Trademark

Trademark law enables businesses to establish, protect and profit from a distinct, recognizable identity of a product or service. At Seyfarth Shaw, we work with clients at every step of the trademark development process, from creation, identification and protection, through licensing and prosecution of trademark infringement.

The broad experience and in-depth knowledge of our trademark attorneys allows us to provide comprehensive, creative legal counsel that helps clients to achieve their trademark-related objectives, to build, maintain or grow the reputation that those marks represent, and to defend their investments against competitors' claims.

Trademark Prosecution

Seyfarth Shaw’s Trademark Prosecution team helps our clients create, protect and profit from their unique positions in the marketplace by developing distinct, recognizable identities for their product or service. Our team works with and understands the business realities facing clients ranging from multinational corporations to cutting edge start-ups, handling both U.S. and non-U.S. trademark matters with regard to trademark assets ranging from brick-and-mortar products to those that are solely web-based.

Seyfarth’s trademark attorneys offer clients a comprehensive line of transactions and counseling services, including clearance, prosecution and beyond. Seyfarth’s trademark service line includes:

  • Counseling regarding the creation, clearance and adoption of trademarks, service marks, and trade names
  • Preparing and prosecuting trademark applications (domestic and international), including the maintenance of trademark portfolios
  • Creating and implementing protection and enforcement programs, including the investigation of potential trademark infringements, counterfeiting, and gray-market matters as well as domain name and Internet monitoring
  • Providing trademark training
  • Leveraging the expertise of our Tax Group to advise on the tax benefits of trademark holding companies
  • Negotiating, drafting, reviewing and revising, and providing advice regarding trademark licenses, consent and coexistence agreements, and other trademark-related documents
  • Handling the trademark aspects of corporate acquisitions, including due diligence and the negotiation of asset purchase agreements
  • Recording trademarks with the U.S. Customs Service and providing guidance to Customs officials regarding our clients’ marks and potential counterfeits
  • Conducting trademark portfolio audits and appraisals

Our trademark attorneys have handled the preparation and prosecution of thousands of trademark applications around the world, and we are counsel of record for the owners of many well-known trademarks and service marks.

As part of Seyfarth’s overall focus on streamlining processes for our clients and reducing legal fees, we have developed an online matter tracking, reporting, and document management tool that we apply to global trademark prosecution and portfolio management. We pride ourselves on delivering prompt, practical, and experienced-based advice from seasoned practitioners and in prosecuting trademarks in a cost-effective, results-oriented manner.

Trademark Litigation

Seyfarth Shaw’s multi-office Trademark Litigation team helps our clients protect and maintain their hard-earned unique positions in the marketplace through its business-oriented approach to trademark, false advertising and unfair competition litigation. Many of the members of the team both prosecute trademark applications and litigate trademark disputes, thereby bringing to bear substantial experience ranging from clearance to licensing to protection. We find that this cross-disciplinary approach provides our clients with robust advice regarding when and how to address potential infringement as well as the issues that arise when such disputes are litigated. We have litigated trademark issues for clients ranging from multi-national corporations to cutting edge start-ups.

When disputes arise, members of our Trademark group:

  • Litigate trademark, false advertising, and unfair competition disputes in federal and state courts
  • Coordinate disputes in multiple countries, disputes that arise when the rights of multi-national companies come into conflict
  • Prosecute counterfeiting actions and execute seizures of counterfeit goods, including coordination with U.S. Customs
  • Prosecute and defend oppositions, cancellations, and appeals before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office
  • Prosecute and defend domain name proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP) and similar policies
  • Assert and defend false advertising and deceptive trade practice actions before the Federal Trade Commission (FTC), the National Advertising Division (NAD) of the Council of Better Business Bureaus, and other federal and state agencies
  • Coordinate the enforcement and defense of trademarks outside the United States

Seyfarth’s Trademark Litigation team has a proven record of success in obtaining temporary restraining orders, injunctions, and seizure orders in cases where every hour is crucial to the client’s bottom line. Consistent with our client-focused strategy, these avenues often result in early settlement and less costly outcomes.