Trademarks
Stites & Harbison's trademark attorneys serve a diverse clientele around the world. We have extensive experience helping clients secure and protect their trademarks.
Services we provide include:
- Conducting clearance searches to select protectable 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
- Resolving trademark disputes through litigation, including practice before the Trademark Trial and Appeals Board of the USPTO.
To better serve our clients, our firm has an office located near the USPTO, so an attorney can resolve issues in person when necessary.
Our attorneys understand the value of communication and networking, so they are 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.
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 our firm’s 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
- 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. In such transactions, we again draw on the firm's interdisciplinary experience to achieve successful completion.
Click here to see our Intellectual Property Litigation information.
The PTO's Valentine: Rule Changes for Email Addresses and Specimens
On February 15, 2020, the PTO’s new examination guide will go into effect in accordance with new rule changes. In this post, we highlight two of the changes described in the guide that may have more of an impact on brand owners, namely, those pertaining to new email address and specimen requirements.
On Patents, Trademarks, and Descriptiveness
We have previously blogged about the intersection between patents and trademarks. In that post, we noted that if certain features are protected by a utility patent, that is strong evidence those features are functional and therefore ineligible for trade dress protection. But the content of patents can affect whether trademark protection is available in other ways as well.
Are Attorneys' Fees Expenses?
Earlier this week, in Peter v. Nantkwest, Inc., Case No. 18-801 the Supreme Court of the United States unanimously held that the United States Patent and Trademark Office (the “PTO”) cannot recover the salaries of its legal personnel as expenses under Section 145 of the Patent Act.
Global Executive Forum: Future of the China Relationship for Kentucky Business
Time: 8:00 a.m. - 10:00 a.m.
The Olmstead, 3701 Frankfort Avenue, Louisville, KY 40207
Alexandria office intellectual property attorney Jeffery Langer will be a presenter at this event hosted by the World Trade Center Kentucky on October 10, 2019.
Levi's Keeps Tabs on YSL's Pockets
Levi Strauss & Co. and Yves Saint Laurent have reached settlement in the Northern District of California lawsuit filed by Levi’s over YSL’s use of pocket tabs on jeans.
Federal Circuit Court of Appeals Leaves Open the Question of Whether ITC Determinations of Trademark Issues Have Preclusive Effect
On August 14, 2019, the U.S. Court of Appeals for the Federal Circuit issued a revised opinion in Swagway, LLC v. ITC, Case No. 18-1672 (Fed. Cir. Aug. 14, 2019) that left open the possibility that decisions by the International Trade Commission (the “ITC”) could have preclusive effect in federal district court cases involving trademarks.
The Trouble with THE
You may have heard by now that a certain Midwestern university that gets a lot of attention in this blog has filed an application to register the word THE as a trademark.
Federal Trademark Protection for Products Containing Hemp-Derived Cannabidiol (CBD)
As more states begin legalizing marijuana, there remains substantial tension with federal law, under which marijuana is illegal.
SMOKEY BEAR
Seventy-five years ago this year, one of the most familiar public service images was created: Smokey Bear.
New Examination Guide for Review of Specimens by US PTO
In its ongoing quest to preserve the integrity of the register, the United States Patent and Trademark Office (the “PTO”) has published new guidelines for the examination of specimens of use.
China IP Road Show: Strategies for IP Protection in China - What Georgia Businesses Need to Know
Time: 8:30 a.m. - 5:00 p.m.
Georgia Institute of Technology, Scheller College of Business Room 100, 800 West Peachtree Street, N.W., Atlanta, GA 30308
Strategies for IP Protection in China - What Georgia Businesses Need to Know
Finally U Can Trademark immoral or scandalous marks
On June 24, 2019, the United States Supreme Court struck down the Lanham Act’s ban on the registration of immoral or scandalous trademarks as a violation of the First Amendment.
Terrific Trademarks?
Recently, you may have heard the news about Tom Brady, a somewhat well-known quarterback in the professional sport of American football. His company, TEB Capital Management, Inc., filed two trademark applications seeking registration of the mark TOM TERRIFIC, one for shirts and one for trading cards, posters, and photographs.
Symposium on Global Markets - Nationalism and Protectionism: The United States in the International Arena
The Center for American and International Law, 5201 Democracy Drive, Plano, TX 75024
Alexandria office IP attorney Jeff Langer will be a panelist at this Symposium in Plano, Texas.
Trademarks in Bankruptcy
Last week, in Mission Products, Inc. v. Tempnology, LLC, ___ U.S. ___, Case No. 17-1657 (May 20, 2019), the U.S. Supreme Court resolved a circuit split by clarifying the consequences of a bankruptcy debtor’s rejection of a trademark license when the bankruptcy debtor is the trademark licensor.
Managing IP honors Stites & Harbison attorneys on "IP Stars" 2019 List
LOUISVILLE, Ky.—Managing Intellectual Property magazine has named seven Stites & Harbison, PLLC attorneys to the 2019 “IP Stars” list.
Terry Wright Elected to Fund for the Arts Board
LOUISVILLE, Ky.—Fund for the Arts has elected Stites & Harbison, PLLC attorney Terry Wright to its Board of Directors. He will serve a three-year term.
The College Admissions Scandal Crosses into Trademark Territory
By now you are no doubt familiar with the current college admissions scandal. After a few weeks of celebrities and other wealthy folks being embarrassed, being criminally charged, and pleading to those charges, a trademark issue finally surfaced in the popular press.
IIPCC's 3rd Annual Conference - The State of Innovation in the Union
Time: 12:00 p.m. - 5:00 p.m.
United States Capitol (US Capitol Visitors Center), First Street Northeast, Room SVC 209-08, Washington, DC 20004
Join panels of experts as we explore the state of innovation in the United States from the private, government, academic, and public perspectives.
Intellectual Property Seminars
Marshall University, Huntington, W.Va.
Attorney Terry Wright will present three free intellectual property seminars focusing on 3-D designs and manufactured goods, pharmaceuticals and medical devices presented by the Marshall University Technology Transfer Office in Hunington, W.Va.