Attorneys in Saul Ewing’s Intellectual Property Group assist companies in developing and protecting their brands, including through identifying, securing and protecting trademarks, service marks and trade dress in the U.S. and abroad. From developing strategies to handling infringement litigation, our team takes a comprehensive approach when advising on the following areas:
- Strategies
- Developing national and international trademark registration strategies consistent with existing and proposed business operations
- Advising on mark selection
- Portfolios
- Managing domestic and international trademark, service mark and trade dress portfolios
- Performing portfolio, product and marketing material audits to ensure continued trademark strength and identify potential gaps in portfolios
- Analyzing portfolios to determine strategic value
- Advising on corporate exit strategies
- Trademark Prosecution & Enforcement
- Performing clearance searches to confirm availability of marks for use and registration
- Drafting, filing and prosecuting trademark applications to completion, both domestically and internationally
- Representing clients in Trademark Trial & Appeal Board proceedings, including appeals, and opposition and cancellation proceedings
- Policing our clients’ marks by monitoring competition and enforcing marks through litigation
- Conducting domain name dispute proceedings under the Uniform Domain-Name Dispute Resolution Policy (UDRP) to recapture domain names from cybersquatters
- Litigation
- Representing clients in trademark infringement, unfair competition and trade defamation disputes in federal courts throughout the U.S.
- Initiating and defending against motions for preliminary injunctions and temporary restraining orders (TROs)
- Trade Dress
- Helping clients identify unique and innovative products at an early stage
- Advising on the protection of the overall “look and feel” of products and their associated packaging through design and trade dress registration, enforcement, and litigation
- Transactions, Licensing & Agreements
- Negotiating and drafting licensing, product development, distribution, manufacturing and merchandising agreements
- Conducting IP due diligence in corporate transactions, including the identification and transfer of key trademark and trade dress assets
- Antitrust
- Advising on unfair competition and monopolies, and related litigation
Key Contacts
Saul Ewing attorneys have represented the following clients in these select trademark and trade dress matters:
Litigation
- A plaintiff museum and attraction owner in trademark infringement action against a video game publisher in the U.S. District Court for the Southern District of Florida.
- A defendant beverage manufacturer in a trademark infringement action in the U.S. District Court for the Northern District of Indiana.
- A plaintiff pest control manufacturer in trade dress infringement and breach of contract action in the U.S. District Court for the Middle District of Florida.
- A plaintiff washroom equipment manufacturer in a trade dress action in the U.S. District Court for the Central District of California.
- A frozen food manufacturing company as the plaintiff in a four-day jury trial against another maker of frozen foods that resulted in jury findings of willful trademark infringement, willful trade dress infringement, willful unfair competition and willful false advertising.
- A start-up electronic slot machine company in the favorable settlement of intellectual property allegations that include infringing on dozens of its trademarks, copying its trade dress, and misappropriating trade secrets and confidential information, which were made by another gaming company where some employees of the start-up company previously worked.
- An alcoholic beverage manufacturer in the U.S. District Court for the Northern District of Illinois in a trade dress action relating to flavored malt beverages.
- A media packaging manufacturer in a trade dress infringement case against a competitor in which a preliminary injunction and subsequent settlement was secured that barred further sales of infringing products.
Strategy, Prosecution & Licensing
- A British multinational semiconductor and software design company as its sole U.S. trademark counsel, which includes filing, prosecuting and managing its entire trademark portfolio; and providing strategic trademark advice and opinions on policing activities in the U.S. related to its trademark portfolio.
- An employment agency in providing domestic and international trademark counseling, strategy and prosecution, including reviewing and issuing registrability opinions, filing and prosecuting trademark applications, and globally monitoring and enforcing trademark rights.
- A university in securing trademarks for its sports teams’ mascot and enforcing the trademarks.
- A Louisiana university in reviewing trademark issues (and revising as needed) in agreements relating to the formation of and participation in esports leagues.
- A flooring manufacturer in advising on, registering, managing, and enforcing its U.S. and international trademark portfolio, including negotiating licenses and acquisitions, performing due diligence, and preparing assignments in connection with loan facilities.
- A pharmaceutical company in managing its trademark portfolios, handling trademark prosecution and providing strategic trademark advice.
- A real estate developer in counseling on brand licensing issues related to acquisitions and property development projects, managing trademark clearance, filing and prosecuting trademark applications, and advising on trademark enforcement.
- A UK intellectual property law firm as sole U.S. counsel in advising its start-up technology clients on their IP portfolios, including U.S. patent and trademark prosecution and U.S. IP law strategies.