Practice Areas & Industries: Eversheds Sutherland (US) LLP


Trademarks & Service Marks Return to Practice Areas & Industries

Group Profile Lawyers in this Group Offices Locations for this Group

Practice/Industry Group Overview

When prominent brands need to establish trademarks and service marks for new products, or defend their marks in court, they rely on Sutherland.

In today’s global market, where ideas and brands are often more valuable than physical property, companies must ensure the integrity of their trademarks and service marks. Some of the world’s best-known consumer products companies trust their trademark and service mark work to Sutherland. Our clients rely on us to develop, manage and enforce their trademark portfolios in the U.S. and abroad. We develop strategies and best practices that maximize portfolio value and meet business goals. We work with our intellectual property clients to acquire and protect their marks, as well as the consumer recognition and goodwill associated with their marks in all markets.

We handle major trademark portfolios for a number of large companies, including many consumer products clients whose marks represent significant financial and strategic value. Whenever necessary, we also defend against unwarranted accusations of infringement. Our trademark team represents clients in litigation in federal courts throughout the U.S. and before administrative agencies such as the U.S. International Trade Commission (ITC) and the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office (USPTO).

Most of our IP attorneys hold technical degrees in fields such as chemical engineering, mechanical engineering, software and electrical engineering, biomedical engineering and chemistry, so they truly understand the industries in which our clients operate. Our IP attorneys also utilize the substantial knowledge of their Sutherland colleagues whose practices focus on mergers and acquisitions, private capital, tax, and outsourcing and systems integration. In international matters, we work closely with a network of law firms in more than 200 countries throughout the world.

Why Sutherland
Comprehensive advice.
Our attorneys counsel clients on all aspects of trademarks and service marks, including choice of marks, preparing clearance opinion memos, preparing trademark applications, representing clients in opposition and cancellation proceedings, supervising audits and performing due diligence, licensing and assigning marks, managing portfolios, and policing against potentially infringing marks throughout the world.

Corporate and regulatory backgrounds. Some of our attorneys previously worked as in-house counsel for some of the world’s most recognized brand owners and creators and others worked for federal agencies, including the USPTO.

Versatility. We have experience in a broad range of consumer products industries, including beverages, food products, packaging, personal computing equipment, hunting equipment and clothing.

Consumer products knowledge. We recognize how changes in consumer lifestyle preferences, as well as advances in science and technology, have led to significant and continued growth in the consumer products industry. We know that companies invest heavily in proprietary technology, and how important it is to protect the brands associated with those investments.

Diverse client base. We represent some of the world’s most recognizable brands. On the other end of the spectrum, we also represent entrepreneurs and small and mid-size companies.

Strategic vision. Our attorneys understand the critical importance of capitalizing on and protecting innovation and brand name reputation.

Willingness to go to trial. Our Intellectual Property Litigation team comprises experienced trial lawyers who have represented plaintiffs and defendants in more than 100 trials and legal proceedings in all forums. We know when and how to fight on behalf of our clients.

National recognition. Our attorneys have been recognized by some of the leading ranking organizations.

International reach. In today’s internet age, companies need to monitor and protect their trademarks and service marks. We have the reach and scope to help our clients maintain their legal rights and reputation around the globe.

Nuts and Bolts
We work with our intellectual property clients to acquire and protect the names, marks and symbols used to identify their businesses, products, goods or services in the U.S. and abroad. Our counsel and representation extend to all facets of trademark law, including:

  • Counseling clients about their choice of names and marks, including performing searches to determine the availability of names and marks for use and/or registration
  • Preparing and filing trademark applications in the U.S. and abroad
  • Prosecuting trademark applications
  • Advising about marketing and advertising brands, products and services as they relate to trademark use and protection
  • Policing potentially infringing uses of our clients’ marks online and around the world
  • Representing clients in opposition and cancellation proceedings before the USPTO’s Trademark Trial and Appeal Board and advising clients in connection with foreign opposition or cancellation proceedings
  • Supervising trademark audits and performing due diligence as part of corporate structuring and restructuring
  • Counseling clients about resolving conflicts concerning trademark or service mark infringement, unfair competition, trade practices and related matters
  • Handling issues relating to the transfer of marks or rights, such as by licensing, assignment, security agreements, mergers or acquisitions
  • Litigating in federal and state courts involving matters of trademark grants, infringement and dilution, unfair trade practices, licensing and assignment
  • Representing clients in Section 337 cases before the International Trade Commission
  • Representing clients in domain name arbitration proceedings

Take Action
Sutherland’s IP Group, active since 1955, works closely with clients to create and leverage the greatest possible value from trademarks and service marks, and to relentlessly protect that value.

Selected Experience
Manages the IP portfolio for a leading manufacturer of hosiery products and apparel.
Counsels a leading manufacturer of hosiery products and apparel on selecting, adopting, protecting and managing its IP portfolio.

Advises a Fortune 50 company on its trademarks for technologies as software for medical management and hospital administration.
Counsels a Fortune 50 company on its trademarks, including selection, adoption and protection. These trademarks cover such technologies as software for medical management and hospital administration.

Sutherland represents Printpack in trademark matters.
Sutherland provides domestic and international trademark intellectual property services to Printpack, Inc.

Group Presentations
  Fraud in Trademark Cases: Impact of the Bose Case, April 23, 2010
Trademark and Copyright Strategies, April 12, 2010
INTA Roundtable: Policing trademarks on the Internet, an update, including protecting and policing trademarks on social networks and sites such as Twitter, Facebook, YouTube, and Second Life, January 12, 2010
Past Seminar Materials
  2010 Corporate Intellectual Property Institute, November 4, 2010
22nd Annual North American Entertainment, Sports and Intellectual Property Law Conference, November 4, 2010