Trademark Protection and Prosecution

Holland & Knight’s Intellectual Property (IP) Practice features a Trademark Protection and Prosecution Team with the experience and resources needed to successfully and efficiently handle all trademark-related matters, from prosecuting applications to Lanham Act litigation.

Protecting Your Brand

Our team members understand that your company invests heavily in building your brand and creating goodwill with your customers. We also recognize that obtaining and preserving trademark protection is an essential component of your brand strategy.

Our Trademark Protection and Prosecution Team is comprised of seasoned attorneys and professionals who regularly create, maintain and protect trademarks so you can continue to build and benefit from your brand without interference. We represent a broad range of foreign and domestic clients in nearly every industry imaginable and provide a complete range of trademark services. Team members collaborate closely with clients to ensure they receive and maintain the full benefit of trademark protection.

Experience and Insight

Registering and maintaining trademarks are among our firm’s core competencies. In fact, our trademark attorneys register and maintain thousands of marks worldwide on a daily basis. Our team includes a former trademark examining attorney at the United States Patent and Trademark Office (USPTO) who provides an insider’s perspective on USPTO processes and procedures. We can help you design and execute programs to clear, select, register and enforce your trademarks and related IP rights worldwide.

Trademark Availability and Registration

Our Trademark Protection and Prosecution Team provides comprehensive counsel regarding trademark availability and registration. Our services include:

• conducting clearance and registration searches and investigations to determine the availability of marks, including designs, auditory marks and other nontraditional marks
• obtaining federal, state and foreign registration of trademarks, service marks, collective marks and certification marks, as well as defending registration opposition and cancellation proceedings
• providing worldwide trademark watch services to detect conflicting trademark filings
• conducting domestic and overseeing foreign opposition and cancellation proceedings
• securing worldwide protection through an extensive network of foreign agents
• protecting in a global market against infringement, misappropriation, deceptive trade practices, counterfeiting and diversion
• negotiating license agreements
• employing extensive research capabilities bolstered by in-house private investigators and outside resources such as linguists and etymologists

Oppositions and Cancellation Proceedings

Our team provides comprehensive trademark watch services, both domestically and throughout the world, to detect trademark filings that may create confusion with your marks. We are experienced in evaluating the likely success of and conducting domestic opposition and cancellation proceedings, as well as working with foreign counsel to pursue parallel actions abroad. Similarly, when registration of our clients’ marks is opposed, our lawyers are skilled at defending such actions.

Trademark Litigation

In the competitive marketplace, trademark litigation is sometimes unavoidable. Our highly experienced trademark litigators are prepared to handle your matter based on your business situation and objectives, whether the dispute involves business-critical marks or less critical, early-stage marks.

Our attorneys have litigated everything from complex metatagging and trade dress actions to word-mark matters. Our investigators and outside resources, including language experts, industry professionals, computer forensics specialists and survey firms, work together to offer comprehensive litigation support services. Our team is equally skilled in seeking ex parte seizures, customs remedies, preliminary injunctions and interfacing with law enforcement in prosecutions of intellectual property crimes.

Comprehensive Representation in Related Areas

Trademarked products are subject to a wide array of challenges, including counterfeits, diversion, privacy and publicity violation claims, boycott and anti-boycott concerns, and issues relating to security interests, trademark licenses and transfers. Our Trademark Protection and Prosecution Team collaborates with the intellectual property attorneys on our firm’s other IP teams to resolve these trademark-related issues.