Trademarks and brand identity: in today’s world of fleeting loyalties, fierce competition and speed-of-thought communications, few assets—real or intangible—are as valuable as a brand’s reputation. While a company may only have one chance to make a first impression, the opportunities to lose hard-won goodwill are virtually endless.
At McDermott, we understand the importance of helping clients build and protect their trademark rights and the vigilance required to maintain them. We provide strategic counsel on clearing, registering, licensing, policing and enforcing trademarks and managing international trademark portfolios, and advise on advertising, promotions, social media issues and due diligence in transactions. Our trademark litigators regularly defend, enforce and secure our clients’ rights in the courtroom.
Our individual lawyers and team are named consistently among the top US trademark practices. The 2015 World Trademark Review 1000 – The World’s Leading Trademark Professionals praised McDermott’s overall strength in trademark litigation, prosecution and strategy as well as ranking all current partners among the leading providers. In addition, a number of our individual trademark lawyers are listed in Chambers Global, Chambers USA and as IP Stars by Managing IP and Intellectual Asset Management. Our lawyers have also served in leadership roles for the International Trademark Association (INTA), which recognized McDermott as the sole recipient of the 2013 Volunteer Service Award in the “Pro Bono Services Provided by Organizations” category.
In addition to our work in private practice, our trademark team includes lawyers with experience at the US Patent and Trademark Office (USPTO) and as 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 key industry roles. We have strong working relationships with our network of trusted trademark counsel around the world, enabling us to mobilize quickly to make emergency filings or tackle infringement problems without delay.
Advertising and Promotions
Our lawyers have a deep understanding of the complex federal and state statutes and regulations that govern the marketing, labeling, promoting and advertising of products and services. We also represent clients in the advertising and entertainment industries, regularly reviewing and negotiating contracts and copy proposed for advertising, labeling, sweepstakes, contests and other types of promotions to ensure that terms explicitly prevent potential violations of relevant statutes, future litigation from competitors or consumers, or potential investigations initiated by the US Federal Trade Commission. Additionally, we collaborate with our regulatory lawyers as it requires dealing with the FDA and trade regulation.
Clearance, Applications 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 maximize 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 address gaps in global trademark portfolios) to brand architecture, re-branding, brand revitalization, brand modernization, domain name portfolio management and other sophisticated brand enhancement services. We regularly partner with outside marketing and advertising consultants, as well as creative services companies that specialize in the creation and evolution of brands.
Complex Licensing and Co-Branding
Valuable trademarks may be a source of revenue streams that expand profitability at limited additional expense. We frequently advise clients on brand extensions to new goods and services, co-branding opportunities with other brand owners, and franchising opportunities for better trademark visibility and revenue enhancement. In addition, McDermott’s trademark lawyers work closely with the Firm’s International Tax and Corporate Advisory practices to provide sophisticated counseling to clients on the global trademark aspects of complex, high-profile transactions, including acquisitions, spin-offs and corporate restructurings involving the disposition of billion-dollar brands.
Cross-Border Enforcement and Anti-Counterfeiting
We work with US Customs and Border Protection (Customs) on behalf of many clients to combat the importation of counterfeit goods. In addition to recording our clients’ trademark registrations with Customs, giving Customs officers the information necessary to seize shipments of counterfeit goods, McDermott also takes a more proactive approach to help agents identify suspicious shipments by holding educational meetings with Customs agents. In these sessions, we help agents learn identifying features that distinguish our clients’ genuine goods from counterfeit products. We also 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 problems without delay. We attempt to minimize the number of foreign associates used in each country in order to leverage the volume of work for fixed or discounted fees. Our ongoing relationships with this network of foreign associates allow us to work more efficiently since they know what we expect both in terms of quality and work product, therefore resulting in tremendous responsiveness and a better end product for our clients.
An essential part of any global trademark strategy is the procurement, maintenance and enforcement of key domain names. McDermott offers a wide array of domain name services, including domain name acquisition, strategic portfolio assessments, online monitoring for unauthorized registrations, and recovery of domain names from cybersquatters and other infringers. McDermott is also an authorized Trademark Clearinghouse agent, allowing us to protect our clients’ brands and domain names as the number of new generic top-level domains expands. Our lawyers have also represented clients in numerous successful domain name disputes before the US federal district courts and the Internet Corporation for Assigned Names and Numbers (ICANN) accredited arbitration panels.
Oppositions and Cancellations
We advise trademark applicants and opposing parties in filing and defending opposition and cancellation proceedings before the Trademark Trial and Appeals Board (TTAB), helping clients navigate the Federal Rules of Civil Procedure and the strict timelines that govern these unique disputes. We conduct effective discovery, draft compelling motions and handle necessary depositions, and have successfully argued a number of cases to the relevant judicial panels. We have helped numerous trademark holders protect their trademarks and prevent competitors and infringers from using such marks unlawfully.
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 maximize 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. We regularly partner with outside marketing and advertising consultants, as well as creative services companies that specialize in the creation and evolution of brands.
Social Media and E-Commerce Issues
Beyond the issue of the content of advertising and promotions, savvy brand owners recognize that social networking and viral marketing create 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 monitor the marketplace in new and different ways to ensure their brand’s message is not 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 advice.