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Trademark - Trademark Counseling and Prosecution

Finnegan has assisted with filing and prosecuting several thousand trademark applications in the United States and abroad for Caterpillar. We obtained a preliminary injunction for Caterpillar against use of the word marks GAI, GAIERBILLART, GAIERPILLAR, GAIERPOLLAR, the yellow and black color combination for footwear and any associated packaging or labels, and/or any other trademarks, trade names, trade dress, logos, or other names or identifiers confusingly similar to the CATERPILLAR or CAT marks and/or Caterpillar’s footwear trade dress.
Since its founding, we have provided strategic intellectual property counseling and representation to Imerys, including its French parent company, international subsidiaries, U.S. headquarters, and multiple domestic business units. We have evaluated developing technology for patentability; drafted and prosecuted patent applications in the U.S. Patent and Trademark Office and abroad; analyzed patent enforcement opportunities; defended against third-party charges; and provided legal opinions on several aspects involved in bringing new products to market and maintaining Imerys’s strong, competitive position in the kaolin clay market.
Finnegan handles ATP’s worldwide trademark portfolio and ensures that its marks and logos are properly protected in the various jurisdictions where its tournaments are hosted, publicized, and broadcasted. We also handle ATP’s worldwide enforcement efforts and have opposed trademark applications and uses of ATP-formative marks around the world. Recently, we filed a U.S. opposition before the Trademark Trial and Appeal Board (TTAB) against an application for the mark ATPI for entertainment and travel services (including those related to sports). We have also handled “ambush advertising” issues for ATP, including during the Barclays ATP World Tour Finals in London.
We have represented Bauer Hockey for more than 15 years and have a long-standing institutional knowledge of Bauer and its industry. As part of our management of Bauer Hockey’s U.S. trademark portfolio, we handle searching and clearance, filing and prosecution, and post-registration maintenance. We also advise Bauer on product configurations and other non-traditional trademarks. Additionally, we handle contested matters for Bauer, including oppositions and cancellation actions before the Trademark Trial and Appeal Board (TTAB) and court actions.