Trademarks and Brand Management
The global, electronic business economy mandates a strategic approach to trademark selection, clearance, adoption and protection. In today's rapidly changing business environment, brand owners must consider more than simply owning registrations in particular jurisdictions. Developing and implementing internal, local and global trademark strategies is essential.
Our group has a wealth of experience in, and a proven track record of, guiding and advising our clients in their U.S. and global branding initiatives. We work closely with our clients to understand their business and to assist with the identification of assets that are worth protecting and those that are not. By working collaboratively and strategically with our clients, we are able to streamline the brand development and protection process, so that each client's branding initiatives are both effective and cost-efficient.
Trademark Clearance, Prosecution and Maintenance
We assist clients with the selection and clearance of new trademarks as well as the prosecution of trademark applications in the United States and elsewhere. While there are many "mechanical" aspects of trademark prosecution and clearance practice, an overall and guiding strategy must direct this work. The rising cost of obtaining and maintaining global protection requires tough decisions about the scope of protection for a particular brand. Our ability to assist clients in readjusting their portfolios to reflect alignment with business objectives has resulted in significant reductions in legal expenses for trademark clearance, prosecution and maintenance work.
Trademark Watching and Policing
Trademark-savvy companies recognize that maintaining a trademark's strength requires affirmative action to prevent third-party use of the same or similar marks. The cost of litigation, however, makes court action against every infringer impracticable. Thus, trademark owners face a dilemma: Failure to police a mark can weaken it substantially, but instituting a federal action against every third-party user is not economically feasible.
An effective trademark policing program is one that allows a company to understand the scope of protection afforded a particular mark, and to maintain those rights while avoiding the need for litigation. A key aspect of the program is early detection, before the infringer has invested significant sums in the infringing mark. For this reason, we offer a variety of watching solutions, including, for example, watching newly filed and recently published applications, and common law and business name usage. In addition, we work with clients to develop an overall strategy before sending a cease and desist letter, so that the client is prepared to deal with any eventuality (including third parties who refuse to cease their infringing activities or who otherwise claim a right to continue to use their mark).
Trademark Licensing
We are involved in all aspects of a global trademark licensing practice, including negotiating and drafting marketing and distribution agreements, licensing agreements and franchise agreements. We often assist clients in developing model licensing provisions which are included in all purchase orders, leases, or similar documents. Such services enable our clients to capitalize on the goodwill of their trademarks, and to realize value where they otherwise may have thought none existed.
Due Diligence in Mergers/Acquisitions
We work closely with our firm's corporate lawyers in connection with mergers and acquisitions. Our experienced team members are able to quickly spot trademark and copyright issues in a target acquisition. We collaborate with the corporate deal team, as well as the client, to assess the risk associated with acquiring certain assets. We conduct targeted due diligence to ensure that our clients acquire intellectual property assets free of encumbrances or other surprises, and draft appropriate representation and warranty provisions of purchase agreements.
Litigation and Adversarial Work
While we work hard to help our clients avoid litigation, litigation is sometimes unavoidable. In these situations, clients recognize the importance of having such matters handled by seasoned trial lawyers attorneys who think strategically and who are able to persuasively present the client's case to a judge or jury. Day Pitney attorneys have decades of trial experience, and possess the substantive depth to handle all types of trademark, copyright, false advertising, right of publicity and Internet-related litigation, as well as disputes regarding intellectual property licensing agreements.
In addition to federal and state court litigation, our attorneys routinely handle cancellation and opposition proceedings before the United States Patent and Trademark Office's Trademark Trial and Appeal Board, and we advise clients about similar proceedings around the world. We also have successfully recouped numerous domain names for clients under ICANN's Uniform Dispute Resolution Policy. By using this procedure, we have helped our clients to successfully enforce their rights against cybersquatters and to protect their brands in a cost-effective manner.
Day Pitney attorneys have an excellent track record litigating all types of intellectual property cases. Among other cases, the attorneys in the Trademark, Copyright and Advertising Group have:
- Successfully litigated the first case to be decided by a federal appellate court under the federal Anticybersquatting Consumer Protection Act
- Obtained judgment, and affirmance by the Eleventh Circuit Court of Appeals, in favor of a major HVAC manufacturer who was alleged to have engaged in false advertising in violation of the Lanham Act
- Successfully defended preliminary injunction motions filed against a multibillion dollar reinsurance company and a major life insurance company in separate trademark infringement actions in federal court
- Developed a strategy with a major pharmaceutical company to police its trademarks on the Internet, including successfully prosecuting domain name holders in ICANN proceedings
- Defended a prominent architectural firm against claims of copyright infringement relating to architectural drawings
- Obtained judgment on all claims in a trademark infringement trial for a major gaming company, and obtained affirmance by the Ninth Circuit
- Obtained a trial victory in favor of a trademark applicant in an opposition proceeding before the Trademark Trial and Appeal Board, enabling the company to proceed with registration of its trademark relating to a stored-value card
