Client Services / Intellectual Property / Trademark/Brand Protection & Enforcement

Trademark/Brand Protection & Enforcement

McDermott Will & Emery’s trademark lawyers are dedicated to protecting what are often our clients’ most prized assets around the world—their brand name, identity and reputation.  We understand that resolving issues related to the clearance and approval of an important new brand name today can be just as critical as representing and securing our clients’ rights in the courtroom tomorrow.  Simply stated, success is the only option when our clients’ good names are on the line.

Our Team

With about 30 full- or majority-time professionals, McDermott has a full-service, global trademark practice that consistently ranks among the top 10 U.S. trademark practices, as listed by Intellectual Property Today, IPLaw 360 and other major rankings tables.

We are leaders in our field. Members of our practice are listed in the International Who's Who of Trademark Lawyers, Chambers Global and Chambers USA. Some of our lawyers have served as trademark examiners at the U.S. Patent and Trademark Office, in-house counsel at leading consumer brand companies, expert witnesses in trademark litigation, first-chair federal trial and appellate counsel in trademark litigation and other positions of expertise. 

Our trademark lawyers and support teams are strategically distributed across our U.S. and international offices. In addition, we have strong working relationships with trademark counsel in nearly every other country of the world. As a result of our long-standing relationships, these colleagues can be mobilized quickly to make emergency filings or tackle infringement and piracy problems without delay.

Our Experience

Availability and Clearance of New Trademarks

While famous “house marks” are often the bedrock of a company’s reputation, we also know that a steady stream of new brands keeps business fresh and competitive. At the end of the day, we know that our clients’ marketing personnel want to be able to use and protect the new brands that we are asked to evaluate, and we are committed to finding creative solutions for “getting to yes” (and doing so in plain English) whenever possible.

Trademark Registration and Portfolio Management

Strategic coordination and management of trademark portfolios is critical to a successful global brand, and our lawyers frequently advise on prioritizing brand protection resources and helping clients reap the biggest “bang for the buck” from their trademark protection budgets. We know that even the largest and most successful companies do not have unlimited resources; therefore, we counsel our clients in making practical and wise decisions within their target budgets. McDermott’s services span all aspects of portfolio management, from strategic global protection and maintenance (where we identify and close holes in global trademark portfolios) to brand architecture, re-branding, brand revitalization, brand modernization, domain name portfolio management and sophisticated brand enhancement services. In those regards, we regularly partner with outside marketing and advertising consultants, as well as creative services companies that specialize in the creation and evolution of brands.

Licensing, Brand Extensions and Trademark Leveraging

With valuable trademarks, it is prudent to consider whether there are untapped revenue streams available to expand profitability at limited additional expense. For example, we frequently advise on such ideas as the possibility of brand extensions to new goods and services, synergistic co-branding opportunities and joint-venturing with other brand owners, and franchising opportunities for better trademark visibility and revenue enhancement.

Advertising and Promotions

Our lawyers understand that the ability to advertise and promote a brand is central to the brand’s value. We also know that some of the most effective advertising tests current boundaries and reflects thinking “outside of the box.” However, we recognize the value and importance of a systematic advertising clearance protocol that assesses and identifies risks before our clients commit to new advertising. Our advertising clearance services support aggressive advertising within the bounds of the law.

Social Media

Beyond the issue of the content of advertising and promotions, savvy brand owners recognize that social networking and viral marketing have created extraordinary opportunities, expectations and challenges for companies and their brands to interact more directly with consumers. Brand owners communicate and interact with the public more quickly via social networking, and must “police” the marketplace in new and different ways to ensure their brand’s message isn’t being corrupted or taken in an undesired direction—even by their fans. In return, brand owners can build brand exposure and value at a significantly lower expense. We help brand owners integrate legal counsel in a comprehensive team approach with marketing, communications and other critical business expertise.

Due Diligence in Transactions

Commensurate with the value of a purchase or sale of trademark rights, it is important to have counsel “look behind” what is actually being bought and sold. Our lawyers are experienced in a wide range of due diligence activities and are frequently called upon to advise on valuation and revenue-generating potential for well-known trademark portfolios.

Trademark Enforcement

After a client has invested the time and money to search for and register a trademark, it is imperative to prevent competitors from riding the coattails of that investment. Similarly, when our clients are accused of trademark infringement, it is our job to identify the strengths of the claims and the potential merit of all available defenses, and to help identify settlement opportunities in appropriate situations. McDermott’s practice includes leading litigators with decades of experience before the U.S. District Courts, U.S. Courts of Appeals, U.S. Patent and Trademark Office Trademark Trial and Appeal Board, and comparable international courts and tribunals in the European Union, United Kingdom, Germany and Asia.

Related Services

Across our offices, McDermott has more than 185 intellectual property (IP) lawyers dedicated to a full-service intellectual property practice, making the McDermott IP practice one of the largest and most respected in the world. As a complement to our full-spectrum trademark practice, our lawyers offer comprehensive intellectual property services in patent, copyright, trade secret, e-business and other intellectual property fields.

Representative Clients

McDermott’s Trademark/Brand Protection & Enforcement practice represents a wide array of clients globally in a diverse array of industries, including alcohol and non-alcohol beverages and foods; associations; consumer goods, including fashion and sporting apparel, footwear and sporting/luxury goods; high-technology; and media and entertainment. Among our valued clients are such well-known companies as:

  • AARP
  • ABSOLUT Vodka (as well as FRIS VODKA, LUKSUSOWA VODKA, PLYMOUTH GIN)
  • ADT Security
  • American Automobile Association (AAA)
  • American Express Company
  • American Registry for Internet Numbers (ARIN)
  • Aristocrat Technologies
  • ASML
  • Atmel
  • Böwe Bell + Howell Company
  • CGI Group
  • Covidien
  • Creative Technology Ltd.
  • Dogfish Head Brewery
  • Engis Corporation
  • Gorton’s (and BLUEWATER)
  • Grape Technology Group, Inc. (KGB)
  • Guggenheim Capital and Guggenheim Partners
  • Hanjin Shipping Co., Ltd.
  • Harman International Industries
  • Hitachi
  • Hollywood Tans
  • Howard Johnson’s
  • Hudson Clothing Co.
  • Irving Oil
  • j2 Global (EFAX, ONEBOX, etc.)
  • Jacuzzi Brands
  • Korean Airlines Co., Ltd.
  • Limited Brands (VICTORIA’S SECRET, THE LIMITED, BATH & BODY WORKS)
  • Lockheed Martin
  • Mike’s Train House
  • MKS Instruments
  • Morgans Hotel Group
  • Motorola Inc.
  • National Grocers Association
  • Papa John’s
  • Parmalat
  • Pebble Beach Resorts
  • Pernod Ricard (CHIVAS REGAL, KAHLUA, MALIBU RUM, BEEFEATER, BALLANTINE’S, THE GLENLIVET, PASSPORT, SOMETHING SPECIAL)
  • Prometheus Laboratories
  • Red Mango Yogurt
  • RiceCo LLC
  • Shiseido Company Ltd.
  • Sierra Nevada Brewing Co.
  • Silver Jeans
  • Snap-On Equipment
  • Sumitomo Electric Industries
  • Sunny D (formerly Sunny Delight)
  • Ted Turner Industries
  • Tyco International
  • Univision Communications
  • Walmart
  • Waterworks
  • World Kitchen (OXO)
  • Wyndham Hotels
  • Wyse Technology Inc.
  • YMCA
  • Zodiac Pools

Contacts

Intellectual Property Client Services

McDermott Will & Emery

McDermott Will and Emery