Trademarks
We handle trademarks for a wide range of companies—large and small, emerging and established, domestic and foreign. Our practice encompasses almost every industry, in both the retail and commercial markets, including consumer products, pharmaceuticals and medical technology, manufacturing, oil and gas, energy, financial services, publishing, entertainment, computers, and telecommunications.
We draw on our significant experience and blend it with a realistic understanding of the business environment so as to wisely, but practically apply the law to meet clients’ trademark needs to yield commercially viable solutions. Further, we manage our Trademarks practice with a team of skilled attorneys and legal assistants in order to provide our clients with customized, client-focused services that are prompt, proactive, and value-added.
Collectively, we offer our clients the full range of legal services encompassed by a branding strategy:
- Selection and clearance of trademarks
- Prosecution and maintenance of trademarks in the U.S. and abroad
- Principal and supplemental registrations
- Counseling, including trademark use and portfolio management
- Transactions, such as licensing, distribution, private labeling, co-branding and co-marketing, sponsorship, merchandising tie-ins, promotions, naming rights and franchising
- Due diligence arising from various transactions involving trademarks
- Trademark infringement analysis
- Civil litigation at both the trial and appellate levels, including infringement and dilution cases, counterfeiting, gray-market goods, false advertising, and cyber-squatting
- PTO litigation, including opposition and cancellation proceedings
- Domain name administrative proceedings, including cases under ICANN’s Uniform Dispute Resolution Policy and similar policies
In an economy largely driven by brand recognition, establishing and protecting company names and trademarks is critical. Today more than ever, a business’ unique identity, reputation, and brand provide tangible return-on-investment and a critical competitive advantage. A well-thought-out and executed branding strategy can yield significant income based on the perception of one’s trademarks in the market place.
To permit our clients to capitalize on their brands and trademarks, Jackson Walker IP attorneys assist our clients in identifying, evaluating, and protecting important trademark properties to help them achieve the most effective protection for their proprietary trademarks and service marks. Further, we help our clients develop coherent brand strategies for registering and protecting their marks, in both the manner and jurisdictions that afford the greatest protection and in the context of their business goals and their budgets. In this regard, our attorneys manage multinational trademark portfolios and work with an extended network of trademark attorneys and agents in every significant market and jurisdictions around the world.
Our global trademark counseling incorporates all of the various registration vehicles available to its clients. Our attorneys have routinely counseled clients on the pros and cons of the international registration system for trademarks to which the United States recently acceded, known as the “Madrid Protocol,” and the evolving European Community Trademark (CTM) system to determine which is best utilized for a particular branding program. Likewise, we work with our clients to develop strategies for “first to file” countries and “first to use” countries, as well as “use based” countries and “intent-to-use” countries. And of course, our attorneys have an intimate knowledge of Title 15 of the United States Code, known as the Lanham Act, which is the federal umbrella unfair competition statute that encompasses trademarks.
The services of our trademark attorneys go beyond the protection and defense of trademarks to the broader field of unfair competition law, including trade dress infringement, false advertising, deceptive trade practices, misappropriation, passing off, defamation, right of publicity, parody, counterfeiting, and related issues.
The trademark services we offer our clients begin at a mark’s inception. At the first stage of development of a branding strategy, we provide assistance in the identification of potential marks. In today’s crowded market, choosing potential marks that can mature into a unique, competitive brand name is often daunting, particularly when there is a desire to marry a mark with an available domain name. We offer educational seminars in the proper selection of trademarks. In this early stage of development, we also conduct clearance searches to determine the availability of trademarks. We offer our clients proactive advice during the selection process and render clearance opinions on marks of interest. We draw upon our extensive litigation experience to guide our approach to counseling, prosecution, enforcement, ad review, and due diligence.
We also counsel our clients on the proper use and protection of trademarks, and create individualized trademark use guidelines for clients to help them maximize the strength of their marks. Our trademark attorneys routinely speak at industry events and conduct in-house seminars to educate our clients on the various issues involved in creating and protecting a valuable brand.
Of course, brand recognition is often more than just a word or logo. Jackson Walker attorneys have significant experience in trade dress, package design, graphics, product configuration, collective membership marks, certification marks, trade names, internet domain names, and even the use of color or sound as a trademark.
Further, our counsel draws upon the interplay between intersecting bodies of intellectual property law, such as copyrights, design patents, and utility patents. For example, we have experience in handling the full scope of internet and e-commerce issues that can erode one’s trademark rights, including data-mining, hyperlinking, domain name disputes, metatags, cybersquatting, pay-for-placement, and web-related copyright and trademark infringement.
With respect to the internet, we handle domestic and international trademark clearance and registration, the protection and registration of domain names and trademark, and domain name enforcement and dispute resolution of international and domestic trademark conflicts, such as domain name disputes pursuant to the Uniform Domain Name Dispute Resolution Policy adopted by ICANN.
April 17, 2023
Insights
Don’t Use My Trademarks in Your NFTs! The Hermes v. Rothschild Verdict | The Federalist Society
By Arthur Gollwitzer | On February 8, 2023, a jury in the Southern District of New York returned a verdict in favor of Hermes, finding NFTs linked to digital images depicting Hermes’ famous “Birkin” handbags infringe Hermes’ trademark rights. This appears to be the first trial focused on the interplay between NFTs—or non-fungible tokens—and trademark law.
November 30, 2022
Newsletters
USA Business Digest: November 2022
The USA Business Digest is a newsletter covering legal insights for European companies and investors in the United States.
This month, we will take a closer look at (1) U.S.-style discovery in international arbitration and (2) the Lanham Act’s foreign reach to recover damages.
November 3, 2022
Spotlight
Jackson Walker Earns 24 National and 121 Regional “Best Law Firms” Rankings in 2023 Edition
Jackson Walker proudly announces the Firm’s inclusion in the 2023 edition of the U.S. News & World Report and Best Lawyers “Best Law Firms” list. This year, our firm improved in the national rankings, with the rise of Appellate Practice and Corporate Law to Tier 2.
August 19, 2021
Attorney News
‘The Best Lawyers in America’ Honors 178 Jackson Walker Attorneys in 2022 Edition, Including 8 “Lawyers of the Year” and 31 “Ones to Watch”
The Best Lawyers in America has recognized 178 Jackson Walker attorneys across 6 offices and 67 specialty practice areas in its 2022 edition, including 8 Lawyers of the Year and 31 Ones to Watch. Best Lawyers listings are based on an exhaustive peer review survey of thousands of attorneys who vote on the legal abilities of others in their practice areas.
April 28, 2021
Attorney News
‘D Magazine’ Names 23 Jackson Walker Attorneys Among “Best Lawyers in Dallas” for 2021
Jackson Walker congratulates the 23 attorneys recognized among D Magazine’s list of the “Best Lawyers in Dallas” for 2021.
March 1, 2021
Mentions
Chris Rourk Discusses Evermore’s Trademark Infringement Suit Against Taylor Swift in ‘Asia IP’
Jackson Walker partner Chris Rourk spoke with Asia IP, a leading international IP news journal, about Utah fantasy theme park Evermore’s lawsuit against Taylor Swift alleging trademark infringement over her album of the same name and related merchandise.
September 30, 2020
Mentions
In Depth: Defeating Trademark Infringers | Asia IP
In the United States, while the Iancu v. Brunetti holding that the Lanham Act’s prohibition on the registration of “immoral” or “scandalous” trademarks violates the First Amendment certainly received its fair share of attention, the practical effects of this ruling are still to be seen, says Blake Dietrich, an associate at Jackson Walker in Dallas.
June 1, 2020
Attorney News
Brit Nelson and Wasif Qureshi Receive 2020 “IP Stars” Award
Jackson Walker is proud to announce that Houston partners Brit Nelson and Wasif Qureshi have been recognized as 2020 IP Stars for Texas by Managing Intellectual Property.
May 21, 2018
Attorney News
Brit Nelson and Wasif Qureshi Named Global IP Stars by “Managing Intellectual Property”
Jackson Walker is proud to announce Houston partners Brit Nelson and Wasif Qureshi have been recognized as Global IP Stars by Managing Intellectual Property (MIP) magazine.
