Intellectual Property & Technology

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.

Trademark Basics

See our Intellectual Property Litigation information.

Main Contacts
See more related to Trademarks
Client Alerts

USPTO Issues Final Rule for Implementation of the Trademark Modernization Act of 2020

The United States Patent and Trademark Office (USPTO) recently published a final rule implementing the Trademark Modernization Act of 2020 (TMA). The TMA amends the federal trademark statute (Lanham Act) in several ways, but the most significant aspect for the business community is the establishment of new ex parte expungement and reexamination proceedings for cancellation of a registration when the required use in commerce has not been made.

by Trevor T. Graves November 23, 2021
Press Releases

Stites & Harbison’s Intellectual Property & Technology Service Group Continues Growing with the Addition of Christina I. Ryan

LOUISVILLE, Ky.—Stites & Harbison, PLLC welcomes attorney Christina I. Ryan as Counsel to the firm based in the Louisville, Ky., office. She joins the Intellectual Property & Technology Service Group.

by Stites & Harbison, PLLC November 22, 2021
Press Releases

Stites & Harbison Welcomes Samuel Raque

NASHVILLE, Tenn.—Stites & Harbison, PLLC welcomes attorney Samuel A. Raque to the firm’s Nashville, Tenn., office. He joins the Intellectual Property & Technology Service Group as a Registered Patent Attorney.

by Stites & Harbison, PLLC October 29, 2021
Articles

Trademark Modernization Act Provides Useful tools for Brand Owners of All Sizes

The Trademark Modernization Act of 2020 (TMA) introduced several amendments to federal trademark statutes, known as the Lanham Act, that should prove favorable to brand owners when the TMA becomes effective on December 27th.

by Michael S. Hargis October 04, 2021
Client Alerts

Supreme Court Provides Additional Guidance on Assignor Estoppel in Patent Litigation

Assignor estoppel is an equity-based doctrine that can be invoked during the course of patent litigation to prevent an assignor, after assigning their interests to a patent to another, from later asserting that the patent is actually invalid.

by Gary N. Stewart (Nick) September 28, 2021
Events

AIPLA's Eleventh Annual Trademark Boot Camp

Date: 8/30/21 - 9/2/21

Webinar

IP attorney Joel Beres is set to speak at the AIPLA's 11th Annual Trademark Boot Camp webinar Aug. 30-Sept.2, 2021.

Joel T. Beres August 19, 2021
Press Releases

Mari-Elise Paul Named a 2021 Trailblazer in World IP Review’s Diversity Publication

LOUISVILLE, Ky.—World Intellectual Property Review (WIPR) has named Stites & Harbison, PLLC attorney Mari-Elise Paul as one of 20 Trailblazers profiled from around the world in WIPR’s Diversity Trailblazers 2021 list.

by Stites & Harbison, PLLC August 12, 2021
Press Releases

Managing IP Selects Mandy Wilson Decker to 2021 “Top 250 Women in IP” List for Seventh Time

LOUISVILLE, Ky.—Managing Intellectual Property (Managing IP) magazine recently selected Stites & Harbison, PLLC attorney Mandy Wilson Decker to the 2021 edition of Managing IP’s “Top 250 Women in IP.” This is the seventh time Decker has been honored on this list, and she is the only attorney honored from Kentucky.

by Stites & Harbison, PLLC July 26, 2021
Press Releases

Managing IP Honors Stites & Harbison Attorneys on “IP Stars” 2021 List

LOUISVILLE, Ky.—Managing Intellectual Property (Managing IP) magazine has named nine Stites & Harbison, PLLC attorneys to the 2021 “IP Stars” list. Managing IP recognizes the most highly regarded intellectual property attorneys in the U.S.

by Stites & Harbison, PLLC July 26, 2021
Press Releases

Well-Known King & Schickli Intellectual Property Attorneys Join Stites & Harbison

LEXINGTON, Ky. —Stites & Harbison, PLLC announces the addition of four attorneys to the firm’s Intellectual Property & Technology (IPT) Service Group.

by Stites & Harbison, PLLC July 15, 2021
Press Releases

James Hayne Selected for Ignite Louisville Class of Fall 2021

LOUISVILLE, Ky.—The Leadership Louisville Center has selected Stites & Harbison, PLLC attorney James Hayne to participate in the Ignite Louisville Class of Fall 2021.

by James Hayne April 28, 2021
Articles

Looking Through the Leadership Lens: Trademark Office Leadership in an Evolving Landscape

INTA recently premiered its first webcast in its “Looking Through the Leadership Lens” series, which features industry officials providing unique perspectives on leadership and development topics. INTA News article by Mari-Elise Paul.

by Mari-Elise Paul April 14, 2021
Articles

International Women’s Day: ‘choosing to challenge’ and the fight for gender equality

Leading female attorneys share their thoughts with WIPR about what the campaign theme means to them, the issues affecting women in IP and their efforts to tackle them. Louisville office IP attorney Mari-Elise Paul is included in this article.

by Mari-Elise Paul March 09, 2021
Trademarkology

Is Peloton Spinning Its Wheels? Peloton Petitions to Cancel “SPINNING” Registrations

Peloton Interactive, Inc. cranked up the resistance against Mad Dogg Athletics, Inc.’s tactics of aggressively enforcing its registrations of SPIN and SPINNING. Pressing down on the red button, so-to-speak, Peloton filed petitions to cancel Mad Dogg’s registrations of SPINNING, SPIN, and SPIN PILATES on the ground that “SPINNING” and “SPIN” are generic.

by Mari-Elise Paul February 19, 2021
Trademarkology

Aspects of the Trademark Modernization Act: Letters of Protest

On December 27, 2020, the Trademark Modernization Act of 2020 (the “Act”) was signed into law. The Act introduces a number of changes to trademark law that may be of interest to brand owners. This post will examine just one, and future posts will examine others.

by Alexandra MacKay January 25, 2021