Practice Strengths

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.

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About Our Intellectual Property Team

Our team of dedicated IP lawyers and patent agents has 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 USPTO, 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.