Experience

Trademark Counseling and Prosecution

About

Distinguishing your goods and services

Successful brands are built with strategies for selecting “strong” marks that are immediately protectable and registrable. If a client prefers to use a term or mark descriptively, we 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.

Finnegan’s experience in preparing trademark opinions and in filing, prosecuting, and maintaining both domestic and foreign trademark applications and registrations is clearly demonstrated by the number of matters we handle. During a typical year in our European, UK, and U.S. practices, we provide thousands of clearance opinions. We are responsible for more than 25,000 trademark applications and registrations (domestic and foreign), and we regularly manage large trademark portfolios, including portfolios with thousands of registrations/applications. To ensure consistency in portfolio management as well as enforcement, our trademark professionals conduct audits, due diligence, trademark watching, investigations, and licensing.

Domestic Trademarks

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. Our opinions are not based solely on the results as they appear in the 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.

We regularly file and prosecute applications at the European Union Intellectual Property Office (EUIPO), the UK Intellectual Property Office (UKIPO), and the U.S. Patent and Trademark Office (USPTO). For Finnegan, trademark filings are not simply routine administrative matters—we develop an appropriate strategy regarding the form of the mark and how broadly or narrowly to describe goods or services. We consider the search results and possible disputes as well as 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 most effective and efficient ways to respond to refusals.

International Trademarks

For trademark filings outside European, UK, and U.S. jurisdictions, we look at the nature of the mark, the domestic application, domestic or foreign search results, and potential disputes. We also discuss plans for the mark with the client. This process allows us to 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 international trademark filings and clearance projects. 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.

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Experience

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 advised a company that sells materials for use with 3D printers on its use of trademarks owned by 3D printer companies for which it sells such materials

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.

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. We also manage Imerys’s international trademark portfolio, including all aspects of trademark procurement and protection, and provide counseling on trademark licensing and use.

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 2000, Finnegan has worked closely with the inventors and legal staff at Caterpillar Inc. The firm has prepared and is prosecuting several hundred patent applications in the United States and in many foreign countries. We have also assisted Caterpillar with many opinion matters involving issues of patent validity, infringement, government contracts, licensing, and copyrights. And we have a significant role protecting Caterpillar's well-known trademarks around the world.