- areas of expertise
Attorneys in Our Trademark & Brand Management Group
Top ranked in Best Law Firms and World Trademark Review, we manage thousands of domestic and international trademark files and have handled trademark matters and resolved disputes for recognized brands and individual trademark owners. Many of our clients depend on the acquisition and protection of trademarks and other intellectual property rights, and our special expertise in the global intellectual property arena helps them succeed.
We represent businesses and individuals in the protection, enforcement and licensing of trademark and related rights. Our clients include consumer products and services companies; media, entertainment, and sports entities; advertising agencies, marketing and public relations companies; and performers, writers, athletes, artists, fashion models, and other celebrities and celebrity estates. Our representative brand clients include JetBlue Airways, Scholastic Inc., NHL Enterprises, The South Beach Diet, The Tribeca Film Festival, Nike, and Marchesa.
We assess the availability of trademarks, designs, slogans, advertising, and packaging; and we file and defend trademark applications and registrations in the U.S. and abroad.
We help clients plan strategies, formulate budgets, and develop tactics to profit from their trademarks and related intellectual property.
We help clients protect, renew, and maintain trademarks and oppose registration and seek cancellation of infringing, competitive trademarks. We handle trademark office actions and objections and resolve substantive and technical issues with the U.S. Patent and Trademark Office. When necessary we litigate infringement, dilution, false advertising and other cases in federal and state court, as well as in the Trademark Trial and Appeal Board. Representative trademark litigation clients include Scholastic Inc (claim involving Harry Potter book series), eMarketer (use of financial data in marketing reports), John Deere & Co. (leading case on comparative advertising), Nike (defense of apparel advertisement), Sephora (defense of beauty/retail holiday catalogue), CIT Group Inc (contested use of "CIT" mark), and the U.S. Postal Service (defense of claim by Federal Express).
Monitor Trademark Use
We set up tailored trademark monitoring systems to help clients oversee new filings and obtain early notice of potentially infringing uses by competitors.
Protect Domain Names
We help clients research, register, and renew domain names, and we bring and defend domain name-based lawsuits, and ICANN and other alternative dispute proceedings.
Exploit Ancillary Revenue Opportunities
We help clients identify and exploit ancillary revenue streams, such as licensing and merchandising, branded entertainment and tie-ins, media appearances, and other entrepreneurial opportunities.
We review, draft and negotiate trademark licensing agreements for domestic and international clients.
Handle International Issues
We belong to an international network of corresponding attorneys, and have experience addressing the particular issues that arise in different territories, and advising on differences in applicable laws.
We use the Computer Packages Inc. docketing program to track filing deadlines and other relevant information for trademark applications, registrations, oppositions, and cancellation proceedings; and we provide customized reports containing virtually any type of information requested by a client about their trademark portfolio.
Our lawyers are members of the International Trademark Association. We are frequent speakers on licensing topics, and have participated in the Licensing International conference. We have appeared on MSNBC, CNNfn, and National Public Radio, and have been quoted in the New York Times, The Wall Street Journal, New York Law Journal, AdWeek, and other publications on IP issues. We have also published articles in IP Today Magazine, Bloomberg Law Reports, the Journal of Internet Law, World eBusiness Law Report, The Entertainment, Arts and Sports Law Journal, the LexisNexis Corporate Compliance Practice Guide, and other publications. Best Lawyers ranked our trademark practice as Tier 1 nationwide and Tier 1 in the New York metro area. Intellectual Property Today magazine included Frankfurt Kurnit in its list of “Top Trademark Firms.” BTI Consulting continues to recognize our attorneys for their expertise in IP litigation.