Trademark

Pierce Atwood’s trademark attorneys provide creative, practical, business-oriented advice on trademark matters across a variety of industries. Its clients range from Fortune 500 businesses to technology start-ups throughout the United States and abroad. The firm’s deep bench of expertise covers the entire lifecycle of a trademark. Pierce Atwood trademark attorneys have many years of experience counseling and assisting clients on the selection and clearance of new trademarks, sophisticated domestic and foreign filing and prosecution strategies, trademark licensing and transactional work, and enforcement of trademark rights.

When business solutions are not available to resolve trademark disputes, our attorneys enforce and defend trademark rights in federal and state courts, in opposition and cancellation proceedings before the Trademark Trial and Appeal Board of the USPTO, and in domain name administrative proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP).

We know that it is critical to thoroughly understand a client’s business in order to provide the best advice and counsel. Our trademark attorneys have a wide range of industry experience to meet those needs, in areas including:

  • Banking and financial services
  • Computer software
  • Consumer products
  • E-commerce
  • Electronics and semiconductors
  • Entertainment
  • Fashion and apparel
  • Food and beverage
  • Footwear
  • Heavy machinery
  • Motorcycles
  • Personal care products
  • Pharmaceuticals
  • Sporting goods
  • Telecommunications

We work regularly with clients on marketing and advertising issues involving trademarks, copyrights, rights clearance, rights of privacy and publicity, content review, sweepstakes and contests, and false and deceptive advertising.

Pierce Atwood trademark attorneys also help clients manage the unique risks presented by online issues such as domain name disputes and cybersquatting, keyword advertising, social media, and other Internet-enabled practices of concern to brand owners. Leveraging a network of highly skilled trademark agents and counsel around the world, Pierce Atwood’s trademark team has the global reach to deliver results that brand owners need and expect.

SUCCESS

Bushmaster Firearms

Counsel for Bushmaster Firearms, Inc. in successful defense of trademark and trade dress infringement action.

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Pierce Atwood Wins Summary Judgment in Trade-Dress Infringement Case

Federal District Court in Boston granted summary judgment to firm client Vans, upholding the design of its Pro-Tec snow and skateboarding helmets against competitor’s trade dress allegations.

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Areas of Expertise

Trademark Portfolio Management

Angela Adams

Easton Baseball

Fairchild Semiconductor

Headblade

HP Hood

Maine Beer Company

Metso Paper

Ortholite

PANalytical

Tom’s of Maine

Vertafore

WEX

Pierce Atwood’s trademark attorneys manage clients’ global trademark portfolios that range in size from a single U.S. application or registration to as many as 600 properties in more than 100 countries. We also partner with a network of counsel and agents around the world to help manage our clients’ foreign trademark matters, and we are happy to utilize any existing relationships our clients may have with foreign firms that they wish to maintain. The heart of portfolio management is understanding a client’s business and its vision for the future. Pierce Atwood’s trademark team understands that and strives to see the world through its clients’ eyes, so that our advice takes into account both the legal and the business perspectives. Guided by this philosophy, Pierce Atwood’s trademark team has expertise managing the trademark portfolios some of the world’s most recognized brands.

Together with the team’s trademark paralegals, Pierce Atwood’s trademark attorneys closely monitor all prosecution and maintenance deadlines, and report to clients in the most efficient manner to enable prompt and early decisioning about declarations of use, incontestability affidavits, and renewals.

We believe that effective trademark management is about more than just “rubber stamping” the next renewal. So, rather than merely notifying clients about upcoming renewal deadlines, we work with our clients to assess, from a strategic standpoint, whether certain registrations are worth maintaining in light of the client’s existing trademark coverage and business goals.

To ensure that our clients’ trademark portfolios mirror their business priorities and needs, we help to identify gaps in coverage—whether geographically, in terms of the goods and services covered, and the nature of the mark at issue, e.g., design vs. word—and develop strategic plans to close those gaps efficiently and effectively.

Our trademark professionals have extensive experience with the intake of portfolios, some of which include hundreds of trademark properties. We have managed large-scale trademark assignment and name change recordation programs, and work closely with an extensive network of firms and agents located outside the U.S. to ensure that foreign registrations are properly updated and maintained.

Clearance & Watch Services

We obtain and review trademark availability searches to help our clients assess the risks in adopting and using a new trademark, the chances of successfully registering the new mark, and other issues that are likely to arise regarding third-party owners of similar marks. We also conduct searches to help our clients assess the strength of their existing marks, and to identify third-party uses of potentially infringing trademarks for enforcement purposes. We work with industry-leading vendors to conduct comprehensive trademark searches and to provide trademark watch services.

Filing & Prosecution

Admirals Bank

Bauer Hockey

Bottomline Technologies

Cambridge University Press

Combat Sports Group

Demerbox

Easton Baseball

Fairchild Semiconductor

Headblade

HP Hood

Maine Beer Company

MaineMedia Collective

Marine Harvest

Ortholite

PANalytical

Tetraphase Pharmaceuticals

Tom’s of Maine

Vertafore

WEX

Our filing and prosecution work is informed by a deep knowledge of the client’s business and future goals. When a client asks us to file a new trademark application in the U.S., we carefully prepare a filing strategy that fits their particular situation. We consider the format of the mark to be registered (word, stylized, logo), determine the applicable filing and registration bases (use based, intent to use, Paris Convention priority, foreign registration), and then locate and review acceptable specimens of use. We also help clients prepare accurate descriptions of goods and services for their applications in order to minimize the chances of receiving a refusal based on indefiniteness, avoid conflict with prior marks, and offer the broadest options for eventual foreign filings based on the U.S. application.

Upon receipt of a refusal from the USPTO, we advise our clients on the issues holding up their application, whether informal or substantive, and recommend the best strategies to overcome them. When a formal response is not the best or more efficient strategy, we are not afraid to think outside the box – successfully identifying leverage points for negotiating consent agreements, making the case to Examiners over the phone, and taking advantage of changes in the law to press our client’s case. Pierce Atwood trademark attorneys have extensive experience addressing all types of substantive issues before the USPTO including refusals based on likelihood of confusion, descriptiveness, genericness, geographic significance, surnames, ornamentation, and specimen issues. We have assisted clients with registration of trade dress, as well as other non-traditional marks such as model/grade designations, sound marks, and background designs. When necessary, we assist our clients in establishing secondary meaning through evidence of use, promotion, and consumer response.

When our clients are interested in filing applications for their marks outside the U.S., we start those discussions early in order to determine the best strategies and to ensure that the domestic application is filed in a way that will maximize the client’s foreign-filing options. We advise our clients on the advantages and disadvantages of using the Madrid Protocol to file applications outside the U.S., and we have considerable experience managing all aspects of the International Registration system. When our clients elect to file foreign applications on a national basis, we call upon our extensive network of firms and agents located throughout the world to assist with the process.

Trademark Enforcement & Litigation

Bauer Hockey

Bottomline Technologies

Cambridge University Press

Easton Baseball

Headblade

Maine Beer Company

Ortholite

Vertafore

WEX

Brand owners must police their trademark rights or risk losing them, but effective policing requires a realistic assessment of the landscape surrounding the trademark at issue. This includes taking a careful look at both the marketplace and inherent strength of the mark at issue, and the extent of third-party uses of similar marks. With that information in hand, we help determine the likelihood of success of our client’s proposed enforcement activities so that our client can make a well-reasoned decision.

For those clients that subscribe to watch services, our paralegals and attorneys monitor trademark watch notices on a weekly basis and inform our clients of potentially problematic third-party trademark filings in the U.S. and elsewhere. At all times, we exercise judgment and try to see the world from our client’s perspective, implementing consistent and effective strategies to strengthen and protect the client’s brands.

When there is an issue, we take a problem-solving approach to enforcement. Our demand letters are informed by our best understanding of the marketplace and leverage points relevant to the target, and we efficiently negotiate resolutions that keep the client’s space clear of infringers.

When necessary, we initiate proceedings before the Trademark Trial and Appeal Board. Pierce Atwood trademark attorneys have litigated U.S. opposition and cancellation proceedings from filing through to decision, and are skilled at taking discovery and building strong evidentiary records. We are well-versed in the unique aspects of the Board’s rules of practice, and help set our clients’ expectations early in such proceedings so that the desired result always remains in focus.

We are also adept at federal court litigation. Our trademark attorneys have successfully litigated proceedings in federal courts across the country, and, unlike many boutique IP law firms, we are back-stopped by an experienced litigation bench whose expertise and input can be leveraged as needed. With these resources gathered under one roof, we can do more for our clients, and more efficiently, than our competitors.

If a client’s infringement issue involves activities outside the U.S., we work closely with foreign litigation counsel to send appropriate demand letters and, if additional pressure is required, commence legal action before foreign courts and tribunals. Our attorneys have facilitated and managed trademark litigation and opposition matters in countries around the world including Argentina, Brazil, Canada, China, Denmark, Germany, Greece, Japan, Korea, Mexico, Russia, UK, and others.

In addition to trademark matters, Pierce Atwood’s attorneys have extensive experience litigating IP matters including copyright and patent infringement, Internet domain name and trade name disputes, unfair competition and false advertising claims, and disputes over proprietary information, data security breaches, and trade secrets. We litigate matters before state and federal courts at the trial and appellate levels, and foreign tribunals. Click here for more information about our IP Litigation capabilities.

Domain Names, Keywords & Social Media

In a world of increasing interconnectivity and rapid changes in technology, effective trademark counsel needs to understand the ways that trademarks can be effectively used—and misused—online. At Pierce Atwood, we are experienced with trademark matters that arise in connection with social media and technology, and regularly advise our clients on the prevailing use and enforcement strategies in these spaces.

When our clients’ trademarks are incorporated into domain names by third parties, we advise them on the use of domain name cybersquatting proceedings under the UDRP, the Anti-Cybersquatting Consumer Protection Act, and parallel mechanisms offered under foreign law. Our attorneys have handled dozens of such proceedings for leading brand owners. Because that is not the only leverage point, we also explore other avenues for enforcement, including informal dispute resolution mechanisms offered by hosting services companies and other third parties.

Other examples of technology-related work include:

  • advising clients on generic top-level domain name (gTLD) issues, including use of ICANN rights-protection mechanisms to make use of sunrise periods or to dispute improper gTLD registrations;
  • advising clients on the use of trademarks in keyword advertising, such as through Google’s AdWords platform, and helping clients develop online marketing policies that may include use of negative matching and strategies for enforcing their rights against competitors; and
  • helping clients navigate social media issues, including use of trademarks in social media handles and hashtags, and handling users that impersonate brand owners.



Docket Management

Reliable and proactive docketing and deadline management are paramount. We use industry best practices to ensure that pre-filing, post-filing, and post registration deadlines are docketed and that clients receive timely notice to respond to deadlines and take other required actions.

Our trademark practice is supported by the CPi Trademark Management System, a best-in-class trademark management and docketing platform used by law firms and corporate legal departments throughout the United States. The CPi platform provides automatic deadline calculation, comprehensive searching, flexible and on-demand reporting, document generation, and image and document linking. We were one of the first law firms to provide real-time access to the CPi platform via a client portal.

125 Years