Practice Areas & Industries: Edwards Wildman Palmer LLP


Trademark and Trade Dress Return to Practice Areas & Industries

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Practice/Industry Group Overview

Our International Trademark and Copyright Protection group consists of more than 50 members – 31 lawyers and 20 paralegals in the United States, United Kingdom, and Hong Kong. We manage complex, on-going brand protection programs for some of the world’s best known global brand owners. Our group is widely known for using innovative and creative strategies to assist clients in securing trademark rights under difficult circumstances.

Brand Protection
Our lawyers are skilled professionals dedicated to the study and use of an ever-changing and dynamic legal, commercial and technological landscape. We work to obtain and protect trademarks, trade dress, design rights, and domain names throughout the world. We provide counsel and opinions concerning the adoption, use and exploitation of these valuable intangible assets.

We recognize that the cost of legal services and litigation can be commercially unreasonable or prohibitive and are sensitive to the rising costs. We are prepared to discuss innovative solutions to manage these expenses while providing effective representation. Our priority is the orderly progress of business and we are strong advocates of preventing such threats from occurring when possible, and efficiently helping you cure those that do arise. Our experience includes:

Preparing, filing and prosecuting trademark and design applications in the US, the UK and Europe.

Foreign trademark registration in other jurisdictions through our established worldwide network of associates. This is a considerable benefit to international brands.

Selection and clearance of trademarks for registration in multiple jurisdictions. We administer the application process with speed, efficiency and economy, anticipating and avoiding and overcoming obstacles. We also monitor competitors' trademarks for conflict, alert our clients and clearly explain available solutions. This enables us to keep clients ahead of any trademark problems.

Structuring viable commercial ventures involving IP. We capitalize effectively on the value in clients' individual brands in different markets and in cyberspace. We stress that integrity of distribution -- i.e., where the brand and its associated products are sold -- is as important for consumer protection as reliable origin information. With this in mind, we proactively advise on the delivery control of a brand's products and services.

Initiating and conducting opposition and cancellation actions against infringing, threatening and unfairly competing brands. We conduct infringement and unfair competition litigation in the US (state and federal), the UK, and other courts in Europe and, where appropriate, would bring court actions and dispute resolution proceedings regarding misuse or misappropriation of brands on the Internet. This is particularly relevant to brands which are on track to make an impact in countries where grey-market clothing, sporting goods, and associated brand products are prevalent.

Advising clients on alternative types of intellectual property protection available under both federal and state law in the US. Our objective is to ensure that clients receive the fullest return possible on their investment in reputation and design. We help to determine whether the brand is eligible or qualifies for alternative protections.

Leveraging of intellectual property assets through licensing. We represent both licensors and licensees. Advising on these different interests gives us understanding of how to determine priorities and to help shape these to achieve optimum results. Effectively providing creative solutions to seemingly insurmountable problems is a valuable advantage at the negotiation stage.

IP due diligence assessments for mergers, acquisitions and divestitures, negotiating protection in the agreements, and transferring title and rights to such properties. We consult on ways clients can effectively administer and maintain trademark operations, which helps keep their costs to a minimum.

Pursuing protection in cyberspace. We help choose, register and protect Internet domain names and defend trademarks from infringement and misappropriation on the Internet. We also advise about the application of intellectual property laws in cyberspace and represent clients in arbitration proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP) and in judicial proceedings to remove cybersquatters’ improper registration of trademarks as domain names

Enforcement / Anti-Counterfeiting
Intellectual property crime is committed when products are copied or marketed for profit without the consent of the rights holder. Counterfeiting can affect sales as well as cause unquantifiable damage to reputation. Our experienced lawyers can help combat product counterfeiting and piracy and protect rights. Edwards Wildman can also assist with the enforcement of intellectual property rights against third parties who use identical or similar marks and are thus infringing rights and confusing the public. Our experience in this area includes:

Disputes and litigation arising from intellectual property rights. Our clients have successfully challenged, with our assistance, the rights of others to exclude them from competing in many business areas. We have similarly assisted in preventing others from infringing their exclusive rights to exploit their intellectual property. We pride ourselves on representing our clients in their most complicated litigations with common sense and with meticulous attention to details.

Trademark, service mark and trade dress disputes, including clothing and costume jewelry manufacturers and brands, toys and games, wrist watches, and swimming products. This experience includes issues of counterfeiting, trademark/service mark infringement, trade dress infringement, infringement based on quality control issues under Adolph Coors, repackaging infringement cases under Prestonettes, and first-sale doctrine matters. Recently, we protected the trade names of a well-known modeling agency and a large wholesaler of consumer products.

Trade secret claims and claims based upon non-competition agreements in a variety of contexts. Our clients include both plaintiffs and defendants in trade secret claims involving manufacturing processes, customer databases, equipment design, and financial transactions. We have particular skills in the application of the "inevitable disclosure" doctrine and in business tort cases involving allegations of "diversion" and alleged unlawful "grey-market" transactions that often include trademark and copyright allegations in connection with state law unfair competition claim.