Trademark and Copyright

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 and Copyright 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 and copyright attorneys and professionals have 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.

Trademark
  • 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.

Copyright

BakerHostetler’s experience in handling copyright issues in media spans more than 95 years. In that time we have been there alongside our clients as they grappled with changes in the way content is distributed, copied, and created.

We represent a range of clients from individuals and start-ups to some of the world’s largest content providers, including publishing companies, television and radio networks, film studios, performance rights societies and recording and production companies, online media companies, and professional sports leagues. Our team of sophisticated attorneys and professionals utilizes its experience in software and reproduction technologies, along with its depth of knowledge in intellectual property, media, and Internet law, to remain at the forefront of legal issues, including those created by evolving technologies. This broad base of knowledge and skills allows us to provide our clients with focused solutions in a cost effective manner, regardless of industry type or company size.

Intellectual property strategies must adapt to evolving content delivery methods, such as Bit Torrent, HTML5, and 3D printing, to protect both innovators of and participants in the new digital frontier. Our seasoned team carefully examines all aspects of our clients’ needs and provides a full array of services, including litigation of all types of rights related issues, sophisticated transactions, traditional prosecution, and portfolio management.

Working across practice groups and with attorneys throughout the firm, our team counsels clients in copyrights and trademarks, trade secrets, licensing agreements, IP business strategies, and, when pertinent, patent procurement. We represent clients in all kinds of content industries—including musicians and music companies, graphic novelists and large publishers, gamers and the biggest software providers, and content creators for whom descriptions are still being invented. Our team regularly litigates copyright cases in federal courts nationwide, with cases ranging in focus from well-known musical compositions and works of fine art to jewelry designs and software. We manage copyright matters in contexts that include variable printing technologies, Internet advertising, cryptography hard disk cache algorithms, network administration, and security and automated payment systems. We also enforce rights under the Digital Millennium Copyright Act, including issuing “John Doe” subpoenas to learn the identities of anonymous infringers. Our attorneys have represented everyone from Elvis Presley to Microsoft.

Areas of Focus
  • Counsel on effective and appropriate use and protection
  • Assist with rights clearance
  • Registration practice
  • Copyright enforcement programs
  • Prosecute and defend infringement claims
  • Negotiate and prepare appropriate consents, licenses, and releases
  • Develop internet policies, terms and conditions, and website review
  • Monitor legislation that impacts on copyright rights and usage
  • Internet delivery and infringement issues
  • Brand management, competition, and advertising issues
  • Licensing
  • Internal investigations
  • New media/emerging technologies
  • Social media

Select Experience

Trademark
  • 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.
Copyright
  • Counseling a rapidly expanding distance learning platform provider to prestigious higher education institutions in connection with intellectual property protection and licensing.
  • Successfully defended client in copyright infringement action against an advertising agency that created an auto dealership marketing campaign on YouTube.
  • Obtained a successful resolution of an infringement claim by Facebook.
  • Obtained a jury verdict, which was upheld on appeal, in action brought by a songwriter in connection with a copyright ownership dispute in a musical composition used by the Black Eyed Peas.
  • Obtained recent jury verdicts in copyright and trademark ownership and infringement actions in federal district courts in New York, California, Arizona, and Louisiana, all which were upheld on appeal.
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Professionals

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

Experience

Trademark
  • 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.
Copyright
  • Counseling a rapidly expanding distance learning platform provider to prestigious higher education institutions in connection with intellectual property protection and licensing.
  • Successfully defended client in copyright infringement action against an advertising agency that created an auto dealership marketing campaign on YouTube.
  • Obtained a successful resolution of an infringement claim by Facebook.
  • Obtained a jury verdict, which was upheld on appeal, in action brought by a songwriter in connection with a copyright ownership dispute in a musical composition used by the Black Eyed Peas.
  • Obtained recent jury verdicts in copyright and trademark ownership and infringement actions in federal district courts in New York, California, Arizona, and Louisiana, all which were upheld on appeal.
  • Successful resolution of litigation concerning compensation for digital exploitation of musical and audiovisual properties.
  • Obtained judgment, which was upheld on appeal, for a large media company in connection with foreign and digital royalties.
  • Obtained successful resolution of right-of-publicity action brought on behalf of a musician against a Broadway show.

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 2020 BTI Client Service 30 for the sixth consecutive year.

News

News

Press Releases

Key Contacts

Blog

In The Blogs

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IP Intelligence: Insight on Intellectual Property
Can Booking.com Trademark Its Company Name? How Will the U.S. Supreme Court Resolve Whether a Generic Term Plus a Top-Level Domain Is Protectable?
By Jason S. Oliver
January 15, 2020
The legal battle between Booking.com BV and the U.S. Patent and Trademark Office (USPTO) began more than five years ago and concerns whether the online hotel booking company can secure a trademark registration for its name. After filing...
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IP Intelligence: Insight on Intellectual Property
Who Is Holding the Bag: How Will the Supreme Court Resolve the Circuit Split on Recovery of Profits in Trademark Cases?
By Jacqueline M. Lesser
December 31, 2019
Two weeks from now, on January 14, 2020, the Supreme Court will hear oral argument in Romag Fasteners, Inc. v. Fossil, Inc. on the long-standing circuit split over whether willful infringement is a necessary precondition for an award of...
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IP Intelligence: Insight on Intellectual Property
Five Counterfeit Hotspots in New York that Brand Owners Must Be Aware Of
By Robertson D. Beckerlegge, Heather J. McDonald
November 8, 2019
The issue of fake goods in New York City has been widely covered for a number of years. For example, earlier this year, the South China Morning Post looked at the “rising counterfeit market” in New York, especially around luxury goods. It...
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IP Intelligence: Insight on Intellectual Property
Kanye West Denied Trademark Registration for ‘SUNDAY SERVICE' Mark
By C. Dennis Loomis
October 23, 2019
Global rap icon Kanye West is one of the most visible and controversial personalities on the contemporary scene. He has long been recognized as one of the best rap creators and performers of his generation. More recently, his prominence...
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IP Intelligence: Insight on Intellectual Property
A Punctuation Mark: Off-White Files Trademark Application for "PRODUCT BAG"
By Savannah Merceus
October 21, 2019
Last summer, streetwear brand Off-White filed an application with the United States Patent and Trademark Office (USPTO) to register the mark “PRODUCT BAG.” With other Off-White goods bearing logos such as “MAKE UP,” “GOODS,” and...
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