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

Click here to see our Intellectual Property Litigation information.

Main Contacts
See more related to Trademarks
Trademarkology

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.

by Alexandra MacKay July 15, 2019
Events

China IP Road Show: Strategies for IP Protection in China - What Georgia Businesses Need to Know

Date: 7/18/19
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

Jeffery P. Langer Ph.D. July 03, 2019
Client Alerts

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.

by Mari-Elise Paul and Alexandra MacKay June 26, 2019
Trademarkology

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.

by Alexandra MacKay June 14, 2019
Events

Symposium on Global Markets - Nationalism and Protectionism: The United States in the International Arena

Date: 6/17/19 - 6/18/19

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.

Jeffery P. Langer Ph.D. May 30, 2019
Client Alerts

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.

by Alexandra MacKay, Mari-Elise Paul, and Erika R. Barnes May 28, 2019
Press Releases

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.

by Stites & Harbison, PLLC May 22, 2019
Press Releases

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.

by Stites & Harbison, PLLC May 15, 2019
Trademarkology

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.

by John W. Scruton May 06, 2019
Events

IIPCC's 3rd Annual Conference - The State of Innovation in the Union

Date: 5/6/19
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.

Jeffery P. Langer Ph.D. April 30, 2019
Events

Intellectual Property Seminars

Date: 5/16/19 - 5/17/19

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.

Terry L. Wright April 19, 2019
Press Releases

Stites & Harbison attorneys Robert Scully and Jeffery Langer honored by Super Lawyers for 2019

ALEXANDRIA, Va.—The 2019 editions of Virginia Super Lawyers and Washington DC Super Lawyers have honored attorneys Robert E. Scully, Jr. and Jeffery P. Langer, Ph.D., of the Alexandria, Va., office of Stites & Harbison, PLLC.

by Stites & Harbison, PLLC April 16, 2019
Trademarkology

US PTO Proposed Rule for Foreign Trademark Applicants and Registrants

The U.S. Patent and Trademark Office (the “PTO”) has proposed new rules that would require foreign trademark applicants and registrants to engage U.S. attorneys to prosecute applications, handle post-registration matters, and represent them before the Trademark Trial and Appeal Board.

by Alexandra MacKay April 12, 2019
Trademarkology

Forfeiture and Collective Membership Marks

Most marks are either trademarks (used in connection with goods) or service marks (used in connection with services). But there are a few other kinds of marks.

by Alexandra MacKay March 20, 2019
Client Alerts

Supreme Court Throws Copyright Owners Curveballs

It is weeks away from opening day, yet the United States Supreme Court had its own pre-season double header of sorts this past Monday. The United States Supreme Court issued unanimous decisions in two copyright cases on March 4, 2019.

by Alexandra MacKay and Mari-Elise Paul March 06, 2019
Events

2019 Global IP Strategy Conference

Date: 3/15/19
Time: 9:00 a.m. - 6:00 p.m.

Sterne Kessler Offices, 1100 New York Avenue, NW, Suite 600, Washington, DC

IP attorney Jeffery Langer will be a featured speaker and panelist at the 2019 Global IP Strategy Conference in Washington, D.C.

Jeffery P. Langer Ph.D. February 06, 2019
Press Releases

Stites & Harbison Promotes Five Attorneys in 2019

LOUISVILLE, Ky.—Stites & Harbison, PLLC announced today that five attorneys have been promoted within the law firm effective January 2019.

by Stites & Harbison, PLLC January 04, 2019
Events

IP: Protecting and Enhancing Your Current and Future Success

Date: 12/17/18

Ideal Lab, 1/F, No. 5 Science Park West Avenue, Hong Kong Science Park

IP attorney Jeff Langer is a featured speaker at this seminar presented by IIPCC in Hong Kong.

Jeffery P. Langer Ph.D. November 29, 2018
Press Releases

Ten Stites & Harbison Attorneys Honored by 2018 Mid-South Super Lawyers

NASHVILLE, Tenn.—The 2018 edition of Mid-South Super Lawyers recently honored 10 Stites & Harbison, PLLC attorneys. Five attorneys were named to the Super Lawyers list and five were named to the Rising Stars list. Of...
by Stites & Harbison, PLLC November 27, 2018
Presentations

Identifying and Implementing an Intellectual Property Protection Strategy for your Business

Terry Wright led a program for university members and the community including an overview of the main areas of intellectual property law (patent, trademark, trade secret and copyright) and continued more specifically on the various types of patent protection.

by Terry L. Wright October 11, 2018