Trademark

Valuable trademarks require comprehensive protection

Successful companies rely on the power of their trademarks and brands to communicate the quality and distinctiveness of their products and services.  Trademarks are often some of the most valuable assets of a company.  Infringement or dilution of a mark can cost millions in revenue and goodwill.  With our proven track record in high-profile litigation and noncontentious matters, in-house counsel and other leading trademark practitioners consistently look to Finnegan to handle their most complex, high-stakes matters.

One of the most successful trademark practices in the world

Finnegan’s trademark practice is renowned for its experience, sophistication, creativity, and depth.  We have nearly 25 lawyers who practice solely or primarily trademark law.  Among our ranks, we have seasoned litigators, two former trademark counsel for major corporations, and a former administrative law judge and examining attorney from the Trademark Trial and Appeal Board (TTAB).  Our practice also includes an enviable core of experienced trademark legal assistants and staff professionals, including portfolio managers, in-house investigators, and a domain name expert.  Our extensive experience with virtually every type of product and service and every facet of trademark protection helps us advise clients on the best path to protect, advocate, and leverage valuable IP assets. 

A comprehensive practice

We follow the life of a mark from selection, clearance, prosecution, and maintenance to portfolio management, trademark audits, licensing, watch services, disputes, and litigation. The scope of our practice offers great flexibility. For many clients, we provide a full range of trademark services, while others seek our assistance for some of these categories on a project-by-project basis.

Trademark counseling and prosecution

Finnegan’s experience in preparing trademark opinions and in filing, prosecuting, and maintaining both U.S. and foreign trademark applications and registrations is clearly demonstrated by the number of trademark matters we handle.  During a typical year, we provide thousands of trademark clearance opinions.  We are currently responsible for more than 28,000 trademark applications and registrations (U.S. and foreign), and we regularly manage large trademark portfolios, including portfolios totaling more than 10,000 registrations/applications covering more than 180 countries.

Domestic Trademarks
Before adopting a trademark, we advise clients on strategies for selecting “strong” marks that are immediately protectable and registrable.  If a client prefers to use a term or mark descriptively, we can advise on how to use the term to place the client in the best possible position should it be challenged.  Our counseling during the early phases of trademark development helps avoid costly conflicts or enforcement problems down the road.

Once a mark is selected, we conduct availability searches and render clear, practical opinions.  We carefully evaluate each search request to ascertain the goods or services to search, the type of search to order, and whether to search any supplemental sources.  Moreover, our opinions are not based solely on the search results as they appear in the search report.  We investigate relevant marks and names to determine if they are in use and, if so, the nature and extent of any rights their owners may possess.  Our extensive litigation experience allows us to provide realistic opinions on a mark’s availability, as well as practical recommendations on using and registering the mark to avoid or minimize potential problems.

For Finnegan, trademark filings are not simply routine administrative matters—we work to develop an appropriate strategy regarding the form of the mark and how broadly or narrowly to describe goods or services.  We take into account the search results and possible disputes down the road.  We also consider future plans for the mark to make sure all relevant goods or services are covered by the application.  In prosecuting applications, we provide practical advice on the best and most efficient ways to respond to refusals.  If needed, we can call on the expertise of our former TTAB judge/PTO examining attorney.

International Trademarks
As with U.S. prosecution, Finnegan does not treat foreign trademark filings as routine administrative matters.  Rather, we look at the nature of the mark, the U.S. application, any U.S. or foreign search results, and potential disputes, and discuss future plans for the mark with the client.  We can then develop appropriate foreign filing strategies in terms of the form of the mark and the scope of the goods or services. 

We have nurtured a network of trademark lawyers and agents around the world to assist with foreign trademark filings.  We select foreign counsel based on their ability to provide the high level of service our clients expect.  If a client prefers to maintain its existing relationship with a firm, we are happy to comply.  Upon receipt of a communication from foreign counsel, we report the matter to the client along with a suggested strategy.  We carefully review the counsel’s recommendations and work out a response or opposition strategy that is persuasive.  We also look at whether a strategy comports with that taken in other countries and, if not, whether a departure from prior practice is warranted and the impact of doing so.  We have extensive experience with international clearance projects.  We present search results in organized and streamlined formats that are easy to understand, contain concise summaries, and include specific advice on recommended actions.  In particular, we provide practical guidance and risk analysis, because many foreign counsel are highly conservative and identify numerous “problematic” marks.  We analyze the “problematic” marks and separate them into categories of real problems and potential problems.  We further recommend precise steps to take to attempt to address any potential problems (e.g., negotiate consent agreements, acquire rights).

Trademark litigation

Our counseling services often begin at a trademark’s inception with proactive advice during the selection and prosecution process to help avoid or minimize the chances of litigation.  But when problems arise and valuable trademark rights are at stake or an accusation has been made, we believe it pays to have seasoned litigators on your side.  We have handled cases that span numerous industries and implicate all types of trademark rights.  Representing both plaintiffs and defendants, our lawyers have decades of experience litigating both large and small trademark cases before courts throughout the country.  We regularly appear before the U.S. Patent and Trademark Office and its Trademark Trial and Appeal Board, the International Trade Commission, district courts, and other tribunals.

Our vast litigation experience makes our attorneys well versed in the best ways to approach cases, whether large or small, complex or straightforward.  We assess the potential risks and rewards of disputes and provide creative solutions for clients of all sizes. 

Infringement and Dilution
Our litigation practice covers all types of trademark infringement and dilution cases involving trademarks, service marks, trade dress, product configuration, trade names, domain names, letters, numbers, colors, and telephone numbers.  We have an impressive track record of favorably resolving litigations for our clients, whether by choosing a forum that gives clients the best chance to win on the law, filing a motion to dismiss, obtaining an early temporary restraining order or preliminary injunction, positioning a case for settlement, moving for summary judgment, or taking the case to trial.  One of our strengths is the use of experts to enhance our clients’ legal positions.  For many years, we have worked with numerous consumer survey experts on a wide range of issues in trademark litigation, including likelihood of confusion, likelihood of dilution, genericness, secondary meaning, and fame.  We also make strategic use of other experts in areas such as linguistics, marketing, consumer psychology, industry practices, and damages.

Domain Name Litigation and UDRPs
We have developed an international reputation as a leading expert in the field of domain names.  We have handled more than 75 civil litigations in the United States involving domain names, spanning industries such as food and beverages, hospitality, computer and electronics, and media and entertainment.

Our lawyers handle hundreds of domain name disputes each year and have filed or defended more than 500 complaints under ICANN’s Uniform Dispute Resolution Policy for more than 100 different clients.  We have addressed a wide variety of factual scenarios and issues with these complaints.  Finnegan’s experience stretches well beyond the United States  We have coordinated or assisted with litigation involving generic top-level domains and country-code top-level domains in many foreign countries, including Argentina, Australia, Brazil, Chile, Denmark, Germany, Greece, India, Israel, Mexico, the Netherlands, Portugal, and Uruguay.  Favorable decisions have been issued in all cases decided to date, including what are believed to be the first such decisions in India and Israel.  Because of the pervasive nature and extent of cybersquatting and infringement activity on the Internet, we have advised clients on developing domain name registration strategies to help avoid or minimize more costly enforcement work down the road.  We also help clients manage and set priorities for enforcement efforts by developing specific guidelines and strategies.

Our domain name and Internet expertise derives not only from our extensive practical experience in handling such matters, but also from writing and speaking on these topics. Finnegan attorneys author articles on trademark issues arising from the Internet, including fair use, linking, metatagging, and the Anticybersquatting Consumer Protection Act, and we also review and summarize all significant Internet-related trademark decisions from U.S. courts and post the summaries on our website.

Counterfeiting/Gray-market Goods
Counterfeiting and gray-market goods are growing at an alarming rate, resulting in industry losses of billions of dollars annually.  When our clients’ trademarks are challenged in these ways, we act swiftly against both manufacturers and distributors to stop the flow of counterfeit and gray-market goods.  We regularly appear in courts across the United States and have successfully obtained emergency injunctive relief for our clients, including ex parte seizures, temporary restraining orders, and preliminary injunctions.  Our international presence allows us to implement global brand protection programs quickly and effectively.

False Advertising
If a client’s brand and goodwill are threatened by false statements or deceptive advertising, immediate relief is often needed.  We are well versed with the Lanham Act and understand the nuances of false statements, deceptive practices, and consumer confusion.  We have successfully achieved swift resolutions for our clients, including restraining orders.

TTAB Litigation
In 2007, the rules of practice before the TTAB changed—making its proceedings more like civil litigation, including initial, expert, and pretrial disclosures.  While the rule changes may be a challenge for many firms, Finnegan has a wealth of experience in civil litigation, and we are well prepared to guide our clients through these new rules. 

We have had a substantial practice before the TTAB for decades and typically file or defend as many as 200 new U.S. oppositions and cancellations each year. We have approximately 300 to 400 active U.S. oppositions and cancellations at any time. Many of our trademark attorneys have extensive expertise in handling opposition and cancellation proceedings before the TTAB. Before joining Finnegan in 2002, one of our attorneys had a 10-year career at the PTO, where she held the positions of administrative trademark judge and interlocutory attorney with the TTAB, and examining attorney for the PTO. As an administrative trademark judge, she presided over opposition and cancellation proceedings and ex parte appeals from final decisions of the PTO. During this time, she authored more than 100 decisions on the merits and more than 60 summary judgment decisions, and heard over 70 oral arguments and telephone hearings. As an interlocutory attorney, she authored more than 150 summary judgment decisions. As an examining attorney, she also argued numerous ex parte appeals before the TTAB.

We treat each opposition and cancellation as a unique matter.  We look at the claims and defenses and the relevant evidence in view of our client’s goals, resources, and the merits of the case.  We then formulate a plan to best achieve that client’s goals, whether by settlement or trying the case.  In particular, we develop an early discovery plan for each case.  We often recommend minimal, targeted discovery and sometimes no discovery at all.  In cases where we represent the plaintiff, we create overall strategies, taking into consideration the nature and extent of the opponent’s use (if any) of the challenged mark.

Our client base is diverse and global

We represent small and large companies from a range of industries, including pharmaceuticals and biotechnology, financial services, publishing, the Internet, entertainment, computers and telecommunications, consumer products, automotive and manufacturing.  We also represent several government agencies.  Our clients include:

• ABC Television
• Baby Einstein
• BBC
• Caterpillar
• Disney
• Emilio Pucci
• Fox Entertainment
• Fuente Cigar
• Genzyme
• Harley-Davidson
• Head
• Human Genome Sciences
• LG Electronics
• Moody's
• Pioneer Hi-Bred
• Ritz-Carlton
• SAIC
• Starbucks
• Subaru
• Toshiba
• Under Armour
• U.S. Postal Service
• U.S. Securities and Exchange Commission
• Yahoo!
• Yum Brands

Our rankings tell part of the story

Over the years, we are proud to have been honored by our peers and in-house counsel.  Our most recent rankings include:

Full Service U.S. IP Firm of the Year, 2008-2011
(Managing Intellectual Property)

#1 or #2 Tier U.S. Law Firm for Trademark Contentious and Prosecution
Work, 2005-2011
(Managing Intellectual Property’s World IP survey)

#1 Tier Law Firm for Trademark Litigation and Non-Contentious, 2008-2011
(The Legal 500 U.S.)

A-List Law Firm, 2010
(American Lawyer)

IP Group of the Year, 2009-2010
(Law360)

#1 Tier U.S. Law Firm for Intellectual Property, 2007-2011
(Chambers USA:  America’s Leading Lawyers for Business)

First-Tier National Ranking for Intellectual Property Law, 2010
(U.S. News - Best Lawyers Best Firms)