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.
See our Intellectual Property Litigation information.
LOUISVILLE, Ky.—Managing Intellectual Property magazine has named seven Stites & Harbison, PLLC attorneys to the 2020 “IP Stars” list. The publication recognizes the most highly regarded intellectual property attorneys in the U.S.
LOUISVILLE, Ky.—Chambers USA selected 19 Stites & Harbison, PLLC attorneys in Kentucky and Tennessee for inclusion in their 2020 guide.
On April 23, 2020, the United States Supreme Court resolved a circuit split and held that plaintiffs in Lanham Act trademark infringement cases do not need to show the defendant infringed willfully in order to recover the defendant’s profits.
The last Trademarkology post identified ways in which the United States Patent and Trademark Office (the “PTO”) is working to relieve brand owners from some of the burdens imposed by the current Coronavirus pandemic. Since then, the PTO has issued further means of granting relief.
The United States Copyright Office (“Copyright Office”) and United States Patent and Trademark Office (“USPTO”) have taken steps to follow the CDC recommendations for slow the spread of COVID-19.
Ahoy, Mateys! Earlier this week, in Allen v. Cooper, Case No. 18-877, 589 U.S. ___ (Mar. 23, 2020), the United States Supreme Court held that the Copyright Remedy Clarification Act of 1990, a federal statute stripping states of their sovereign immunity from copyright infringement suits, lacked a valid constitutional basis. Thus, states cannot be sued for copyright infringement.
As (hopefully) most of the country practices social distancing and extra conscientious hygiene techniques, somewhat less than most of the country may be curious about what this Coronavirus could possibly have to do with trademarks.
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.
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.
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.
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 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.
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.
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.
As more states begin legalizing marijuana, there remains substantial tension with federal law, under which marijuana is illegal.
Seventy-five years ago this year, one of the most familiar public service images was created: Smokey Bear.
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.
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