Trademarks

Randy Michels, Jack Wheat, Juan Carlos Marquez and Alex MacKay

 

Stites & Harbison's trademark attorneys serve a diverse clientele around the world. We have extensive experience helping clients secure and protect their trademarks. Examples of the services we provide include:

  • Conducting clearance searches to select protectible marks;
  • Prosecuting trademark applications with the United States Patent and Trademark Office (USPTO) as well as with state trademark offices;
  • Facilitating the registration of trademarks abroad;
  • Maintaining and renewing trademark registrations in the U.S. and abroad;
  • Negotiating and documenting transfers and licenses of trademarks;
  • Recording trademarks with Customs to help prevent the importation of counterfeit goods;
  • Protecting our clients' marks on the Internet; and
  • Resolving trademark disputes through litigation, including practice before the Trademark Trial and Appeals Board at the USPTO.

To better serve our clients, the firm has an office located near the USPTO, so that an attorney can resolve issues in person when necessary.

Our attorneys understand the value of communication and networking, and are therefore active members in a number of trademark organizations. These memberships enable us to advocate for trademark issues, allow us to maintain connections with trademark counsel around the world and help us keep our clients at the forefront of emerging and significant issues facing trademark owners today.

Stites & Harbison is listed among the Top 25% of 140 Trademark Firms in the nation by Intellectual Property Today(May 2011 issue).  The ranking is based upon the number of trademark registrations issued in 2010.  No other law firm participating in the survey with a presence in Kentucky or Tennessee ranked higher than Stites & Harbison.

Leveraging and Acquisition of Trademark Portfolios

Once our clients have established trademark portfolios, we counsel and assist them in maximizing the value of their trademarks through licensing agreements, sponsorship agreements and other relationships with third parties.

In transactions involving the acquisition or disposition of trademark portfolios, our intellectual property attorneys team with business services attorneys to:

  • Coordinate due diligence efforts;
  • Evaluate and assess the status of trademark portfolios involved in a transaction;
  • Draft and negotiate the appropriate terms related to trademarks in a transaction, whether they are central to or incidental to the larger transaction; and
  • Ensure the accuracy of documents that reflect the transfers of trademarks.

We also have experience working on secured transactions in which trademarks and other intellectual property form a significant part of the collateral securing a loan. We draw on the firm's interdisciplinary experience to complete such transactions.

Trademark Basics

Click here to see our Intellectual Property Litigation information.