Trademarks

Our attorneys are on the frontlines, working with brand managers to create and protect global brands.  We have the experience to determine whether a preliminary or full search is necessary and whether filing a trademark application will be of value to our clients. We can advise you on the practical benefits and implications in each and every case before taking the following actions:

• Filing and prosecuting U.S. trademark applications.
• Building and maintaining foreign portfolios through an established and reliable network of foreign associates.
• Reviewing marketing materials and packaging for trademark issues.

Our team also has extensive experience addressing the unique needs of brand owners when expanding their trademark portfolios. We negotiate transactions and prepare agreements that involve the development and licensing of a trademark owner’s brand, whether nationally or globally. This experience is especially valuable when helping our clients avoid the traditional but often overlooked pitfalls of naked licensing and lack of quality control.

Often the expansion of a brand into a new territory involves contending with new requirements and entering into relationships with unknown licensees. Our team can navigate you through the intricate foreign requirements for the recordation of licenses and secure the protections necessary to ensure your trademarks and other IP rights remain protected should those new relationships sour.

Our trademark attorneys stand ready to assist in protecting, policing and enforcing the rights associated with a business’s brand, content and the associated goodwill, including:

• Policing brands on a worldwide basis through the use of watch services, customs registrations and foreign associates and investigators who coordinate raids and legal actions for infringements with local authorities
• Prosecuting and defending proceedings before the Trademark Trial and Appeal Board.
• Investigating and litigating unfair competition trademark infringement claims.
• Handling internet-related issues, including domain name disputes and the unauthorized use of intellectual property on sites like eBay and YouTube.

We combine deep subject-matter knowledge with our understanding, through experience, of what in-house counsel and their clients really want. This insight enables us to provide precisely what our clients need when analyzing potential litigation issues — a realistic assessment of the strength of their position, along with the ability to vigorously and successfully advocate that position in the best possible forum for resolving the dispute.

We work to understand the business rationale underlying every dispute so that we can pursue the most appropriate and cost-efficient means to secure a good result for our client. We pride ourselves on the fact that we can achieve the desired outcome without the need to force matters to trial. We deploy a variety of proven resolution strategies, including co-existence and walk-away agreements when defending our clients from overzealous trademark owners, or the waving of the white flag by an infringer.

We assist clients with anti-counterfeiting measures in both the U.S. and abroad, including past efforts for a world-famous cartoon brand that necessitated interaction with counsel and customs authorities in numerous countries on an almost daily basis. Today, we are engaged in ongoing anti-counterfeiting enforcement efforts for one of the world’s most recognizable collegiate brands.

While litigation against counterfeiters can often be a necessary means to an end, it is not always possible to know the identity of a counterfeiter. As such, we often rely upon other available remedies with counterfeit products. For example, we rely upon ex parte seizure orders for counterfeit goods where the goal is to get the product off of the street in specific venues (such as with concerts or tailgating events), educational campaigns with local or national retailers where the goal is to get the product off of the shelves, and customs deposits and trainings where the goal is to prevent the product from entering the country.

Our attorneys are also at the forefront of the ever-changing area of internet and e-commerce law. We help clients carefully navigate through the myriad of issues that can plague a business and erode its goodwill, from traditional cybersquatting by competitors or zealous “domainers,” to a competitor’s use of metatags and embedded source code, to a third-party’s use of content as its own. We don’t just assist with after-the-fact enforcement measures. We provide practical and proactive strategies to preempt any efforts to deceive consumers looking for legitimate sources for our clients’ products and services.

We understand that, in a field of unsettled law, a client needs decisive answers to assist their e-commerce business decisions. We help clients adapt their company’s practices as changes occur in the law. Indeed, FBT Gibbons is an Official Agent of the Trademark Clearinghouse, a depository established for trademark owners to help stem the tide of enforcement issues in the wake of the new gTLD era. For more information on the new gTLD era, please see our publications.

In line with our firm’s overarching industry team philosophy and focus, we have represented clients across a broad spectrum of product and service industries, including:

• Consumable goods, such as food and beverage, including items for grocery retail, alcohol, tobacco, and hemp
• Manufactured goods, such as clothing, including fashion, outerwear, and accessories, as well as household items and furniture
• Media, such as newspapers and television stations
• Automotive industry, such as automobile manufacturers and high-performance auto parts
• Sports and entertainment, including professional associations and collegiate level athletic programs
• Franchise and hospitality, including restaurants and hotels.