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.
See our Intellectual Property Litigation information.
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.
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.
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.
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.
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.
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.
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.
ALEXANDRIA, Va.—Stites & Harbison, PLLC welcomes attorney John P. Teresinski to the Alexandria, Va., office as a Member (Partner) with the firm.
Article by IP attorney Mari-Elise Paul in the Louisville Bar Association's Bench & Bar discussing rebranding.
Intellectual property attorney, David Nagle, discusses how startups can best manage the intellectual property process when launching a business.
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.
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.
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.
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.
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.
IP attorney Joel Beres is set to speak at the AIPLA's 11th Annual Trademark Boot Camp webinar Aug. 30-Sept.2, 2021.
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.
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.
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.