Trademarks

Trademarks – Global Brand Managers

The success of your company is directly influenced by the strength of your brand. Our trademark attorneys ensure businesses grow and prosper by securing, maintaining, and enforcing their trademark rights across the globe. 

Our trademark team offers trademark litigation, transactional, advisory, and portfolio management services and serves businesses across a wide array of industries. As such, we serve as a one-stop-shop for companies seeking to protect their brands around the world. Our core services include:

• Trademark Prosecution: We file trademark registration applications with the U.S. Patent and Trademark Office (USPTO) for both domestic and international trademarks. 
• International Trademark Protection: By leveraging a highly networked group of colleagues and strategic IP tools, we provide clients with comprehensive trademark protection both in the U.S. and abroad. Our services include global brand protection strategies, as well as international trademark and service mark registration and enforcement. We have experience in jurisdictions across the world, including China.
• Trademark Counseling and Portfolio Management: We conduct trademark searches and advise clients in selecting company names, logos, and trademarks. We also manage extensive trademark portfolios for domestic and international clients, tailoring our strategies to the unique needs of each client.
• Trademark Enforcement: We enforce trademarks on all channels, including print and digital platforms. When required, our trademark litigators are prepared to immediately and aggressively respond to infringers. They have protected or defended cases involving major brands, and have successfully resolved disputes through alternative dispute resolution methods. 
• Trademark Agreements: We negotiate and draft agreements involving trademark rights, including trademark license agreements and trademark assignments. 

Our Trademark Attorneys in Action

Our attorneys have litigated a substantial number of cases before the Trademark Trial and Appeal Board. We have also successfully obstructed hundreds of infringers from selling counterfeit or unauthorized goods bearing our clients’ trademarks all around the world. 

Below are a few examples:

• (Trademark Trial and Appeal Board, USPTO) Successfully fought in the Trademark Trials and Appeals Board to recover and secure federal trademark registration for the name for one of the founding rock bands from the 1950’s.
• (Trademark Trial and Appeal Board, USPTO) Represented numerous guitar manufacturers in one of the largest United States trademark oppositions to applicant’s registration for product configuration trademarks in three guitar body shapes. Successfully opposed Applicant’s registrations by proving that the body shapes were not distinctive and had become generic. No appeal was made to this precedential TTAB decision.
• (United States District Court, Central District of California) Successfully defended toy manufacturer in product configuration trademark infringement lawsuit by prominent toy manufacturer.

Our Approach

The IP attorneys in the firm secure and enforce national and international trademarks and service marks on behalf of clients.

Our Intellectual Property attorneys clear trademarks domestically and abroad, registering those marks, maintaining them, and advising clients on their continued protection. We assist in policing trademarks and market identities and enforce against infringements and counterfeits. Our trademark litigators have protected or defended cases involving major brands and have successfully resolved disputes through alternative dispute resolution methods. Our attorneys have litigated a substantial number of cases before the Trademark Trial & Appeal Board. We also have extensive experience in litigation, including cases under the Anti-Cybersquatting Consumer Protection Act and handling.

Our Approach

Patents

Securing patents requires an understanding of the invention, drafting process, and prosecution in the Patent Office. Our attorneys have the admissions, experience, and skills to secure, as well as assert and defend our clients’ patent rights in the US and throughout the world.

Scarinci Hollenbeck’s Patent Law Practice

Service Marks

In the firm’s advisory capacity, we consult with clients on their desired marks and present options that can be secured and which will not interfere with the rights of others. In selecting strong and unique trademarks and service marks, our attorneys conduct broad research to ensure that protections are extensive and capable of evolving.

Since trademark and service mark protection can be lost through lack of use, the firm tailors its trademark and service mark services to the client’s business model in the present and projected needs in the future. In some cases, this can mean customizing trademarks, portfolios, and ensuring that national and international renewal documents are appropriately filed. In either scenario, Scarinci Hollenbeck is well-equipped to secure, commercialize, and protect all appropriate IP rights.

Portfolio Management

Trademark Prosecution is a notable aspect of the legal services we provide. In that regard, our attorneys have vast experience in obtaining and prosecuting word, design, and product configuration trademarks in the United States Patent and Trademark Office. We also aid clients in policing their trademarks and have successfully obstructed hundreds of infringers from selling counterfeit or unauthorized goods bearing our clients’ trademarks all around the world.

We handle all types of intellectual property transactions, and manage extensive trademark portfolios for domestic and international clients. As part of this service, we help clients of all sizes with acquisitions, divestitures, licensing, investments, and strategic planning. These include all manner of non-disclosure agreements, distribution agreements, joint venture agreements, manufacturing agreements, development agreements, and endorsement agreements. Our attorneys are also experienced in preparing, structuring, and negotiating trademark, copyright, and patent license agreements, as well as technology development agreements.

International Trademarks

We assist clients with international trademark and service mark protections. There are a number of considerations when developing a global IP strategy, including international treaties, conventions, and the laws of a given jurisdiction. By leveraging a highly networked group of colleagues and strategic IP tools, we provide clients with comprehensive IP protection both in the U.S. and abroad.

Domain Names

The importance of domain names in representing brands and companies has led to an emerging intellectual property practice area specific to securing and asserting clients’ intellectual property rights which intersect with domain names, copyrights, the Internet, and more. Scarinci Hollenbeck assists clients throughout the U.S., and around the world to claim, purchase, and negotiate the transfer of domain names which correspond to or are related to services, trademarks, and copyrights owned by clients.

The firm serves as a trademark clearing house for domain names and further advises clients on pursuing maximum protection at an optimal value, as it generally manages all aspects of the domain name transfer and conducts extensive research to identify owners and negotiate domain transfers.