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Trademarks & Service Marks

We appreciate that your brand is one of your most important assets — and we aggressively protect and enforce it around the globe. At Harness Dickey, we serve as our client’s trusted business partner in protecting some of the most significant trademarks and service marks in the world. We help our clients clear their marks with a cost effective combination of in-house screening and third party searching. We protect those marks with well thought out, carefully crafted applications.

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We work with our clients to make sure that they use their marks correctly. Through extensive watching and monitoring, we spot potentially conflicting marks long before there is a conflict. Our experience includes:

  • Searching, clearing, filing and registering trademarks, service marks and domain names in the U.S. and abroad
  • Filing and defending trademark and service mark Oppositions and Cancellations before the Trademark Trial and Appeal Board
  • Enforcing and defending trademark and service mark rights in civil actions in Federal District Court and the Court of Appeals for the Federal Circuit
  • Filing and defending UDRP domain proceedings before WIPO, NAF and other global administrative bodies
  • Combatting online infringement against cybersquatters, typosquatters and metataggers
  • Negotiating and drafting trademark licenses and franchise agreements
  • Safeguarding IP assets in mergers, acquisitions, investments and due diligence projects
  • Litigating disputes that involve trade dress, trade names, unfair competition and comparative advertising
  • Trademark validity and infringement opinions
  • Global anti-counterfeit and Customs enforcement actions

We develop trademark strategies that match our client’s commercial goals rather than simply file applications. The need to enforce trademark rights has escalated because the Internet makes it easier for counterfeiters to hijack brands, duplicate copyrighted materials and sell pirated goods. We take pride in not only shutting down these predators, but also in doing so quickly and cost effectively. It may sound like a cliché, but when it comes to trademark and service mark matters throughout the world, we make it our business to be certain that we’ve got your back.

Our Firm is consistently ranked as one of the top trademark filers. Our trademark attorneys have received numerous recognitions and awards including the American Corporate Counsel Association’s Client’s Choice award in trademark law, The Top 250 Women in IP, Leading Lawyers, Super Lawyers and Best Lawyers.

Anticounterfeiting

Anti-counterfeiting and counterfeiting is an escalating threat to brand owners in the world economy. Harness Dickey knows what it takes to defeat counterfeiters. We execute proven legal tactics and enforcement actions when it comes to worldwide brand protection. Whether our client is a small domestic company or a large international corporation, we work tirelessly to protect our client’s brands from counterfeiters.

Counterfeit goods are everywhere, in both mature and emerging markets on a global scale. In view of the fact that counterfeiting is international in scope, our team has the tools to locate and aggressively go after the manufacturers and marketers of counterfeit products. We maintain a long track record of working with law enforcement agencies and investigators on an international scale.

The Internet is the catalyst for the distribution of counterfeit products. Harness Dickey is familiar with the myriad of take-down procedures, and how to use them to quickly remove infringing material from the Internet.

Harness Dickey works productively with U.S. and International Customs and law enforcement to participate in international investigations and assists with raids on counterfeiters. Our anti-counterfeiting efforts are not just in the U.S. We have initiated counterfeiting investigations in China, Hong Kong, Europe, South America and India. We have successfully interacted with global Customs and law enforcement to protect our client’s products against counterfeiters.

Our team aggressively goes after counterfeiters in court. We have sued many infringers and counterfeiters in the United States and abroad, and achieved consistently positive financial outcomes and settlements as a result of our advocacy. We are also well-known for frequently reaching amicable and voluntary resolutions that do not require litigation. We take pride in quickly concluding matters in a cost efficient manner and without protracted litigation when possible.

We remain on the frontier of evolving tactics for infringement and counterfeit enforcement worldwide. Several of our attorneys are active members of the International Anti-Counterfeiting Coalition (IACC) and International Trademark Association (INTA).

Enforcement

Trademark enforcement can be crucial to maintaining and growing market share. Harness Dickey is known for customized and cost-efficient global enforcement strategies. Whether on the offense or defense, our attorneys understand how to protect trademarks and trade dress, as well as prosecute and defend unfair competition claims related to false advertising, counterfeit and gray market goods.

We enforce our clients’ trademark rights by designing comprehensive enforcement policies and policing initiatives, while aggressively halting infringers as immediately as possible. Should a dispute escalate into a TTAB proceeding or litigation, we fight fervently to ensure our clients’ marks remain viable and intact.

Enforcement is essentialowners can no longer do nothing or turn a blind eye. If trademark infringement is tolerated, rights to that mark may ultimately be lost or forfeited. As a result, Harness Dickey’s team is known to stop a competitor’s attempt to register an identical or similar mark with a trademark office, or wrongly use such marks in the traditional and online market space. We are also called upon to conduct regular IP enforcement audits as an integral component of a more comprehensive global enforcement strategy, ensuring that our client can enforce their rights in various countries of interest and as needed.

On many occasions, we stop inappropriate use without litigation. By contacting an infringer early, before they are invested in the mark, our clients have enjoyed tremendous cost savings and a quick resolution of the issue. However, when a negotiated solution is not possible, particularly where large scale infringement has run rampant, trademark litigation or arbitration may be the only possible means of resolution. In such circumstances, our firm has been able to recover substantial damages resulting from infringing activity, particularly when such infringement is proven to be intentional. We are also effective at executing injunctive relief, restraining the infringer from continued unlawful action and impounding and eliminating unlawful goods.

Global Trademark Strategy

Harness Dickey employs a global trademark strategy. For decades, our clients who sell products and services throughout the world have turned to us to assist them in developing worldwide registration strategies that make sense for their businesses.

We regularly tackle the most challenging international trademark issues imaginable. Our clients include Fortune 100 companies, as well as many mid-size businesses taking their first steps into the international realm. Regardless of your company’s size or commercial volume, our lawyers can help to develop trademark strategies that work for your business and budget.

An international trademark practice is far more complex than a domestic practice. To be successful, we remain abreast of emerging international rules, regulations and treaties, as well as the practical ins and outs of when and how to operate under them to more effectively protect your trademark in the global market space.

Our lawyers have filed and prosecuted trademark applications in over 160 countries throughout the world. We are responsible for international trademark portfolios that include literally thousands of marks and registrations. It is imperative to have trademark lawyers who are specialized experts and not just lawyers who dabble in matters involving international trademark law.

In addition to our own knowledge, Harness Dickey has, for decades, carefully selected and developed key relationships with some of the best law firms throughout the world to assist in implementing your strategies and provide further specialization in the actual foreign countries where you operate. It is a daunting task to select experienced foreign lawyers and law firms that will take your issues to heart and cost effectively secure the result you need. Harness Dickey has forged trusted relationships over many decades with some of the best trademark law firms in the world, which invariably provides and adds benefit to our clients.

Trademark Litigation

Harness Dickey is known for world class trademark litigation. Our litigators are industry leaders in the prosecution and defense of the full spectrum of trademark related claims. We handle all aspects of such disputes, ranging from informal negotiations to trial and appeal — and often with millions of dollars at stake. Our attorneys take a practical, business oriented approach to resolving trademark disputes, ever mindful of the critical balance between cost and result.

We strive to keep our clients out of court and monetizing their marks. However, we do not shy away from a tenacious court battle when our client’s bottom line is at stake. We are known for victory even in the most acrimonious circumstances and arduous court battles. We maintain an impressive record of positive outcomes and published decisions in the areas of trademark and trade dress litigation. Our experience includes the:

  • Negotiation and settlement of disputes before the claim can snowball into expensive litigation
  • Trademark and trade dress litigation, trials and appeals in federal and state courts across the country
  • Pursuit of and defense against requests for temporary restraining orders, preliminary and permanent injunctive relief
  • Prosecution and defense of oppositions and cancellation proceedings both in the U.S. and before the Trademark Trial and Appeal Board, as well as internationally
  • Prosecution and defense of rights of publicity and misappropriation of name and image in advertising
  • Delivery of proactive legal counsel on branding and advertising programs designed to mitigate risk and liability going forward

We offer a significant understanding of the Lanham Act. We know how the Lanham Act overlaps with related state laws pertaining to trademark infringement, unfair competition and dilution. We have also litigated and affirmatively resolved complex trademark claims involving such issues as nominative fair use, use of surnames, reverse confusion and protectability of trade dress.

We are enforcers who leverage our client’s trademark rights in forums worldwide. We strive to achieve consistently positive outcomes in obtaining preliminary injunctions for our clients, a critical way to mitigate damages early in the litigation process. We know how to select and work with expert witnesses in order to properly analyze issues such as secondary meaning, likelihood of confusion and genericness. We are highly skilled in litigating domain name disputes, both pursuant to ICANN proceedings and the Anticybersquatting Consumer Protection Act. We have also achieved major victories in recovering domain names that infringe on another’s trademarks.

Trademark Selection, Prosecution & Registration

For nearly a century, Harness Dickey has helped clients to protect their marks throughout the entire trademark life cycle. With decades of experience and thousands of marks in our care, we have at our fingertips the practical answer to even the most unusual trademark questions. Our lawyers are highly skilled and effectively shepherd applications through the trademark office bureaucracy, maintaining and enforcing many of the world’s most famous trademarks and service marks. Regardless of the problem, we have probably seen it before, and solved it.

Brands are created by trademark rights. Recognizing the importance of these rights and taking the appropriate steps to secure them allows businesses to expand their competitive edge. We know first-hand what it takes to safeguard these rights at every stage of the development process. We counsel our clients on brand strategies, registration, proper use and enforcement of their marks. We develop use guides for marketing departments, licensees and distributors.

While there are certain facets of a trademark practice that are fairly routine, there are also many traps for the unwary. Unfortunately, for those who do not deal with trademarks on a daily basis, many of these traps are not recognized until after litigation ensues and the error of defect is uncovered by an opponent.

Although they are powerful marketing tools, trademarks are also fragile. All too often when a registration is renewed, the ten-year old description of goods and services is no longer accurate due to changes in the business over time. Inattention to this seemingly minor matter can result in an entire registration (even old, venerable registrations) being declared invalid or subject to cancellation.

These are the type of issues that require the attention of lawyers who are actively staying on top of all aspects of trademark law and practice, including the niche issues that pose serious consequences to your trademark rights if you ever need to enforce them.

Maximizing Trademark Rights

Few assets are as important to a business as a trademark. That is why Harness Dickey is dedicated to helping clients fully realize the value of their mark. We deliver extensive experience in all areas of trademark licensing, as well as with merchandising programs and larger scale trademark holding company matters. We are involved in significant transactions of important brands. We ably represent both licensors and licensees, as we are well versed in the commercial and legal aspects pertaining to both sides of the deal.

Our trademark expertise is both broad and deep. Our experience ranges from trademark licensing, joint ventures and strategic alliances; to supply and distribution, co-branding, franchising, marketing, promotion and advertising agreements; to the transfer, sale or acquisition of marks or portfolios of marks. Our trademark licensing skills span the full array of industries, a sampling of which includes consumer goods and retail, electronics, entertainment and media, financial services and food and beverage, among many others.

We work with our clients to design and aggressively enforce defensive strategies for trademarks, trade dress and unfair competition. We recognize how important it is for our client to preserve and leverage their unique trade identity in an increasingly competitive and complicated market space.

Our extensive and practical command of the many forums where trademark and unfair competition issues are decided have served our clients well. Our trademark experience in federal and state courts; ITC Section 337, U.S. Trademark Office and UDRP proceedings; as well as in arbitration, mediation and other alternative dispute proceedings are often the critical reason a favorable outcome is achieved.

TTAB Proceedings

Harness Dickey knows what it takes to prevail before the Trademark Trial and Appeal Board. Trademark registration is one of the first steps in protecting a mark in the U.S., and when a Trademark Examiner refuses a registration, or when there is a dispute as to whether an applicant is entitled to a registration, these disputes are resolved by the Trademark Trial and Appeals Board (TTAB). The March 15, 2015 Supreme Court decision in B&B Hardware, Inc. v. Hargis Industries, Inc. shows that courts should follow TTAB decisions. As a result, it is more important than ever to get the right result before the TTAB.

Every day, Harness Dickey is defending the rights of our clients before the TTAB. We handle the full spectrum of related claims, a sampling of which includes:

  • Trademark opposition and cancellation proceedings
  • Ex parte appeals of final refusals issued by the Trademark Examiner
  • Concurrent Use Proceedings
  • Settlements via co-existence agreements and licensing agreements

Many firms claim to have TTAB experience, but only a select few have actually tried cases to completion before the TTAB. Harness Dickey delivers such specific and honed competencies. We are involved in all phases of a TTAB proceeding, ranging from the preliminary notice and answer; to settlement conferences; to initial, expert and pretrial disclosure; to the creation and analysis of expert testimony and/or reports; through trial.

Harness Dickey has had a substantial practice before the TTAB for decades, which gives our clients the competitive edge. We know what to expect, and can usually analyze and predict outcomes allowing us to ultimately formulate a multi-pronged approach to any given issue. We are consistently ranked as one of the top filers of oppositions and cancellations annually. Our attorneys work directly with clients to develop a plan that parallels business goals. We carefully analyze the claim, prosecution or defense strategy, relevant evidence and merits of our client’s position under the law and as it applies to their commercial objectives and financial resources.  We devise solutions, whether by settlement or by trying the case, that best achieve each client’s objective.

Because of our extensive trademark monitoring capabilities, we are often able to warn our clients of potentially conflicting filings before they are even published. As a result, we drive resolution through direct communication with an infringer prior to publication and formal opposition. This type of immediate action and persuasive and diplomatic negotiation has resulted in substantial cost savings for our clients.

Trademark & Domain Name Protection

Selecting the right name or mark is one of the most significant choices a business can make. An organization’s or individual’s moniker, website domain name, trademark and trade dress often have a significant impact on the overall profitability of a business. Harness Dickey ensures that such marks and domain names are not only substantiated, but also poised and strengthened for success.

We file hundreds of trademark applications per year. Harness Dickey guides clients through the process of selection, registration, management and enforcement of trademark, trade dress and domain names. We are known for our consistently accurate analysis of prospective third-party infringement, as well as how the potential name or trademark should be registered so that ownership exclusivity extends to both the domestic and global markets.

In addition, we aggressively oppose and seek cancellation for third-party registrations that threaten our clients’ marks.   Whether this is initiated through the USPTO, under the Madrid Protocol, or before various national and regional patent and trademark offices, our attorneys have proven their ability to continually reinforce our client’s ownership of their assets.

Harness Dickey is well versed in all types of transactions involving domain names. Our capabilities range from domain name registration; to development and hosting agreements; to co-location, linking and domain name acquisition; to online advertising campaign development; to devising and executing privacy policies and terms and conditions of use of our client’s website. We ensure the timely renewal of our client’s primary domain name, as well as identify, register and maintain all associated domain names.

We strive to reduce the risks of doing business online. We are highly adept at executing and monitoring watch systems that identify similar domains registered by the competition and could result in customer confusion, diminished sales and contracting market share.

Customs & Border Protection

Most people know that our U.S. Customs and Border Protection agency (CBP) has the ability to seize counterfeit and infringing goods at U.S. borders. But… did you know that trademark and copyright registration owners can record those documents with CBP, and CBP will actively look for, seize and destroy infringing and counterfeit products?

CBP has substantial power to search imports and exports and exclude, detain and/or seize and destroy counterfeit and infringing products. And, if you help them by using their registration system, they’ll help you by seeking out problem imports and exports. When CBP suspects that goods are infringing, the goods are detained for up to thirty days — during which time CBP will determine whether to formally “seize” the goods. During the detention period, copyright and trademark owners are advised of the country of origin, the date of importation and the port of entry, and they are given a description of the merchandise and the quantity of merchandise being detained. If a seizure occurs, the copyright/trademark owner is advised of the country of origin, the date of importation, the port of entry, a description of the merchandise and the quantity of merchandise, and is also given the names and addresses of the manufacturer, exporter and importer. This information often proves invaluable if a lawsuit is warranted.

Using the Intellectual Property Rights Recordation (IPRR) system is easy. It can be done online using a credit card, and the cost is minimal. If you are experiencing problems with counterfeit or infringing products being imported or exported at our borders, let us help you register your intellectual property rights with CBP. Making trademark and copyright rights known to border personnel works. In 2014 alone, more than $1.23 billion worth of illegal goods were seized by CBP.

Harness Dickey assists clients by familiarizing CBP with client products and by providing information about known or suspected infringers/infringing products. Using a system known as “C-TPATS” (Customs-Trade Partnership Against Terrorism Security), owners can assist CBP in recognizing counterfeits/knock-offs of their original products through a portal located online. CBP, at no cost, will engage with you and become familiar with your products so CBP agents can more readily identify illegal products at the border. Just let us know if you’d like more information about this useful, no-cost tool.