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.
July 7, 2025
Insights
Texas Legislature Expands Business Court Role in Intellectual Property Matters with Passage of HB 40
By Arthur Gollwitzer
The 2025 biennial session of the Texas Legislature brought changes to the Texas Business Court that was created in 2023. With the passage of House Bill 40 (HB 40), the legislature expanded the Business Court’s jurisdiction to include a range of intellectual property matters. This legislative change offers a new option for litigating certain IP disputes in Texas.
June 30, 2025
Attorney News
‘Managing IP’ Recognizes Jackson Walker’s Patent and Trademark Attorneys in 2025 Edition of “IP Stars”
Managing IP has named Jackson Walker a recommended law firm in Texas for patent prosecution and trade mark in its 2025 edition of “IP Stars.” Additionally, Brit Nelson, Wasif Qureshi, and Nathaniel St. Clair, II were recognized as Patent Stars and Shannon Zmud Teicher as a Trade Mark Star in Texas and the United States overall.
June 5, 2025
Spotlight
Chambers and Partners Releases 2025 USA Guide Featuring 79 Jackson Walker Attorneys and 28 Ranked Departments
Jackson Walker is pleased to announce that Chambers and Partners has selected 79 attorneys and 28 departments for inclusion in the 2025 edition of the Global and USA guides. Attorneys were ranked across 29 departments, with 4 attorneys listed among multiple areas, 9 ranked nationwide in their respective areas, and 12 recognized for the first time.
June 5, 2025
Spotlight
Jackson Walker’s Intellectual Property Practice and Attorneys Ranked in Chambers USA Guide
Jackson Walker is proud to announce the inclusion of its Intellectual Property practice in the 2025 Chambers USA Guide released today. Additionally, IP partners Brian Prewitt, Wasif Qureshi, and Shannon Zmud Teicher are individually recognized by Chambers.
March 24, 2025
Spotlight
Jackson Walker Shortlisted for Managing IP’s Firm of the Year Awards for Patent and Trademark Disputes
Jackson Walker is honored to be shortlisted for the 2025 Managing IP Awards in the U.S. Regional Categories, including “Firm of the Year” for Patent and Trademark Disputes in the South!
June 6, 2024
Spotlight
Chambers and Partners Releases 2024 USA Guide Featuring 67 Jackson Walker Attorneys and 23 Ranked Departments
Jackson Walker is pleased to announce that Chambers and Partners has selected 67 attorneys and 23 departments for inclusion in the 2024 edition of the Global and USA guides. Attorneys were ranked across 27 departments, with 3 attorneys listed among multiple areas, 8 ranked nationwide in their respective areas, and 15 recognized for the first time.
June 6, 2024
Spotlight
Intellectual Property Group Recognized in Chambers USA Guide, With Brian Prewitt and Shannon Zmud Teicher Ranked Individually
Jackson Walker has been ranked as a top firm for its Intellectual Property practice in the Chambers USA Guide released on June 6, 2024. In addition, partners Shannon Zmud Teicher and Brian Prewitt both ranked among the top intellectual property attorneys in Texas.
November 2, 2023
Spotlight
Jackson Walker Earns 25 National and 134 Metro Rankings in 2024 Edition of “Best Law Firms”
Jackson Walker proudly announces the firm’s inclusion in the 2024 edition of Best Law Firms® by Best Lawyers. This year, Jackson Walker observed notable improvements in the national rankings, including the rise of Appellate Practice to Tier 1, Banking and Finance Law and Litigation – Labor and Employment to Tier 2, and the addition of Energy Law and Environmental Law in Tier 3.
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 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.
