Michael Best’s trademark team is trusted with protecting some of the world’s most well-known and valuable brands. We assist our clients with establishing, maintaining, protecting, and enforcing their rights in the United States and in more than 100 countries throughout the world.
We are responsible for the trademark portfolios of emerging companies as well as large international portfolios. Our diverse clients include start-ups, licensors and licensees of iconic brands, closely held businesses, and publicly traded domestic and foreign companies across a wide array of industries. We take pride in our strategic, practical, business-focused approach.
We assist our clients will all aspects of protecting, enforcing, and deriving value from their trademarks. From clearance and registration, to licensing, commercial transactions, contested proceedings, and litigation, our experienced trademark team has significant depth and breadth.
Our team includes attorneys who are recognized as leading practitioners by business organizations and publications including Chambers USA and The Best Lawyers in America. Members of our team are active in the International Trademark Association; lead PLI, ACI, and Lorman continuing education seminars; and have taught at law schools.
Trademark Counseling and Prosecution
We assist clients with the full range of trademark counseling and prosecution services, including:
Trademark registration, maintenance, and renewal
We provide strategic and cost-effective guidance through all aspects of the trademark registration process, including preparing and prosecuting trademark applications and maintaining and renewing registrations. We represent clients in opposition, cancellation, and non-use proceedings. We work closely with our clients to provide them with reports tailored for their needs. Additionally, our docketing system enables clients to access their portfolios and obtain information regarding their marks and pending matters.
As part of our comprehensive approach to managing intellectual property assets, we conduct trademark portfolio audits designed to provide value and relevant, actionable information to business and marketing teams.
Trademark clearance searches
We have an in-house search team with decades of experience performing searches that help us determine whether a proposed mark is available for use and registration. When appropriate, our team works closely with other search firms and attorneys in other countries to conduct investigations for clearance outside of the United States.
Trademark watching and policing
We work with our clients and trusted vendors to structure strategies to watch for the misuse of their trademarks in the marketplace (for example, by monitoring online retail and social media platforms) and to monitor filings at trademark offices in desired jurisdictions, in order to determine whether others are trying to use or register confusingly similar trademarks to capitalize on the goodwill of our clients’ marks. We strategize with our clients to develop priorities and protocols that are aligned with their business objectives to address objectionable use, and oppose problematic trademark applications and registrations.
Trade dress rights
We have significant experience with securing registrations for trade dress in the U.S. and internationally; advising clients as to the best form of protection for their product or design, which may involve trademark, copyright, or patent protection enforcing trade dress rights before the Trademark Trial and Appeal Board, in federal court, and in international tribunals.
Licensing and merchandising
Our experience representing both licensors and licensees is valuable for our clients. We help trademark owners establish licensing and merchandising programs that communicate brand values, increase consumer awareness, promote long-term brand viability, and generate royalties.
We assist with strategic planning, negotiation, due diligence, and hands-on program management. We also represent licensees in connection with evaluating and negotiating licenses and assist them with complying with license terms and addressing claims of noncompliance.
To see our Licensing and Technology Agreements capabilities, click here.
Trademark Enforcement and Litigation
A strong trademark enforcement program helps our clients preserve and protect their valuable rights and the goodwill associated with their trademarks. Our trademark attorneys are often able to resolve disputes without the need for litigation. Through negotiation, with the assistance of the government (for example, the U.S. and foreign Customs Offices), and by helping our clients build a reputation that deters potential infringers, we have been successful in enabling our clients to enforce their trademark rights.
When valuable trademark rights are at issue, litigation may be necessary to protect those rights. In those circumstances, Michael Best’s team of trademark attorneys offer experience and savvy to address all types of trademark infringement, dilution and unfair competition cases. We work with our clients and experts, including survey and damage experts, to bolster our clients’ claims and legal positions and achieve their business objectives.
Advertising and Promotions
Michael Best's attorneys counsel our clients on many aspects of advertising, promotions, marketing, and labeling. Our experience encompasses a wide variety of structures and channels, such as co-promotions, sponsorships, loyalty programs, social media influencer relationships, branded entertainment, endorsements and testimonials, and new technology marketing and engagement. We regularly assist clients with matters such as:
We advise our clients on their advertising and marketing campaigns, from reviewing promotional materials, claim substantiation, agreements, and licenses through ensuring compliance with federal and state laws.
Our team includes attorneys who have structured and helped clients execute hundreds of consumer promotions, contests, and sweepstakes, including those involving user-generated content and audience engagement.
Defense and litigation
We defend our clients’ advertisements, promotions, and labels against challenges brought by government regulators and competitors. We also help our clients challenge the unsubstantiated or misleading advertising of their competitors in court and before the National Advertising Division of the Council of Better Business Bureaus.
Domain Names and Internet Issues
We assist clients with protecting their trademarks on the Internet, including with respect to matters relating to domain names. We guide clients with strategies to address new top-level domain names and help them set priorities for enforcement actions. We have successfully enforced our clients’ rights through litigation as well as dispute resolution policies, including ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP) and Uniform Rapid Suspension System (URS). When possible, we negotiate resolutions without escalation to formal proceedings.
We are well versed in the legal issues involving the use and misuse of trademarks in domain names, website content, linking, metatags, keyword advertising, blogs, social media, and online retail and auction sites. We help clients develop guidelines and strategies to address trademark use and misuse in these arenas.