Securing and Maintaining Trademarks and Brand Names


Inter Parties Review Blog

Securing and Maintaining Trademarks and Brand Names

We prosecute and maintain thousands of trademark applications and registrations worldwide every year and have obtained trademark and copyright protection for over 23,000 products, brands and creative works, including over 13,000 foreign registrations.

Evaluation, Clearance and Registration

We strive to provide trademark protection and counseling that recognizes the importance and value of our clients' brands. Knowing that brand protection involves much more than just trademark registration, we work with our clients from the beginning of the branding process to register and protect marks, and to ensure our clients establish their brands as revenue-generating assets that increase in value and add to their bottom line.

We advise clients on the availability of marks, conducting our own searches and/or reviews and advising on outside search results, and we provide solutions to overcome existing marks or other issues, including advice on when to change a mark or to acquire an existing mark owned by another. We also file and prosecute registration applications worldwide, advise and counsel as to the countries in which to register a mark, and manage brands on a worldwide basis.

We employ a sophisticated strategy for evaluating the availability of proposed marks and titles, identifying potentially problematic third party references as early as possible in the search process. We also investigate potentially problematic uses of marks by third parties. Our opinions are then based on in-depth investigations. For cost efficiencies, our paralegals, with the supervision of a lawyer, handle most of the trademark clearances. For broader international searching and investigation, we rely on our network of lawyers at non-U.S. law firms. We also conduct a considerable amount of knockout screening searches using the Saegis database from Thomson. During the past three years, we have conducted an average of 20,000 screening searches per year.

Branding and Rebranding

We act as key advisors to companies in developing strategies for marketing their products and services and handling various aspects of development and protection for well-known brands. Our firm helps our clients prudently acquire marks owned by third parties, and investigates and resolves potentially problematic priority disputes. We also help clients maximize their portfolio value by assessing and identifying marks that require enhanced protection, and advise on marks that should be discontinued.

Our trademark practice created and perfected the “emergency rebrand,” used when our clients need expedited corporate name change clearances and registrations. In crisis situations, we have assisted our clients in completing strategic and confidential name changes on an emergency and expedited basis, helping our clients to quickly and discretely reposition and/or reintroduce themselves in the marketplace, depending on their brand strategy and business goals. We have one of the most experienced branding practices in the industry and were the only law firm to be commended for emergency rebranding services by the Financial Times in its Innovative Lawyers Report in 2011, a report that only recognizes 21 firms for their innovative and ground-breaking services to clients.


We provide brand management services to our clients, helping them to increase their exposure and marketability, while defending against counterfeits that threaten their value. We have represented companies that use more than 1,000 brands worldwide, and provide intellectual property policing programs and trademark watch services that ­alert us to potential issues against which our clients may need to take action.

We handle everything from the initial research and protest of infringing uses to litigation against infringing uses before federal courts or the Trademark Trial and Appeal Board. We assist our clients in every aspect of their anti-counterfeiting and antipiracy efforts, including investigations, ex parte seizures and preliminary injunctions, seizures of counterfeit merchandise, and computer forensic analysis. We regularly work with federal and local authorities and highly trained investigators on our clients’ behalf. Furthermore, we have developed strong anti-counterfeiting/piracy programs for our clients to optimize their brand management.

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