Trademark

  • When litigation cannot be avoided, Holland & Knight's team of experienced trademark litigators is prepared to handle your case, whether the dispute involves business-critical marks or less critical, early-stage marks.
  • Our Trademark Protection and Prosecution Team works with a comprehensive network of international counsel in more than 140 nations and other jurisdictions where trademark registrations may be obtained, including the European Union and Hong Kong, to provide our clients with worldwide protection.
  • Our team includes a former trademark examining attorney at the United States Patent and Trademark Office (USPTO) who provides a valuable perspective on USPTO processes and procedures.

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. Trademarked products are subject to a wide range 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 team advises clients on how best to integrate intellectual property law protections into their business strategies so they can effectively pursue counterfeiters and diverters and prevent the illegal distribution or use of their products.

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 spectrum 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

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.

Protecting Clients from Counterfeiters and Diverters

Holland & Knight's intellectual property attorneys are highly skilled in protecting client interests from the challenges posed by counterfeiting and diversion. As an increasing number of illegal products find their way into legitimate distribution channels — and an equal number of legitimate goods appear in unauthorized outlets — protecting your intellectual capital from counterfeiting, piracy and diversion has become paramount.

The creation and distribution of counterfeits and piracy of products throughout the world threatens companies of all sizes and infringes on legitimate copyright, trademark, patent and other intellectual property rights. Holland & Knight's intellectual property attorneys have extensive experience helping companies secure their investment, innovations, reputation and market position by addressing and arresting counterfeiting, piracy and the diversion of goods. Our attorneys investigate and prevent counterfeiting and diversion worldwide and have arrested illegal distribution and importation channels.

We represent domestic and international clients of all sizes and across many industries, including electronics, software, consumer goods, equipment, machinery and pharmaceuticals.

A Multifaceted Approach to Protecting Your Interests

Members of our team are highly skilled in protecting client interests from the challenges posed by counterfeits and diversion. We can advise you on how best to integrate intellectual property law protections into your business strategies so you can effectively pursue counterfeiters and diverters and prevent the illegal distribution of your products.

Our intellectual property attorneys utilize a variety of effective methods to protect your interests, including:

  • employing our investigative unit to identify and track the sources of counterfeit and diverted products throughout the world 
  • investigating the points of sale and distribution channels for these products and working with U.S. Customs to combat trade in pirated and counterfeit goods and prevent their importation
  • analyzing and litigating product diversion or "gray market" cases
  • maintaining a working relationship with foreign governments and law enforcement agencies 
  • working with customs, foreign governments and border control to enforce restrictions on the importation of infringing products 
  • representing client interests before U.S. Customs and foreign governments and zealously asserting client interests in court