Intellectual Property & Technology

Trademarks

Stites & Harbison's trademark attorneys provide comprehensive, personalized services to a diverse clientele worldwide. We have extensive experience helping clients secure and protect their trademarks. Additionally, our team carefully collaborates with select international colleagues to assist clients with the registration and enforcement process internationally.

Services we provide include:

  • Conducting clearance searches to select protectable marks;
  • Prosecuting trademark applications with the United States Patent and Trademark Office (USPTO) and 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 U.S. Customs to help prevent the importation of counterfeit goods;
  • Protecting our clients' marks on the Internet;
  • Resolving trademark disputes through litigation, including practice before courts, the Trademark Trial and Appeals Board of the USPTO, and arbitration panels; and
  • Generally assisting clients with management of their trademark portfolios.

We counsel and assist clients by negotiating 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; 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. In such transactions, we draw on the firm's interdisciplinary experience to achieve successful completion. We understand the value of communication and networking, so we are active members in a number of trademark organizations, including the International Trademark Association and the American Intellectual Property Law Association. These memberships enable us to advocate for trademark issues, maintain connections with trademark counsel around the world, and remain educated about emerging and significant issues facing brand owners today.

Trademark Basics

See our Intellectual Property Litigation information.

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Press Releases

Managing IP Honors James Hayne on 2022 "Rising Stars" List

LOUISVILLE, Ky.—Managing Intellectual Property (Managing IP) magazine has named Stites & Harbison, PLLC attorney James Hayne to its 2022 “Rising Stars” list.

by Stites & Harbison, PLLC October 11, 2022
Press Releases

Mari-Elise Paul Named a 2022 Go To Lawyer for Intellectual Property Law

ALEXANDRIA, Va.—Virginia Lawyers Weekly recently named Stites & Harbison, PLLC attorney Mari-Elise Paul to the 2022 list of Virginia’s Go To Lawyers for Intellectual Property Law. She is one of 19 attorneys honored.

by Stites & Harbison, PLLC September 28, 2022
Press Releases

Kids Cancer Alliance Selects James Hayne to Lead Young Professionals Committee and Serve on Board

LOUISVILLE, Ky.—Kids Cancer Alliance (KCA) has selected Stites & Harbison, PLLC attorney James Hayne as the inaugural chair of its Young Professionals Committee. As chair of this committee, Hayne will also serve as a member of the Board of Directors. His term will be one year.

by James Hayne September 14, 2022
Events

Dragon Con

Date: 9/1/22 - 9/5/22

Hyatt Regency Atlanta, Atlanta Marriott Marquis, Hilton Atlanta, Sheraton Atlanta Hotel, and the Westin Peachtree Plaza Hotel, Atlanta, GA

Atlanta office attorney TJ Mihill will be a speaker at this year's Dragon Con being held September 1-5 in Atlanta.

Thomas J. Mihill (TJ) August 22, 2022
Events

Thirsty Thursday Networking Event: Like It or Not, Contractors Need To Think About Intellectual Property

Date: 9/8/22
Time: 4:30 p.m. - 6:00 p.m.

400 West Market Street, 18th Floor, Louisville, KY 40202

Stites & Harbison will host a Thirsty Thursday networking event about contractors needs to keep intellectual property on their minds on Thursday, September 8th.

Warren D. Schickli and Trevor T. Graves August 17, 2022
Events

Strategizing International IP Filings

Date: 8/24/22
Time: 4:00 p.m. - 5:15 p.m.

Zoeller Pump Co. Center for Excellence, 3649 Cane Run Rd, Louisville, KY 40211

Join speakers Jeffery Langer (formerly with Stites & Harbison and now General Counsel at Zoeller Company) and Robert Sterne, Co-Founder of Stern, Kessler, Goldstein & Fox, for perspectives on strategizing international IP filings. Panel discussion to be followed by networking event sponsored by Stites & Harbison.

Stites & Harbison, PLLC August 10, 2022
Client Alerts

Artificial Intelligence and Inventorship Under U.S. Patent Law

In recent years, the capabilities of, and applications involving, artificial intelligence (“AI”) have dramatically increased, so much so that AI systems are now able to produce works of creativity and ingenuity once thought only to be possible through human efforts. The U.S. Copyright Office has already wrestled with the question of whether creative works authored by AI are eligible for federal copyright protection and determined that they are not in an opinion letter dated February 14, 2022.

by Gary N. Stewart (Nick) August 09, 2022
Events

When Can a Trademark Owner Take Action for Unauthorized Use of its Trademark Online?

Date: 7/29/22
Time: EST: 12:00 - 2:10 PM / CST: 11:00 - 1:10 PM / MST: 10:00 - 12:10 PM / PST: 09:00 - 11:10 AM

IP attorneys TJ Mihill and Julie Comer will speak at this myLawCLE webinar on July 29, 2022.

Thomas J. Mihill (TJ) and Julie R. Comer July 19, 2022
Press Releases

Trevor Graves Selected for Leadership Kentucky's Class of 2022

LEXINGTON, Ky.—Leadership Kentucky has selected Stites & Harbison, PLLC attorney Trevor Graves as a member of the 2022 Leadership Kentucky program. This year’s 51-member class will participate in seven three-day sessions from June through December at locations throughout Kentucky.

by Stites & Harbison, PLLC June 28, 2022
Press Releases

Managing IP Honors Stites & Harbison Attorneys on “IP Stars” 2022 List

LOUISVILLE, Ky.—Managing Intellectual Property (Managing IP) magazine has named nine Stites & Harbison, PLLC attorneys to the 2022 “IP Stars” list. Managing IP recognizes the most highly regarded intellectual property attorneys in the U.S.

by Stites & Harbison, PLLC June 08, 2022
Press Releases

Virginia Super Lawyers 2022 Honors John Teresinski

ALEXANDRIA, Va.—The 2022 edition of Virginia Super Lawyers recently honored Stites & Harbison, PLLC attorney John Teresinski. He was named to the Rising Stars list.

by Stites & Harbison, PLLC June 03, 2022
Client Alerts

Intellectual Property in the Metaverse

The Metaverse, often characterized as the next level in the evolution of the Internet, is intended to be a virtual-reality, three-dimensional environment where users are able to interact meaningfully with not only other users but with the virtual environment itself. Mark Zuckerberg, the founder of Facebook (re-branded as Meta) has characterized the Metaverse as “an embodied internet where you’re in the experience, not just looking at it.”

by Patrick M. Torre June 01, 2022
Press Releases

Stites & Harbison Named to 2022 Top 10 Patent Firms in North America – South List

LOUISVILLE, Ky.—The Patent Lawyer Magazine has named Stites & Harbison, PLLC to the 2022 Top 10 Patent Firms and IP Practices in North America – South list.

by Stites & Harbison, PLLC May 16, 2022
Client Alerts

Wait . . . What About Trade Secrets?

When one seeks to protect one’s intellectual property, patents, trademarks and copyrights immediately come to mind. Often given short shrift is the "forgotten stepchild" —trade secrets. Trade secrets may encompass a wide range of business information that (a) has value because it is not generally known in the trade and (b) is subject to reasonable efforts to preserve its confidentiality. When considering trade secrets, “business information” should be given a very broad definition and may include, but is not necessarily limited to, processes, procedures, research projects, nonpublic company documents (relating to, for example, recruiting, accounting, financial information and legal information), drawings, blueprints, laboratory notebooks, test data, training manuals, customer information and supplier information.

by Warren D. Schickli May 02, 2022
Events

2022 Business Litigation and Intellectual Property Litigation Super Conference

Date: 3/21/22 - 3/23/22

Hyatt Regency Houston, 1200 Louisiana Street, Houston, Texas 77002

Atlanta office attorney T.J. Mihill will be a speaker at this conference being held in Houston, Texas, March 21-23, 2022.

Thomas J. Mihill (TJ) March 15, 2022
Client Alerts

Europe Continues Progress Toward Unitary Patent and Unified Patent Court

For decades, inventors have been able to file a single patent application in the European Patent Office (“EPO”) in order to pursue protection across multiple countries in Europe. However, at the end of the examination process, a patent application granted by the EPO still must be validated in each of the countries in which a patent owner wishes to secure enforceable patent rights.

by David W. Nagle Jr. March 09, 2022
Client Alerts

Decoding the Crypto Brand Super Bowl Commercials

Based on commercials that aired during Super Bowl LVI, crypto brands have officially moved from the fringes to the mainstream. But the crypto ads in this prime time space didn’t do much to explain the underlying products and services, especially if the viewers were not already immersed in Web3.

by Mandy Wilson Decker February 18, 2022
Client Alerts

Recent Patent Program Updates by the United States Patent and Trademark Office

USPTO Launches New Pilot Program to Improve Efficiency of Utility Patent Application Examination. In response to concerns expressed by way of a letter sent from Senators Thom Tillis (R-NC) and Tom Cotton (R-AR), the United States Patent and Trademark Office (“USPTO”) has launched a “Deferred Subject Matter Eligibility Response (DSMER) Pilot Program” for non-provisional patent applications.

by Patrick M. Torre February 11, 2022
Client Alerts

Defendants Caught Red-Handed in Patent Infringement Case Get Five Months of Damages Wiped Out for Patentee’s Failure to Mark Its Products

In early September of 2021, the Court of Appeals for the Federal Circuit clarified the notice requirement of 35 U.S.C. § 287. Patentee’s seeking to recover damages on unmarked goods must ensure their notice to a potential infringer is an actual notice of infringement and not merely notice of a patent.

by Stites & Harbison, PLLC December 09, 2021