web advertising to children.

When conflicts with competitors arise, we work fast to protect our clients’ messages. We excel at coordinating experts and evidence to address truth in advertising, likelihood of confusion, genericness, and more. We have a successful track record addressing disputes in the National Advertising Division of the Council of Better Business Bureaus, often a more expeditious, predictable and cost-effective option than the federal court system.

Among our recent experience:

  • Successfully defended Intuit, the manufacturer of TurboTax, in aggressive temporary restraining order/preliminary injunction proceedings. For the second time, the court denied H&R Block’s attempt to stop two TurboTax television commercials. H&R Block claimed the ads had false or misleading claims. The court denied all of its challenges, finding that there was no false or misleading information in the ads.
  • Advise Medco Health Solutions, Inc., the largest prescription benefits manager in the United States, on false advertising and trademark infringement matters.
  • Obtained a $13.492 million jury verdict – and a complete defense verdict against offensive counterclaims – in a false advertising claim on behalf of Munchkin, Inc., a manufacturer of baby products. The award is believed to be the fifth-largest false advertising verdict in the U.S.
  • Provide ongoing advertising advice for a national bridal retailer, including guidance on state-specific advertising issues, sweepstakes, contests and other promotions.
  • Advise a Fortune 100 company regarding its social media advertising and compliance with new Federal Trade Commission standards on online advertising.

Trademark Litigation and Enforcement

We protect our clients nationwide – in courtrooms across the country, through mediation and arbitration, and before the Trademark Trial and Appeal Board. We handle all aspects of trademark and trade dress litigation, including infringement and dilution, and have extensive experience in domain name disputes.

Our mission in every dispute is to achieve the best business result at the earliest possible date.

Among our recent experience:

  • Defended a well-known shoe manufacturer and retailer in multiple trademark and trade dress suits, many of which had potential liability of eight or nine figures.
  • Defended an international jeweler — a company that has products available in more than 55 countries across six continents — in a trademark dispute brought by one of its former authorized retailers. The store sued, claiming ownership of our client’s brand. Lathrop Gage prevailed in defeating the store’s preliminary injunction motion, which would have prevented further sales of our client’s product in the state. The case settled favorably prior to a scheduled jury trial.
  • Successfully argued for a preliminary injunction against a cybersquatter who used the principal mark of a well-known children’s clothing retailer.
  • Brought a trademark action on behalf of a regional dairy company against a convenience store chain that was using a confusingly similar stylized trademark on some of its products. We achieved a favorable settlement and convinced the convenience store chain to voluntarily discontinue all use of the infringing stylized mark.
  • Defended a biotechnology client in a dispute over trademark rights with a large Japanese company. The successful resolution included substantial payment by the plaintiff, which financed our client’s new marketing initiative. 

News

Publications

Press Releases

Legal Alerts