Trademarks

Benesch’s Intellectual Property Practice Group has a full-service trademark practice. We represent clients in every phase of the trademark process in the U.S. and coordinate trademark-related activities outside the U.S.

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Overview

Among other things, our trademark lawyers obtain trademark registrations for clients and assist them in developing and implementing enforcement programs on a global basis. Our trademark litigators represent clients in courts and administrative agencies throughout the U.S. and have produced excellent results for our clients.

Services include:

Advising clients on the selection, adoption, use, and registration of trademarks and domain names.

Obtaining state and federal trademark registrations for clients.

Drafting and negotiating trademark-related agreements, including trademark licenses and private label agreements.

Prosecuting and defending trademark and trade dress infringement actions.

Advising clients on proper trademark usage and policing their marks.

Related Practices

Intellectual Property

High performance in practice

Recognized by Chambers® 2025

Ranked Tier 2 Nationally

2026 Best Lawyers® “Best Law Firms”

Experience

Represented mattress company as local counsel in trademark infringement case brought by musicians.*

Key Contacts: Laura M. Schaefer

Represented plaintiffs in a federal lawsuit against sellers of counterfeit consumer products on Amazon.com.

Key Contacts: Laura M. Schaefer

Represented biotech company in defense of trademark infringement and trade secret misappropriation action, case dismissed by plaintiff as a result of strategic discovery requests by defense.*

Key Contacts: Laura M. Schaefer

Represented a Fortune 50 corporation as second chair of a hotly-contested and complex U.S. trademark opposition that lasted over four years and resulted in favor of the client, upholding key evidentiary objections and arguments against any likelihood of confusion which were fundamental in the determination of the matter.*

Key Contacts: Laura M. Schaefer

Represented confectionary company in C.D. Cal. in defense of trademark infringement action, settled prior to summary judgment.

Key Contacts: Laura M. Schaefer

Obtained summary judgment in favor of confectionary company, finding competitor’s trade dress functional, resulting in dismissal of case.  Judgment upheld by Third Circuit Court of Appeals.*

Key Contacts: Laura M. Schaefer

Represented Sunless, Inc. in worldwide trademark prosecution strategy.

Key Contacts: Mark E. Avsec

Represented various trademark owners in Opposition and Cancellation proceedings before the Trademark Trial and Appeal Board.

Key Contacts: Susan E. Clady

Represented major consumer products companies in trademark licensing agreements.

Key Contacts: Mark E. Avsec

Represented client as defendant in trademark infringement litigation before the court and as opposer in Opposition proceeding before the Trademark Trial and Appeal Board. Court dismissed opponent’s case with prejudice and the Board refused registration of opponent’s trademark

Key Contacts: Susan E. Clady

Represented Abercrombie & Fitch in trademark prosecution strategy.

Key Contacts: Mark E. Avsec

Counseled clients regarding selection, use and transfer of domain names.

Key Contacts: Susan E. Clady

Represented domain name holder in dispute over registration of domain name; negotiated favorable settlement for domain name holder.

Key Contacts: Susan E. Clady

Successfully prosecuted several domain name disputes.

Key Contacts: Mark E. Avsec

Prosecute trademark and service mark applications before the U.S. Patent and Trademark Office.

Key Contacts: Susan E. Clady

Represented Vita-Mix Corporation in keyword strategy and various litigations and trademark policing.

Key Contacts: Mark E. Avsec

Counseled clients on the selection and adoption of trademarks, service marks and trade names.

Key Contacts: Susan E. Clady

Assisted numerous multi-national companies with trademark clearance strategies.

Key Contacts: Mark E. Avsec

Represented companies of all sizes in trademark prosecution strategies.

Key Contacts: Mark E. Avsec

Representation of various Internet music, media, and entertainment companies in drafting streaming and distribution agreements, and in providing general copyright and trademark counseling.

Key Contacts: Mark E. Avsec

Successfully registered product design trademarks for multinational consumer products company.

Key Contacts: Mark E. Avsec

Representation of members of major musical artist in internal trademark dispute with other members over use of artist’s federally-registered name.

Key Contacts: Mark E. Avsec

Successfully prosecuted and defended many actions involving trademark infringement.

Key Contacts: Mark E. Avsec

Counseled various clients on legal issues arisng in web site development, safe harbor protections, and domain name protections.

Key Contacts: Susan E. Clady

Successfully prosecuted several Uniform Dispute Resolution Policy actions.

Key Contacts: Mark E. Avsec

Successfully stopped infringers and obtained favorable settlements in several product design/trade dress infringement cases.

Key Contacts: Mark E. Avsec

Represented plaintiff in unfair competition and trademark infringement litigation; U.S. District Court granted summary judgment in favor of plaintiff.

Key Contacts: Susan E. Clady

Second-chaired arbitration for a global industrial automation company defending against allegations of trade secret misappropriation and breach of contract relating to remote monitoring and control technology, resulting in an award of over $1M in attorney’s fees to the client.*

Key Contacts: Charanjit Brahma

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