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. 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
Experience
- 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.*
- 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.*
- Represented confectionary company in C.D. Cal. in defense of trademark infringement action, settled prior to summary judgment.
- Represented mattress company as local counsel in trademark infringement case brought by musicians.*
- Represented plaintiffs in a federal lawsuit against sellers of counterfeit consumer products on Amazon.com.
- 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.*
- Represented Sunless, Inc. in worldwide trademark prosecution strategy.
- Represented companies of all sizes in trademark prosecution strategies.
- Assisted numerous multi-national companies with trademark clearance strategies.
- Represented Vita-Mix Corporation in keyword strategy and various litigations and trademark policing.
- Represented major consumer products companies in trademark licensing agreements.
- Successfully prosecuted several domain name disputes.
- Represented Abercrombie & Fitch in trademark prosecution strategy.
- Represented various trademark owners in Opposition and Cancellation proceedings before the Trademark Trial and Appeal Board.
- Counseled various clients on legal issues arisng in web site development, safe harbor protections, and domain name protections.
- Successfully prosecuted and defended many actions involving trademark infringement.
- Representation of members of major musical artist in internal trademark dispute with other members over use of artist's federally-registered name.
- Represented client as defendant in trademark infringement litigation before the court and as opposer in Opposition proceeding before the Trademark Trial and Appeal Board.
- Successfully registered product design trademarks for multinational consumer products company.
- Representation of various Internet music, media, and entertainment companies in drafting streaming and distribution agreements, and in providing general copyright and trademark counseling.
- Counseled clients on the selection and adoption of trademarks, service marks and trade names.
- Represented domain name holder in dispute over registration of domain name; negotiated favorable settlement for domain name holder.
- Represented plaintiff in unfair competition and trademark infringement litigation; U.S. District Court granted summary judgment in favor of plaintiff.
- Successfully stopped infringers and obtained favorable settlements in several product design/trade dress infringement cases.
- Successfully prosecuted several Uniform Dispute Resolution Policy actions.
- Counseled clients regarding selection, use and transfer of domain names.
- Prosecute trademark and service mark applications before the U.S. Patent and Trademark Office.
- 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.*
Articles and Presentations
June 26, 2023
Supreme Court Sends “Bad Spaniels” to the Doghouse
October 14, 2021
75 Years of the Lanham Act & The Trademark Modernization Act
April 14, 2021
Record Penalty for Deceptive ‘Made in USA’ Claims