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Practice/Industry Group Overview
We provide a full range of trademark services performed by lawyers who dedicate their practices solely to trademarks, unfair competition, and other closely related issues, such as domain names and rights of publicity. Our lawyers provide initial counseling, search services, clearance opinions, and preparation and filing of applications for registration of trademarks in the United States and around the world.
Our Intellectual Property (IP) lawyers regularly litigate issues involving trademark and trade dress infringement, unfair competition, dilution and cybersquatting, and prosecute and defend trademark oppositions and cancellation actions before the United States Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB). We pioneered anti-counterfeiting programs utilizing a combination of civil and criminal seizure actions and border control through Customs authorities.
Additionally, we negotiate and draft all forms of trademark-related agreements, such as licenses and transfer agreements, and have performed due diligence studies in the context of domestic and international mergers and acquisitions. We also provide clients with standard operating procedures and "best practices" to assist in identifying, securing and maintaining trademark rights.
Baker Hostetler also provides enforcement monitoring services and can provide client-specific and portfolio-specific Internet portals. These portals allow clients to easily and efficiently assess the status and value of their IP portfolio for general commercial purposes and compliance with regulatory requirements such as Sarbanes-Oxley.
Leadership in Action
Trademarks: Protecting a sporting association's right to use images of its sport as trademarks
Client: United States Polo Association (USPA)
Type of Matter: Trademark infringement case in the U.S. District Court for the Southern District of New York.
Our Client's Challenge: Polo Ralph Lauren filed a lawsuit which sought an injunction barring USPA from using four logos featuring two men playing polo on horses on licensed goods including clothing, leather goods, watches and sporting equipment.
The Goal: Convince the jury that USPA, as the governing body of the sport, had the right to use images of polo being played in a licensing program despite the fame of the Ralph Lauren polo player.
Our Strategy: Educate the jury to better understand the sport of polo, the people who play it, and their legitimate interest in supporting the sport by selling goods bearing images of the sport.
Results: The jury unanimously found that three of the four trademarks adopted by the USPA did not infringe Polo Ralph Lauren's trademark rights.
Leadership in Action
Trademarks: Defending our client's trademark
Client: York International Corporation
Type of Matter: Suit for trademark infringement brought by Carrier Corporation in the U.S. District Court for the Southern District of Indiana.
Our Client's Challenge: Protect its rights in the AFFINITY trademark used with its new HVAC product line.
The Goal: Rebut Carrier's allegations of trademark infringement, show that York's AFFINITY trademark does not infringe Carrier's INFINITY trademark, and prevent Carrier from obtaining a preliminary injunction from the court.
Our Strategy: Rebut Carrier's claim that its INFINITY mark had therefore acquired secondary meaning and to rebut Carrier's allegations of trademark infringement.
Results: The court denied Carrier's motion for preliminary injunction. Carrier withdrew its complaint with prejudice in exchange for York entering into a consent motion asking the court to vacate a portion of its Order.
About Our Intellectual Property Team
Our team of dedicated Intellectual Property (IP) lawyers and patent agents have the diverse backgrounds and core strengths required to ensure that the full spectrum of domestic and international IP is considered in securing IP and formulating IP strategies. Members of our IP team have worked as engineers and in-house patent, trademark and copyright counsel for companies and agencies as diverse as Borg Warner, Capitol Records, DuPont, the United States Patent and Trademark Office (USPTO), the United States International Trade Commission (ITC), the Justice Department (Civil Division, Intellectual Property) and the Federal Trade Commission (FTC).
Our team members also include adjunct IP law professors, columnists, the co-founder of the longest-running journal on computer technology, and regular lecturers for the Zurich Institute of Technology, Georgetown University and George Mason University. In addition, our team members frequently speak and write for continuing legal education programs and industry events and are quoted in the press on emerging issues.
Baker Hostetler is a member of the International Trademark Association (INTA), American Intellectual Property Law Association (AIPLA), Intellectual Property Owners Association (IPO), Licensing Executive Society (LES), The International AntiCounterfeiting Coalition (IACC), International Licensing Industry and Merchandisers Association (LIMA), as well as numerous local and regional IP organizations.
About Baker Hostetler
Baker Hostetler lawyers help clients establish, maintain and protect market-leading positions across the United States and around the world. We offer clients the strength of 600+ lawyers in a full range of practices, a unique geographic platform including both the coasts and the center of the country, a deep knowledge of industry issues, and a 90-year track record of excellence and achievement.
For more information on our Trademarks, Trade Dress and Domain Names practice:
National Contact
John H. Weber
202.861.1526
jweber@bakerlaw.com
Cincinnati
William Appleton
513.929.3403
wappleton@bakerlaw.com
Cleveland
Thomas H. Shunk
216.861.7592
tshunk@bakerlaw.com
Deborah A.Wilcox
216.861.7864
dwilcox@bakerlaw.com
Columbus
Rosanne T. Yang
614.462.2684
ryang@bakerlaw.com
Costa Mesa
George T. Mooradian
714.966.8800
gmooradian@bakerlaw.com
Denver
Raymond L. Sutton
303.764.4103
rsutton@bakerlaw.com
Houston
Lisa H. Pennington
713.646.1303
lpennington@bakerlaw.com
Los Angeles
James E. Doroshow
310.442.8818
jdoroshow@bakerlaw.com
C. Dennis Loomis
310.442.8865
dloomis@bakerlaw.com
New York
Gerald J. Ferguson
212.589.4238
gferguson@bakerlaw.com Orlando
G. Thomas Ball
407.649.4004
tball@bakerlaw.com
Washington, DC
Gary J. Rinkerman
202.861.1699
grinkerman@bakerlaw.com
Kenneth J. Sheehan
202.861.1682
ksheehan@bakerlaw.com
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