Trademark

Overview

In this age of instant information and high-tech communications, a company’s success often depends upon the proper protection of its intellectual property, including its trademarks. BakerHostetler’s Trademark team is dedicated to helping our clients strategically grow, secure, protect, defend, and enforce their valuable trademark assets, particularly in light of the rapidly evolving global marketplace. Our team of sophisticated and experienced trademark attorneys and professionals has the knowledge and skills necessary to provide clients with focused solutions in a cost-effective manner, regardless of the type of industry or size of the company.

We study our clients’ business environments and work closely with them in order to better understand their needs, objectives, and goals, which allows us to not only help our clients craft strategies that maximize their portfolio’s value and protection, but to also identify areas of growth.

Trademarks
  • Conduct thorough screenings and searches to ascertain the availability of marks in the United States and throughout the world.
  • Render opinions on the registrability and/or use of a mark, both offensively and defensively.
  • Prepare and prosecute trademark applications for registration throughout the world.
  • Assist clients with strategic portfolio management.
  • Work with a well-established network of firms throughout the world to ensure compliance with local practices and customs.
  • Provide counseling on registration and acquisition of domain names worldwide.
  • Negotiate and prepare complex assignments, licenses, and other agreements.
  • Develop brand guidelines to encourage proper trademark use.
  • Pursue, enforce, and defend our client’s rights, aggressively if needed, in federal and state courts, and before the U.S. Patent and Trademark Office.
  • Handle cybersquatting issues and other related domain name disputes.
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Trademark Prosecution and Maintenance

Members of the BakerHostetler Trademark team have vast experience in all stages of the prosecution of trademark applications domestically, including ex parte appeals before the Trademark Trial and Appeal Board, and maintaining the resulting registrations through post-registration requirements.

Our attorneys and paralegals are also skilled in facilitating the registration of marks in jurisdictions outside the United States. Through our management of numerous international trademark portfolios, we have established relationships with trademark lawyers in jurisdictions throughout the world in an effort to provide our clients with seamless global trademark services. We have a proven ability to manage and maintain thousands of trademark applications and registrations in jurisdictions all over the world.

Oppositions and Cancellations

Clients call on us to enforce rights in their “crown jewel” brands. We seek resolution of disputes without formal adversarial proceedings whenever possible, and, where appropriate, craft agreements that maintain crucial protection for clients’ brands while conserving resources. When litigation is required, we are fully equipped to pursue opposition and cancellation actions, as well as trademark infringement actions in courts in the U.S. and in any necessary foreign jurisdictions. On numerous occasions, our swift enforcement measures have averted the launch of confusingly similar brand names by clients’ competitors.

Trademark Litigation

Our Trademark team manages disputes, including trademark and trade dress infringement, unfair competition, false advertising, dilution, and cybersquatting. Our skill in drafting cease-and-desist letters, or responding to cease-and-desist letters during the initial stages of disputes, frequently saves clients enormous sums of money in the long run. Our capabilities extend to non-U.S. courts and agencies through our network of associated firms throughout the world. We advise our clients on numerous strategic matters and counseling as it relates to trademark disputes. For example, we engage in complex clearance of marks so as to avoid potential issues, we negotiate and revise license and co-existence agreements, including providing strategic advice as to whether such an agreement is appropriate in the first instance, and we engage in meaningful mediation and settlement discussions in order to secure a favorable settlement and/or to mitigate any potential damages on behalf of our clients.

Anti-Counterfeiting

Our Trademark team pioneered anti-counterfeiting programs using a combination of civil and criminal seizure actions and border control through customs authorities in the U.S. and around the globe. Our team coordinates a nationwide network of investigators, attorneys, and government agencies on both the federal and state levels, pursuing individuals and entities trafficking in counterfeit and pirated merchandise. BakerHostetler’s Trademark team regularly seize a wide variety of items, including novelty items, household goods, jewelry, clothing, watches, handbags, accessories, sunglasses, and hats.

Additionally, when applicable, we follow up with the property owners where our seizures occurred to make them aware of the any applicable state laws affecting counterfeiting problems, such as state laws holding landlords liable for tenants’ illegal acts if the landlord had knowledge of the acts but failed to stop to the illegal activity.

Select Experience

  • BakerHostetler works closely with a global expert in data protection and big data management solutions. We provide the day-to-day advice and management of its worldwide trademark portfolio, including handling international clearance and registration, worldwide policing, and transactional matters pertaining to its brands in Asia, Australia, Europe, Latin America, and North America.

  • We manage the crown jewel house-marks of several Fortune 100 global diversified technology and industrial leaders. Our portfolio management services include handling international policing; providing advice regarding clearance, roll-out, and protection of new marks; maintenance; and enforcement.

  • We provide important advice for new and emerging companies by helping them to navigate the myriad choices available for protecting their valuable intellectual property, including the development of a long-term plan for the creation, adoption, and enforcement of their trademarks within their particular budget.
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Professionals

Name Title Office Email
Counsel Denver
Partner New York
Partner Philadelphia
Partner Seattle
Associate Cleveland
Associate Cincinnati
Partner Philadelphia
Associate Philadelphia
Partner Seattle
Associate Atlanta
Counsel Philadelphia
Partner Washington, D.C.
Partner New York
Partner Atlanta
Of Counsel Philadelphia
Partner Cincinnati
Counsel Philadelphia
Partner Chicago
Counsel New York
Partner Los Angeles
Of Counsel New York
Associate Philadelphia
Counsel Philadelphia
Partner Cleveland
Counsel Cincinnati
Partner New York
Counsel Washington, D.C.
Partner Atlanta
Staff Attorney Cleveland
Associate Seattle
Partner Washington, D.C.
Associate New York
Associate Seattle
Partner New York
Partner Washington, D.C.
Partner Atlanta
Partner Cleveland

Experience

  • BakerHostetler works closely with a global expert in data protection and big data management solutions. We provide the day-to-day advice and management of its worldwide trademark portfolio, including handling international clearance and registration, worldwide policing, and transactional matters pertaining to its brands in Asia, Australia, Europe, Latin America, and North America.
  • We manage the crown jewel house-marks of several Fortune 100 global diversified technology and industrial leaders. Our portfolio management services include handling international policing; providing advice regarding clearance, roll-out, and protection of new marks; maintenance; and enforcement.
  • We provide important advice for new and emerging companies by helping them to navigate the myriad choices available for protecting their valuable intellectual property, including the development of a long-term plan for the creation, adoption, and enforcement of their trademarks within their particular budget.
  • We have developed a robust enforcement plan for several clients that includes policing, sending of cease-and-desist letters, follow-up, initiating domain disputes, and, when necessary, engaging in litigation.

Recognition

  • Chambers USA: Intellectual Property:
    • New York Trademark & Copyright (2014 to 2018)
      • Band 3
    • Georgia Intellectual Property (2017, 2018)
      • Band 4
    • Ohio Intellectual Property
      • Band 2 (2016 to 2018); Band 3 (2012 to 2015)
    • Pennsylvania Intellectual Property (2012 to 2018)
      • Band 1
    • Recognized Practitioner: Intellectual Property Litigation in District of Columbia (2017, 2018).
    • Recognized Practitioner: Trademark, Copyright & Trade Secrets in the District of Columbia (2015 to 2017).
  • WTR 1000 – The World's Leading Trademark Professionals (2018)

    • Eight individuals ranked in California, New York, Ohio, Pennsylvania and Nationwide.
    • Four firm rankings in New York, Ohio, Pennsylvania and Nationwide.
  • U.S. News – Best Lawyers "Best Law Firms" Trademark Law (2018)
    • National Tier 1
    • Metro Cleveland, Tier 2
    • Metro Philadelphia, Tier 1
    • Metro Washington, D.C., Tier 2
  • Recognized as one of the top law firms for client service, BakerHostetler was named to the 2019 BTI Client Service 30 for the fifth consecutive year.

News

News

Press Releases

Key Contacts

Blog

In The Blogs

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IP Intelligence: Insight on Intellectual Property
Scout Me Out? Girl Scouts Challenge Boy Scouts’ SCOUTS Trademark
May 16, 2019
A trademark case to keep an eye on this year is Girl Scouts of the USA v. Boy Scouts of America, case no. 1:18-cv-10287, which was filed last November in the United States District Court for the Southern District of New York and is...
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IP Intelligence: Insight on Intellectual Property
Fifth Circuit Decision Highlights Trademark Protection for Fictional Elements
April 24, 2019
As previously reported on this blog, the Southern District of Texas ruled in Viacom International Inc. v. IJR Capital Investments LLC that Viacom could assert common-law rights in the trademark THE KRUSTY KRAB for a fictional restaurant on...
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IP Intelligence: Insight on Intellectual Property
The Federal Circuit Deals Another Blow to Diagnostic Method Patents
April 11, 2019
In another setback for diagnostic method patents, the Federal Circuit rejected efforts by patent owner/appellant Cleveland Clinic[1] to avoid 35 U.S.C. § 101 by restyling diagnostic method claims as “techniques” for detecting a correlation...
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IP Intelligence: Insight on Intellectual Property
Is it ‘anything goes?’ – The US expansive view of trademarks supports a wide variety of ‘nontraditional trademarks.’
April 4, 2019
“Trademark” is broadly defined in Section 45 of the Lanham Act, 15 U.S.C. §1127, as “any word, name, symbol, or device, or any combination thereof” that identifies and distinguishes goods and indicates source. The same definitional breadth...
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IP Intelligence: Insight on Intellectual Property
Federal Circuit Holds That Claims Directed to Methods of Treating Pain in a Renally Impaired Patient Are Patent-Eligible Under Section 101
March 29, 2019
For the second time in as many weeks, the Federal Circuit has reversed a district court’s finding of patent ineligibility under Section 101 in the life science space, this time concluding that claims directed to methods of treating pain in...
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