Contacts
- Jennifer Fraser Leader202-906-8712
Professionals
- Adams, Michael
- Borelo, Ryan
- Dorfman, Michael
- Fingerhut, Eric
- Fraser, Jennifer
- Gentner, Marsha
- Hansen, Conrad
- Harkins, J. Daniel
- Hays, Matthew
- Heimbecher, Reed
- Johnson, Victor
- Mayfield, Denise
- McKeon, Shannon
- Mouawad, Samir
- Nielsen, Matthew
- Pechacek, James
- Rees, John
- Seppelt, Jon
- Smith, Prescott
- Sokatch, John
- Zeller, Steven
Related Practices
Related Industries
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.
News
- December 20, 2020
- July 27, 2020
- July 13, 2020
- July 10, 2020
- June 30, 2020
- April 27, 2020
- September 25, 2019
- June 25, 2019
- May 23, 2019
- March 5, 2019
- February 28, 2019
- November 8, 2018
- November 5, 2018
- October 24, 2018
- June 27, 2018
- April 24, 2018
- February 16, 2018
- February 14, 2018
- February 2, 2018
- January 31, 2018
- November 1, 2017
- August 28, 2017
- June 20, 2017
- February 16, 2017
- February 15, 2017
- February 7, 2017
- January 18, 2017
- January 5, 2017
- November 8, 2016
- October 10, 2016
- June 10, 2016
- February 5, 2016
- September 16, 2015
- December 2, 2014
- June 19, 2014
- April 2, 2014
- March 27, 2014
- March 24, 2014
- January 30, 2014
- January 13, 2014
- June 8, 2012
Press Releases
- November 5, 2020
- August 20, 2020
- February 24, 2020
- February 17, 2020
- February 5, 2020
- November 1, 2019
- August 15, 2019
- March 12, 2019
- Eric Fingerhut and Jennifer Fraser Ranked in World Trademark Review 1000 for Eighth Consecutive YearJanuary 31, 2019
- November 1, 2018
- October 1, 2018
- September 17, 2018
- August 15, 2018
- June 15, 2018
- June 5, 2018
- April 23, 2018
- February 12, 2018
- February 5, 2018
- January 23, 2018
- January 22, 2018
- January 16, 2018
- January 4, 2018
- August 15, 2017
- February 6, 2017
- November 1, 2016
- August 15, 2016
- May 27, 2016
- August 18, 2015
- July 24, 2015
- June 25, 2014
- May 14, 2014
- March 10, 2014
- January 30, 2014
- July 8, 2013
- February 19, 2013
- January 7, 2013
Publications
- IP WatchdogJuly 22, 2020
- Law360August 22, 2019
- Intellectual Property MagazineSeptember 1, 2018
- “Drawing the Battle Lines: Adidas’s Mission to Protect Its Three Stripes”World Intellectual Property ReviewApril 24, 2018
- Intellectual Property & Technology Law JournalApril 2018
- December 21, 2017
- Westlaw Journal Intellectual PropertyJanuary 4, 2017assets/htmldocuments/2017-Expert%20Analysis-Gentner.pdf
- Presidential Candidates May Come and Go, But Their Monikers Last ForeverEditor & PublisherNovember 8, 2016
- Metropolitan Corporate CounselNovember 28, 2015http://www.metrocorpcounsel.com/articles/33251/know-your-domain-audit-internet-domain-names-can-become-undiscovered-asset-bottom-lin
- SerendIPityJanuary 13, 2015http://www.ip-lawblog.com/elephant-in-the-room-in-the-supreme-courts-recent-hearing-on-the-jurys-role-in-trademark-infringement-cases_120914
- "Trademark Trial and Appeal Board Rules 'REDSKINS' Name Disparaging and Cancels Registrations"Serendipity, Dykema IP BlogJune 18, 2014
- "Spring Cleaning...Eight Easy Ways to Get Your Trademark House in Order"The Metropolitan Corporate CounselApril 2014
- Trademark Lawyer MagazineFebruary 1, 2014
- "The King is Dead - And Overruled"September 19, 2011
- "Fighting Online Counterfeiters at Internet Speed"December 28, 2010
- "New Indictment of In-House Counsel Indicates Enhanced Efforts to Hold Corporate Executives Accountable for Food and Drug Law Violations"November 15, 2010
Events & Speaking Engagements
- November 20, 2020
- October 29, 2020
- September 30, 2020
- September 29, 2020
- What's a Trademark To Do: Protection and Infringement on the Internet, The District of Columbia Bar Continuing Legal Education Program, Washington, DCJune 25, 2014
- Management of Trademark Departments - Top 10 Strategies, FICPI ABC Meeting 2014 Master Class in IP Strategy, Bridgetown, BarbadosMarch 1, 2014
- Maximizing the Effectiveness and Impact of a Limited Anti-Counterfeiting Budget, 7th Annual Anti-Counterfeiting & Brand Protection East CoastSeptember 28, 2011
- Ask the Experts: What Would You Do? 30 Answers in 30 Minutes Anti-Counterfeiting & Brand Protection West CoastJanuary 26, 2011
Articles & Alerts
- July 6, 2020
- Supreme Court Holds Willfulness Not Required For Disgorgement of Profits From Trademark InfringementApril 27, 2020
- January 31, 2020
- July 19, 2019
- Goal Is to Improve Accuracy and Reduce Potentially Invalid RegistrationsFebruary 27, 2019
- How to Preserve Rights with Minimal Expense and RiskFebruary 2, 2018
- March 26, 2013
- February 5, 2013
- The Auto Industry Embraces Domain Name ExpansionNovember 9, 2012