Client Services / Intellectual Property, Media & Technology / 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 names, identity and reputation.  Our efforts are driven by the importance of each matter to our clients, and we understand that resolving issues relating to 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

McDermott’s Brand Protection and Enforcement practice combines the talents of more than 30 professionals who focus all or much of their regular practice on trademark, unfair competition and related matters.  Members of our practice are listed as leaders in their field in International Who's Who of Trademark Lawyers, Chamber's Global and Chambers USA.  Responsible for thousands of well-known trademarks registered in the United States and internationally, our trademark practice ranks among the top 10 of all U.S. firms, as listed by Intellectual Property Today.

McDermott’s practice includes litigators with decades of experience before the courts, as well as experienced counselors who focus on equally important trademark issues outside of the realm of litigation.  Our lawyers are experienced in handling trademark matters 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 UK and Germany.

Our trademark lawyers are supported by a sophisticated internal docketing department that is linked among our offices.  We also rely upon our experienced and dedicated trademark paralegals to bring efficiency to our client service teams.

Our trademark lawyers and support team are strategically distributed across our U.S. and international offices.  In addition to our McDermott offices, we have valued relationships with firms and agents in more than 100 countries around the world.  Our Firm’s size and global reputation have helped us to align with some of the best and brightest trademark practitioners from Argentina to Zimbabwe – and practically everywhere in-between.  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

To illustrate the scope and depth of our Brand Protection and Enforcement practice, we believe it is helpful to identify – in plain English – the kinds of questions we answer for our clients on a regular basis.

Trademark Availability and Clearance:  While famous “house marks” are often the bedrock of a company’s reputation, we 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 the new brands that we are asked to review, and we are committed to finding creative solutions for “getting to yes” whenever possible.  Common issues on which we advise include: 

  • “Will we be sued by another trademark owner if we begin or expand use of our mark?” 
  • “How likely is it that we will be sued, and what are the most likely outcomes?” 
  • “Can’t we go ahead and use a risky mark, so long as we are prepared to stop use if another party objects?”
  • “How can we reduce or manage both the legal and business risks?”
  • “What is the ‘bottom line,’ and what course of action do you recommend?”

Trademark Registration/Maintenance and Portfolio Management:  If a company has an unlimited budget, the easiest and probably best move is to search and register every trademark, logo, design and slogan ever used.  But even the largest and most successful organizations do not have unlimited resources; therefore, we counsel our clients in making wise and practical decisions within their target budgets.  Strategic coordination and management of trademark portfolios is critical to a successful global brand, and our lawyers routinely advise on the following kinds of questions:

  • “Should we register our trademarks?”  “All of them?”  “In which countries?” 
  • How do we get the best ‘bang for the buck’ from our trademark protection budget?”
  • “Is it efficient for us to handle some of this work in-house?”  “Can you help us do that?”
  • “Do you know lawyers in other countries that you trust and recommend?”
  • “Can you prepare ‘Trademark (Use) Guidelines’ for my company and its employees?”
  • “How can we avoid having our trademarks become generic, so that we do not lose our valuable rights?”
  • “When should we use the ®, ™ or SM symbols?”  “Do we need to use these symbols?”  “Are there any times you recommend that we not use them?” 
  • “Should we employ a trademark watch service, and, if so, how should we handle the watch notices we receive?”

Licensing and Brand Extensions:  With valuable trademarks, it is prudent to consider whether there are untapped revenue streams available to expand profitability at limited additional expense.  Following are some examples of questions we regularly answer for our clients: 

  • “Can we sell additional goods or services under our existing brands?”  “Do we have adequate protection for such brand extensions?”
  • “Can you help us negotiate with parties who want to pay us to use our brand, or whose brand we want to use?” 
  • “Can we achieve any synergies by co-branding goods in cooperation with another trademark owner or joint venturer?”
  • “Can you recommend any marketing experts or other professionals to help guide us through these considerations?”
  • “Should we consider franchising our rights?”  “What are the pros and cons?”

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 trademark and regulatory lawyers field questions such as these on a regular basis: 

  • “What are the rules regulating contests and sweepstakes?” 
  • “When and how can we telemarket and conduct other direct-marketing activities?” 
  • “How do I avoid running afoul of anti-spam, privacy and other evolving e-business laws relating to advertising?”
  • “To what extent do we need permission to use a celebrity’s name or likeness, or to use a short clip from a song or movie in our advertising?”  “How can we get such permission quickly?” 
  • “What are our liabilities for express and implied warranties?” 
  • “When do I need objective test data to substantiate advertising claims?” 
  • “Is it fair to advertise my product as better than my competitor’s?” 
  • “How can I approach a movie studio or television network about product placement ideas for my brand?” 
  • “Can you help us (re)negotiate contracts with our advertising agencies and other marketing partners?”
     
    Due Diligence in Transactions:  Commensurate with the value of a purchase/sale of trademark rights, it is important to have lawyers “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 the following kinds of questions: 
  • “How much is a brand that we’re selling/buying really worth?” 
  • “Are there any skeletons in a brand’s closet that we should be aware of before we buy or sell a trademark?” 
  • “Does the recorded title show a continuous and complete chain from original owner to current owner?” 
  • “Can we correct any defects before a trademark is bought/sold, and how do you recommend that we do so?”

Trademark Enforcement:  After a client has invested the time and money to search and register a trademark, it is imperative not to allow others to ride the coattails of that investment.  Similarly, when our clients are accused of trademark infringement and related wrongs, it is our job to identify the strengths of the claims and the potential value of all available defenses.  The following are frequent questions and issues our lawyers advise on when dealing with trademark enforcement and infringement matters:

  • “How can you help us identify parties who may be infringing our trademarks?” 
  • “Can we stop another party from using a mark that is similar to ours?” 
  • “We know we have a duty to police our mark, but does that mean we have to take action in every instance?”  “Where and how do we draw that line?”
  • “Should we warn another party before we sue, and what should be the timing and scope of such a warning?” 
  • “Where should we sue, and should we ask the Court for emergency relief (e.g., a preliminary injunction or a temporary restraining order)?” 
  • “Should we do a confusion survey (as either a plaintiff or a defendant), and which survey expert would you recommend in our particular case?” 

Dispute Resolution:  The focus of a law firm’s business is protecting and enforcing trademarks for clients, and devoting our time to matters before the courts and the U.S. Patent and Trademark Office.  We understand a company’s focus is different, and that legal disputes are frequently a drain on profitability, regardless of which party is “right.”  As such, our lawyers work proactively with clients in resolving disputes when it is possible and appropriate to do so.  Issues on which we frequently advise in this context include: 

  • “When does it make sense to explore settlement of trademark disputes?” 
  • “What is a reasonable settlement demand or offer, what are our legal and business options for resolving the dispute, and what should be our overall settlement strategy?” 
  • “What is the true cost of litigation, including not just money but also lost time/productivity of our employees?”
  • “What are the realistic chances of winning, and what are the real risks of litigation?” 
  • “How truly aggressive is our opponent, and what is our opponent’s record in past litigation?” 
  • “What are our opponent’s resources, and is our opponent committed to a full fight?” 
  • “Should we mediate or arbitrate, and if so, where should we do so, what rules should control, and how many mediators/arbitrators should be involved?” 

Representative Clients

McDermott’s Brand Protection and 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 
  • American Marine Holdings Inc. (DONZI boats, PRO-LINE boats)
  • ASML Mask Tools
  • Böwe Bell & Howell Company
  • Camuto Consulting (BCBG, Nicole Miller and Jessica Simpson footwear)
  • Formula One Racing
  • Hitachi
  • Inter-Lotto
  • Jacuzzi Brands
  • Jordache Ltd.
  • Limited Brands, including Victoria's Secret, The Limited and Bath & Body Works
  • Monarch Beverage Company
  • Parmalat
  • Pechiney Plastic Packaging
  • Morgans Hotel Group
  • Silver Jeans
  • Skyy Spirits LLC
  • Ted Turner Enterprises
  • Tower Records
  • Univision Communications
  • V&S Vin & Sprit AB (publ) (ABSOLUT vodka, LEVEL vodka, PLYMOUTH gin, CRUZAN rum, DANZKA vodka, etc.)

Our Successes

Our litigators have been lead counsel in numerous cutting-edge trademark cases, including matters where we have been first-chair trial and appellate counsel in seminal and important cases.  Some of our recent victories include:

  • Represented Absolut vodka in numerous proceedings to recover domain names from hijackers and infringers
  • Represented Absolut vodka against manufacturer of infringing swimwear
  • Represented American Express Company in a trademark infringement case relating to its global advertising campaign
  • Represented American Marine Holdings in the first case decided under the federal Vessel Hull Design Protection Act (VHDPA) before the United States District Court for the Southern District of Florida, and then on appeal to the U.S. Court of Appeals for the Eleventh Circuit
  • Defended Jordache Limited and the United States Polo Association (USPA) in a trademark infringement jury trial brought by Polo Ralph Lauren
  • Defended Formula One Administration Ltd.’s trademark portfolio outside of the United States
  • Represented T-Online International AG on video-on-demand film licensing agreements with major U.S. film studios
  • Represented SFX Entertainment, Handelman Co. and Madacy Entertainment in a jury trial before the U.S. District Court for the Central District of California in a trademark infringement case
  • Advised Inter Lotto UK Limited, in a high profile case against Camelot Group plc (the UK National Lottery operator) before the Court of Appeal in the United Kingdom

Contacts

Intellectual Property, Media & Technology Client Services

McDermott Will & Emery

McDermott Will and Emery