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.

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See more related to Trademarks
Press Releases

Norton Children’s Hospital Foundation Appoints Mari-Elise Paul to its Board of Trustees

LOUISVILLE, Ky.—Norton Children’s Hospital Foundation recently appointed Stites & Harbison, PLLC attorney Mari-Elise Paul to its Board of Trustees. She will serve a three-year term.

by Mari-Elise Paul August 11, 2020
Events

Kentucky Engineering Law

Date: 8/31/20
Time: 8:00 a.m. - 4:00 p.m.

WEBINAR

Intellectual Property attorney Nick Stewart will present at this Webinar for Kentucky Engineering Law on August 31, 2020.

Gary N. Stewart (Nick) July 27, 2020
Client Alerts

Supreme Court Rules That Generic Terms + .com May Be Capable of Federal Trademark Registration

On June 30, 2020, the Supreme Court decided United States Patent and Trademark Office v. Booking.com B.V., Case No. 19-46, 589 U.S. ____ (June 30, 2020) held, with only one dissent, that it is possible for a domain name comprised of a generic term appended by “.com” to qualify for federal trademark registration.

by Mari-Elise Paul and Alexandra MacKay July 16, 2020
Client Alerts

Lucky Brand Gets Lucky Before the Supreme Court

On Wednesday, May 14, 2020, the United States Supreme Court unanimously held that the doctrine of defense preclusion does not apply in a case between two parties when the earlier case between the parties involved different marks and different conduct occurring at different times.

by Alexandra MacKay and Mari-Elise Paul June 01, 2020
Press Releases

Managing IP Honors Stites & Harbison Attorneys on “IP Stars” 2020 List

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.

by Joel T. Beres, Mandy Wilson Decker, Alexandra MacKay, Richard S. Myers Jr., David W. Nagle Jr., Marvin Petry, and B. Aaron Schulman May 06, 2020
Press Releases

Chambers USA 2020 Honors 19 Stites & Harbison Attorneys

LOUISVILLE, Ky.—Chambers USA selected 19 Stites & Harbison, PLLC attorneys in Kentucky and Tennessee for inclusion in their 2020 guide.

by Stites & Harbison, PLLC May 05, 2020
Client Alerts

Supreme Court Rules Proof of Willfulness Not a Precondition to Profits in Trademark Infringement Actions

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.

by John W. Scruton and Mari-Elise Paul April 29, 2020
Events

Spring Cleaning for Your Intellectual Property

Date: 4/30/20
Time: 12:00 p.m. - 1:00 p.m.

WEBINAR

Attorneys John Scruton and Nick Stewart will discuss suggestions on how to make your business's IP portfolio even better in 2020.

John W. Scruton and Gary N. Stewart (Nick) April 27, 2020
Trademarkology

More Relief for Trademark Owners from the PTO Deadlines During the Pandemic

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.

by Alexandra MacKay April 09, 2020
Trademarkology

Intellectual Property Offices Grant Relief to Applicants and Registrants During Coronavirus Pandemic

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.

by Mari-Elise Paul March 26, 2020
Client Alerts

Shiver Me Timbers! States Can’t be Sued for Copyright Infringement

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.

by Alexandra MacKay and Mari-Elise Paul March 25, 2020
Trademarkology

Coronavirus and Trademarks

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.

by Alexandra MacKay March 17, 2020
Trademarkology

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.

by Alexandra MacKay February 13, 2020
Trademarkology

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.

by Alexandra MacKay January 14, 2020
Trademarkology

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.

by Alexandra MacKay December 13, 2019
Events

Global Executive Forum: Future of the China Relationship for Kentucky Business

Date: 10/10/19
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.

Stites & Harbison, PLLC October 07, 2019
Trademarkology

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.

by Mari-Elise Paul September 24, 2019
Trademarkology

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.

by Alexandra MacKay September 20, 2019
Trademarkology

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.

by John W. Scruton September 05, 2019
Trademarkology

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.

by Summer E. Young Ph.D. August 29, 2019