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 the global expert in data protection and big data management solutions. We provide the day-to-day advice and management of their worldwide trademark portfolio, including handling international clearance and registration, worldwide policing, scope of rights, transactional matters pertaining to brands, and roll-out and protection of new marks and enforcement 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
Partner Los Angeles
Partner Philadelphia
Partner Seattle
Associate Cleveland
Partner Philadelphia
Partner Philadelphia
Associate Atlanta
Associate Philadelphia
Partner Washington, D.C.
Partner New York
Partner Cincinnati
Partner Houston
Counsel Philadelphia
Partner Chicago
Counsel New York
Partner Los Angeles
Associate Philadelphia
Partner Cleveland
Partner New York
Associate Philadelphia
Counsel Philadelphia
Partner New York
Partner Cleveland
Counsel Cincinnati
Partner New York
Partner Atlanta
Partner Washington, D.C.
Associate New York
Partner New York
Associate Philadelphia
Partner Washington, D.C.
Partner Cleveland

Experience

  • BakerHostetler works closely with the global expert in data protection and big data management solutions. We provide the day-to-day advice and management of their worldwide trademark portfolio, including handling international clearance and registration, worldwide policing, scope of rights, transactional matters pertaining to brands, and roll-out and protection of new marks and enforcement 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
    • Trademark & Copyright in New York (2014 to 2017)
    • Recognized Practitioner: Trademark, Copyright & Trade Secrets in the District of Columbia (2015 to 2017)
  • BTI Client Service 30: BakerHostetler advanced 19 positions to #9 (2016)
  • WTR 1000—The World's Leading Trademark Professionals (2017)
    • 6 individuals ranked in California, New York, Ohio, Pennsylvania, and Nationwide
    • 4 firm rankings in New York, Ohio, and Pennsylvania
  • U.S. News - Best Lawyers "Best Law Firms" Trademark Law (2017)
    • National Tier 1
    • Metro Cleveland, Tier 2
    • Metro New York, Tier 3
    • Metro Philadelphia, Tier 1
    • Metro Washington, D.C., Tier 2

News

News

Press Releases

Key Contacts

Blog

In The Blogs

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IP Intelligence: Insight on Intellectual Property
The Federal Court Reverses a Hindsight Reconstruction of An Important Pharmaceutical Invention
July 20, 2017
In Millennium Pharmaceuticals v. Sandoz,[1] the Federal Circuit reversed the district court’s holding of obviousness of certain claims of Millennium-owned U.S. Patent No. 6,713,446 (the ‘446 patent), finding that the district court...
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IP Intelligence: Insight on Intellectual Property
“All Expenses Paid” Is No Trip to the E.D. Va. for Patent and Trademark Applicants
July 18, 2017
Authored by: Kristie Butler, Summer Associate On June 23, 2017, the Federal Circuit confirmed in Nantkwest, Inc. v. Matal (No. 2016-1794) that patent applicants facing rejection from the Patent Trial and Appeal Board (PTAB) may seek relief...
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IP Intelligence: Insight on Intellectual Property
The Supreme Court Delivers a Win for Biosimilar Manufacturers in Sandoz v. Amgen
June 28, 2017
On June 12, 2017, the Supreme Court issued a unanimous opinion in Sandoz v. Amgen, interpreting key provisions of the Biologics Price Competition and Innovation Act (BPCIA) in favor of biosimilar manufacturers (applicants).[1] In...
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IP Intelligence: Insight on Intellectual Property
Supreme Court Finds Lanham Act Disparagement Clause Unconstitutional Under First Amendment
June 22, 2017
In a victory for the Asian-American rock band The Slants, the Supreme Court ruled on June 19 that the ban on the registration of disparaging trademarks under Section 2(a) of the Lanham Act violates the First Amendment. The ruling follows a...
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IP Intelligence: Insight on Intellectual Property
PTAB Grants Discovery to Underlying Test Data
June 19, 2017
Discovery in inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB) is typically quite limited, and the PTAB normally is reluctant to grant motions for additional discovery. It is instructive, therefore, when the...
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