Services

Related Practice Areas

Practice Contacts

Attorneys

Print PDF

Trademarks and Trade Dress

Cantor Colburn, a leading full-service intellectual property law firm, is dedicated to the practice of trademark and trade dress law. In May 2014, Intellectual Property Today ranked our trademark registration practice 41st in the country, up from 119th in 2006. Today, we manage nearly 13,000 marks for a diverse group of domestic, international, and multinational clients that include individual entrepreneurs, small technology start-ups, mid-sized manufacturers, and Fortune 100 corporations.

Our trademark and trade dress practice attorneys are dedicated to helping brand owners create, select, clear, acquire, register, maintain, protect, and enforce these important IP assets. We anticipate and meet our clients’ needs through a comprehensive suite of services that includes:

Strategic Counseling on Development and Protection of Trademark and Trade Dress Portfolios
Our highly skilled attorneys help clients develop a strategic trademark and trade dress position that maximizes their assets while reducing the risk of infringement. We work with clients to identify and define their core and secondary brands. For clients developing new brands, we provide capable assistance in helping them to build brand equity and a robust portfolio of rights. For clients with mature brands, we identify and implement strategies designed to strengthen and enhance their existing portfolio assets – and their competitive position.

Selection, Searching, and Clearance
Care and attention to the creation, selection, and clearance of a new mark is the crucial first step in building a successful brand. Our attorneys have significant experience in assisting clients with this process. Once a client has selected a proposed mark, we perform and review searches to determine whether the mark is legally available and registrable. We can perform domestic and international clearance searches at varying levels of turnaround time, expense, and depth that are tailored to each client’s specific needs and budget.

Applications and Registrations
We are experienced in all aspects of application and registration practice and procedure. We regularly apply for all forms of marks, including trademarks, service marks, trade dress, collective marks, certification marks, and such non-traditional marks as sound and motion marks.

Within the United States, we help clients file and register federal and state applications, and maintain and renew registrations. For clients seeking to extend their trademark rights overseas, our attorneys utilize a variety of strategies to obtain the most effective international protection, including use of regional registration systems such as the Community Trade Mark in the European Union, priority filings under the Paris Convention, and international registrations under the Madrid Protocol. Additionally, we maintain close relationships with a carefully vetted network of locally based foreign counsel who help us prepare and file applications, and maintain and renew registrations, for our clients’ marks in other countries.

Proper Use Guidelines and Policies
Once a client has adopted a mark, we continue to work with them to establish procedures for the proper use of their brand in all formats and contexts and across all media platforms. We help clients build brand equity and strength by preparing brand identity and trademark use guidelines for use by internal personnel and outside providers, such as advertising and public relations agencies. We also provide presentations to clients’ internal personnel with respect to the proper use of trademarks and other intellectual property.

Oppositions and Cancellations
Cantor Colburn attorneys have extensive experience in all aspects of opposition and cancellation proceedings – from lodging an objection prior to registration of third party marks to filing actions to cancel an existing registration. We represent our clients in such proceedings before the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO), as well as in the federal and state courts. Our trademark attorneys also work with a network of foreign counsel to represent clients in trademark opposition and cancellation actions outside the United States.

Enforcement
Our primary goal is to help clients optimize and protect their brands. To that end, we monitor and review client products and packaging, as well as advertising, marketing, promotional, and other materials, to ensure proper use of their trademarks.

To support our enforcement efforts, we offer “watching” services to detect domestic and foreign applications for identical or similar marks. Where potential infringements of our clients’ marks are identified, we promptly address them. Should an issue escalate, we pursue all available avenues to resolve it – from demand letters, settlement negotiation, to litigation.

Counterfeiting and other forms of trademark infringement can damage – and even destroy – a brand. Deeply experienced in the multinational enforcement of marks, we provide strategic counsel to clients faced with counterfeiting, trademark dilution, and other infringement problems. When necessary, we litigate infringement cases in the U.S. and work with our foreign counsel to manage similar cases overseas.

Licensing
Licensing a trademark can be an effective way to commercialize the mark and enhance a client’s revenue stream while extending brand visibility. Cantor Colburn trademark attorneys have extensive experience in preparing and negotiating licensing agreements for our clients. We monitor – and enforce –compliance with license agreements. We also provide assistance and guidance to clients wishing to become trademark licensees.

Assignments and Transfers
We frequently help clients acquire, assign, transfer, and divest trademarks and trademark portfolios. We regularly conduct due diligence for clients seeking to acquire trademarks and other IP assets. Our team members prepare and negotiate sophisticated agreements for the acquisition or divestiture of marks, as well as for the domestic and international transfer of trademark portfolios.

Due Diligence for Mergers, Acquisitions, and Divestitures
The key to assuring a seamless – and correctly valued -- merger, acquisition, or divestiture transaction of IP assets is due diligence. For clients who are selling IP assets, we provide schedules and up-to-date status reports for all owned marks. For those who are buying, we thoroughly review the relevant agreements and supporting documentation to identify and address any potential challenges or problems that might impact their purchase.

Defending Against Third-Party Claims
At times, and despite even the most conscientious efforts to clear a trademark, a client is accused of trademark infringement. We work to resolve and defend such claims in a manner that avoids as much disruption to a client’s business as possible. We seek solutions that avoid litigation, but when a dispute cannot be settled, our experienced litigators vigorously defend our clients in court.

News

Publications

Events