Trademark

Overview

Establishing, maintaining and enforcing a strong brand demands a unique blend of thoughtful counsel, business acumen and knowledge of domestic and international trademark law. At Dykema, we provide clients with measured and responsive trademark advice in all areas of trademark law ranging from brand naming to business identity and reputation management to global portfolio procurement, maintenance and enforcement.

Our experienced team consists of lawyers, international affiliates, investigators, watching services and search companies. We use a practical approach together with state-of-the-art technology to help procure and protect trademark portfolios in line with client expectations and budgets. Additionally, we offer BRANDAMENTALS—our “pay-one-price” subscription program that helps clients manage budgets through transparency in billing.

The Dykema trademark team helps organizations of all sizes and types obtain state, federal and international registrations for the words, designs, symbols, sounds, smells, trade dress and other indicia of source for their companies and products. This includes prosecution and defense of trademark infringement, dilution, false advertising and other unfair competition matters before all relevant courts. Importantly, given the global landscape in which many clients market and sell their brands, Dykema’s relationships with our international counterparts are crucial in the procurement, maintenance and enforcement of our client’s registrations abroad.

We offer a complete menu of services to assist clients with the many issues involved in acquiring and securing trademarks. These range from reviewing computerized trademark searches and rendering trademark clearance opinions and trademark infringement opinions to litigating trademark matters in U.S. and international courts and defending against allegations of trademark infringement.

Among the services we provide are:

  • Helping clients choose new company names, marks, logos and slogans
  • Conducting clearance searches and providing risk assessments concerning availability and registrability of new marks
  • Obtaining registrations in the U.S. and in foreign countries
  • Managing portfolios (i.e., ensuring maintenance and renewals and coordinate enforcement)
  • Protecting trademarks from misappropriation and other misuse by third parties; as well as watching for and policing against unauthorized use of similar and diluting marks by others
  • Filing oppositions/cancellation actions
  • Seizing counterfeit goods
  • Resolving domain name disputes via the Anticybersquatting Consumer Protection Act and Uniform Domain Name Dispute Resolution Policy

Experience Matters

We have:

  • Represented plaintiff alleging superior rights in use of a trademark related to investments, electronic trading and financial services, against related entities utilizing the mark in similar service areas.
  • Represented a foreign OEM in defense of a luxury brand trademark.
  • Obtained at trial and preserved on appeal, in a published opinion, an injunction and $1 million damage award for trademark infringement and unfair competition in favor of machine tool manufacturer client.
  • Filed and prevailed in more than 30 proceedings under the Uniform Domain Name Dispute Resolution Policy, resulting in the transfer of many valuable domain names to a wide variety of clients.
  • Negotiated hundreds of domain name transfers through effective use of cease-and-desist letters.
  • Several lawyers in Dykema’s Trademark practice have served on International Trademark Association committees, including the Internet Committee. In this capacity, they have drafted numerous white papers on domain name regulation and issues, including the rollout of the new gTLDs, ICANN governance and WHOIS data.
  • Consistently develop creative response strategies to Office Actions issued by USPTO Examining Attorneys, resulting in the withdrawal of many complicated 2(d) refusals.

Speaking Engagements