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
Articles

Looking Through the Leadership Lens: Trademark Office Leadership in an Evolving Landscape

INTA recently premiered its first webcast in its “Looking Through the Leadership Lens” series, which features industry officials providing unique perspectives on leadership and development topics. INTA News article by Mari-Elise Paul.

by Mari-Elise Paul April 14, 2021
Articles

International Women’s Day: ‘choosing to challenge’ and the fight for gender equality

Leading female attorneys share their thoughts with WIPR about what the campaign theme means to them, the issues affecting women in IP and their efforts to tackle them. Louisville office IP attorney Mari-Elise Paul is included in this article.

by Mari-Elise Paul March 09, 2021
Trademarkology

Is Peloton Spinning Its Wheels? Peloton Petitions to Cancel “SPINNING” Registrations

Peloton Interactive, Inc. cranked up the resistance against Mad Dogg Athletics, Inc.’s tactics of aggressively enforcing its registrations of SPIN and SPINNING. Pressing down on the red button, so-to-speak, Peloton filed petitions to cancel Mad Dogg’s registrations of SPINNING, SPIN, and SPIN PILATES on the ground that “SPINNING” and “SPIN” are generic.

by Mari-Elise Paul February 19, 2021
Trademarkology

Aspects of the Trademark Modernization Act: Letters of Protest

On December 27, 2020, the Trademark Modernization Act of 2020 (the “Act”) was signed into law. The Act introduces a number of changes to trademark law that may be of interest to brand owners. This post will examine just one, and future posts will examine others.

by Alexandra MacKay January 25, 2021
Press Releases

Stites & Harbison Welcomes Abigail Clark

LOUISVILLE, Ky.—Stites & Harbison, PLLC welcomes attorney Abigail E. Clark to the firm’s Louisville, Ky., office.

by Stites & Harbison, PLLC October 21, 2020
Events

Tech Transfer: Methods That Work, IIPCC Fall IP Experts Panel Series

Date: 10/6/20
Time: 12:00 p.m. - 1:00 p.m.

Join Mandy Wilson Decker in the third of this four-session webinar. Mandy will join a panel discussing tech transfer on October 6, 2020.

Mandy Wilson Decker September 22, 2020
Events

Protecting Your Business’s Intellectual Property

Date: 9/24/20
Time: 10:00 a.m. - 11:00 a.m.

WEBINAR

Intellectual Property attorney Nick Stewart leads an in-depth discussion on protecting your IP and business's assets through patents, trademarks, copyrights, and trade secrets in this online event on September 24, 2020.

Gary N. Stewart (Nick) September 15, 2020
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
Articles

Fed. Circ. Won't Revive Solenis Paper-Making Patent

Law360 (May 26, 2020, 9:34 PM EDT) -- The Federal Circuit on Tuesday upheld a Patent Trial and Appeal Board decision that struck down a Solenis Technologies LP paper-making patent for being obvious, finding that the board properly analyzed the claims and backed its conclusions with "substantial evidence."

by Tiffany Hu May 26, 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., 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