Protecting Your Brand Worldwide

Foley Hoag’s Trademark Practice Group handles all types of trademark, trade dress, domain name, and unfair competition matters for our clients. Our group oversees, on behalf of our clients, thousands of trademark registrations and applications in more than 150 countries. We also guard our client’s rights against infringement, negotiate license agreements and other brand-related transactions, and prosecute and defend legal proceedings involving trademark rights.

We advise our clients on the availability of marks and names; and we prepare and prosecute domestic and foreign applications for marks. Our clients span all types of industries, including Internet retailing, financial services, software, machinery, apparel, pharmaceuticals, and biotechnology.

Dedicated to your rights

We have eight legal assistants and clerks dedicated to monitoring our client’s trademark filings. These staff members gather and prepare necessary documentation, and conduct trademark searches worldwide. We use a state-of-the-art database, located on our premises, to manage and report our client’s trademark registrations and applications. Our clients have around-the-clock Web site access to our trademark database, so that they can monitor the state of their trademark portfolio in real time.

We have extensive experience in the enforcement and defense of our client’s trademark rights. We represent our clients in civil litigation in the United States and abroad, in administrative proceedings before the U.S. Patent and Trademark Office, before foreign trademark offices, and in domain-name proceedings under the UDRP and local registry rules.

The lawyers in our Trademark practice group are active members and leaders of the International Bar Association, the International Trademark Association, the American Intellectual Property Law Association, the Intellectual Property Law Section of the American Bar Association, and other professional organizations. They frequently lecture, teach, and publish in the trademark field. As participants in these organizations, they participate actively in shaping trademark law and policy.

United States and Foreign Registration

Securing a registered trademark is one of the most effective means of protecting the reputation of your goods and services in the marketplace. While trademark rights in the United States are based upon use rather than registration, a registered U.S. mark enjoys significant advantages, such as nationwide scope and ultimate incontestability. In most foreign countries, trademark rights are based entirely upon registration, so the user of an unregistered mark has little legal recourse.

Registering a mark is not an easy process. Not only are there numerous technical requirements, which differ from country to country, but most countries conduct rigorous examinations to determine if a mark is entitled to registration. In many cases, registration is refused, either because the mark is too similar to a previously registered mark or because the mark is deemed to be weak and non-distinctive. Such refusals can often be overcome, but it takes an experienced trademark practitioner to handle the matter.

That’s where we come in. A recent survey conducted by Intellectual Property Today shows that Foley Hoag lawyers obtained over 400 U.S. registrations for our clients between 2004 and 2006. On behalf of our multi-national clients, such as John Hancock Life Insurance Company and Inverness Medical, we are responsible for literally thousands of registrations in virtually every country around the world.

With our extensive network of associate foreign counsel, our state-of-the-art computerized docketing system and our seasoned trademark attorneys, we can devise efficient, economical, and effective ways of protecting your brands, both locally and globally.

Representative Experience 

  • Our client, a provider of consumer products with a stable of famous trademarks, was beginning the worldwide rollout of an innovative new product. Using our established network of foreign counsel, we secured registrations for our client’s product trademark in the U.S. and nearly 100 other countries. 
  • Our client, an international airline that flies to the U.S., regularly adopts new marks as it introduces new in-flight services and adapts to the changing airline market. In consultation with the airline’s counsel in its home country, we file and prosecute the client’s trademark applications in the United States.

The Clearance Process

When selecting a new brand or name, a number of issues must be assessed. Here are some of the issues you will need to consider: 

  • Will the mark infringe the trademark rights of another party? 
  • Can the mark be registered? 
  • How strong is the mark in legal terms? This will determine if it can be protected.

The trademark clearance process is designed to answer these questions. Successful clearance means the difference between a mark that is easy and economical to register and enforce, and one that is costly and time-consuming to protect and enforce.

Foley Hoag has extensive experience in counseling our clients on the selection and clearance of trademarks and company names. Our paralegals are skilled at conducting cost-efficient searches on the Internet and proprietary databases to determine the strength and registrability of a mark. Our attorneys work regularly with our clients to discuss proposed marks, review trademark clearance reports, and hone our client’s trademark strategies.

Representative Experience 

  • Our client, a Canadian franchisor, was seeking to expand its operations in the United States market but risked challenges by other similar marks. We assisted our client in clearing and registering its mark, including acquiring priority rights. 
  • Our clearance and selection experience ranges from helping founders name hedge funds, select corporate names or create future flagship-product brands. 
  • Help established companies review dozens of alternative names for products launching worldwide, including investigating the connotations of marks in different languages and arranging for their translation into different alphabets.

Watching and Policing

Our Trademark Practice Group also provides active assistance in policing our clients’ marks and enforcing their rights against infringers. Our legal assistants and clerks, with the help of outside service organizations, monitor trademark filings in the U.S. and abroad in order to alert clients to possible encroachments on their rights.

The lawyers in our Trademark Practice Group provide practical advice to clients regarding when and how to assert those rights. If disputes cannot be resolved amicably, our litigation staff, working with associate attorneys throughout the world, will pursue appropriate legal action against infringers. We often appear on our clients’ behalves in U.S. or foreign courts, in National Trademark Offices, and before the various domain-name arbitration panels.

Representative Experience 

  • Represent a manufacturer of dressings, sauces and other condiments that owns a portfolio of valuable marks. Our watch services have alerted this client to a number of trademark infringements by food companies and restaurants. We are regularly successful in persuading these third parties to cease using infringing marks or modify their marks to avoid any infringement.

Trademark Licensing

Our trademark attorneys regularly help clients exploit their brands through trademark licensing. We can provide clients with the legal and contractual protection they need to maximize the commercial potential of their brands without jeopardizing their trademark rights. We have helped clients in the sports, arts and entertainment fields take advantage of lucrative merchandizing opportunities.

Representative Experience 

  • Advised a U.S. apparel company with a portfolio of fashion brands on the licensing of certain of its marks in connection with the manufacture, distribution and retail sale of apparel in several Asian countries. We worked with our network of foreign agents to draft, negotiate and record trademark license agreements that allow this client to exploit these assets in previously under-utilized markets, while continuing to protect our client’s trademark rights. 
  • Worked with the tax advisors to a multinational client to design a tax-effective restructuring of the client’s trademark and patent portfolio. We implemented the structure by handling transfers of ownership of relevant intellectual property to different entities, and by drafting and recording worldwide inter-company and third-party trademark and patent licenses. We continue to advise this client on maintenance and modification of the structure and protection of our client’s rights in the licensed assets.

Portfolio Review

Our clients often engage us to review their trademark portfolios. A portfolio review will often include: 

  • Presenting our client with a status report for its registered marks and pending applications, organized by product, mark and country. 
  • Helping our client decide whether specific registrations should be maintained, or whether costs could be saved by abandoning registrations, partially or completely. 
  • Reviewing our client’s products and collateral marketing materials to ensure that its marks are being used consistently and in accordance with their registrations and applicable trademark laws. 
  • Assessing whether unregistered marks, slogans and logos ought to be registered and, if so, where. 
  • Reviewing our client’s procedures for selecting and registering marks, and making recommendations for improvements. 
  • Preparing our client’s portfolio for transaction due diligence and for use as collateral in asset-based financing.

 Representative Experience 

  • Our client, a developer of large-scale database software products, which are sold throughout the world, had grown rapidly and recently acquired several companies. We helped the client integrate and rationalize its new and existing trademark portfolios, which comprised over 500 registrations and applications in some 50 countries. As a result, the client’s trademark strategy was re-focused on core brands and significant cost savings were realized.

Asset-based lending

Our lawyers have significant experience in using intellectual property assets, such as trademarks, as collateral in secured lending. Securing such collateral to protect the rights of the parties to the lending transaction requires compliance with complex rules. We regularly advise clients, prepare and review documents, and make appropriate filings with public registries to effect these secured lending transactions.

Acquisition and Sale of Trademark Portfolios

When a client acquires trademarks from a third party, Foley Hoag is often called upon to handle the acquisition, including preparing and negotiating the purchase agreement and conducting a due diligence review of the marks. Typically, this review will consist of: 

  • Ascertaining the registration status of the marks and scope of protection. 
  • Reviewing the ownership and assignment history of the marks. 
  • Reviewing the licensing history of the marks to identify the extent of existing license rights and whether the marks have been compromised by “naked” licensing. 
  • Checking whether there are any liens, encumbrances, lawsuits or other adversarial actions that might jeopardize the marks. 
  • Advising whether the marks to be acquired have been compromised by third party marks in similar areas. 
  • Reviewing the acquisition agreement to ensure that appropriate representations and warranties have been obtained from the vendor.

When our client is the seller of trademarks, we are able to assist in due diligence review of the marks being sold to ensure that the portfolio is ready to be transferred and that the seller is prepared to answer the inquiries of the purchaser. We also assist in drafting and negotiating transaction documents.

Trademark Disputes

Our trademark dispute practice focuses on helping our clients enforce and defend their trademark rights. This includes effective advocacy in settlement negotiations, by administrative proceedings and by litigation. We handle the entire spectrum of trademark conflicts encountered by retailers, manufacturers and service providers of all types and sizes.

Our trademark litigators advise our clients on strategies for protecting their trademarks— whether registered or common-law—and conduct investigations concerning improper use of domain names and marks. We prosecute and defend lawsuits nationwide under the Lanham Act and the Anticybersquatting Consumer Protection Act. We also pursue and defend opposition and cancellation proceedings before the U.S. Trademark Trial and Appeal Board. In addition, on behalf of our clients, we commence and defend domain-name arbitrations under the Uniform Dispute Resolution Policy of ICANN and other domain-name dispute procedures.

Representative Experience

  • Our client, a clothing manufacturer, was challenged by a world-famous company for infringing its alleged rights in the shape and placement of clothing labels. We determined that the famous company's rights were suspect, and that it was vulnerable to charges of fraudulent registration and enforcement. We forced the company to abandon its claims against our client. 
  • Our client, a software manufacturer, was challenged by another company for infringing its trademark. We determined that the challenger's trademark rights were limited to specific areas of the United States, and that our client had priority in many other areas. Armed with this information, we were able to force the other company to sell its rights to our client for a modest amount.

Links

US Patent & Trademark Office - Trademarks Page
http://www.uspto.gov/main/trademarks.htm

International Trademark Association
http://inta.org/

Madrid Protocol - International Trademarks
http://www.wipo.int/madrid/en/

ICANN - The Internet Corporation for Assigned Names and Numbers
http://www.icann.org/