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.
See our Intellectual Property Litigation information.
The Enablement Challenge for Genus Claims Under U.S. Patent Law: How Much Disclosure Is Enough After Amgen v. Sanofi?
Patent attorney Nick Stewart takes a look at the enablement challenge for genus claims under U.S. Patent Law in this Stites & Harbison Client Alert.
Trademark Law Developments in the Metaverse
The Metaverse (or “Web 3.0”) provides varying levels of access to three-dimensional environments for various decentralized activities such as gaming, commerce, social media, dissemination of authenticated digital assets such as non-fungible tokens (NFTs) and cryptocurrency, and others. Participants can engage in any number of virtual reality activities and transactions with others at any conceivable virtual location, whether based in reality or in fantasy. Not surprisingly, trademark law has now reached the Metaverse.
Stites & Harbison Named to 2023 Top 10 Patent Firms in North America - South List
LOUISVILLE, Ky. —The Patent Lawyer Magazine has named Stites & Harbison, PLLC to the 2023 Top 10 Patent Firms and IP Practices in North America – South list. This is the firm’s second year being honored.
IP vs. PR: Lessons From the Dungeons and Dragons Open Game License Controversy
Wizards of the Coast, LLC (“WOTC” or “Wizards”) and its parent company Hasbro, Inc. (“Hasbro”) recently found themselves facing unexpected backlash from their attempt to modify an existing license agreement which they had in place with content creators, the Open Game License (OGL), which allowed those creators to use game mechanics and other elements from the Dungeons and Dragons (D&D) table-top role playing game. IP attorney TJ Mihill takes a look at what's going on.
Scammers are Now Impersonating the USPTO: What You Need to Know
Recently the U.S. Patent and Trademark Office (USPTO) issued a Notice pertaining to a recent development in fraudulent communications pertaining to U.S. Trademark registrations and registration applications. Scammers are and have been accessing publicly available Trademark information and directly contacting applicants/registrants.
An Applicant's Guide To USPTO's Examiner Incentive System
Incentives are powerful tools for driving behavior. On this topic, billionaire businessman Charlie Munger famously advised to "[n]ever, ever, think about something else when you should be thinking about the power of incentives." Because the pathway from patent application to granted patent depends heavily on the actions and judgments of the examiner assigned to the application, a patent applicant is well advised to consider the examiner's perspective and the incentives imposed by the U.S. Patent and Trademark Office through the examiner production system, also referred to as the count system.
Scot Duvall Joins Stites & Harbison’s Louisville Office
LOUISVILLE, Ky.—Stites & Harbison, PLLC welcomes attorney Scot A. Duvall to the firm’s Louisville, Ky., office. He joins the firm as a Member (Partner) in the Intellectual Property & Technology Service Group.
The Twelve Days of I.P. Christmas
As we come to the end of the year, the members of the Intellectual Property and Technology group at Stites & Harbison took time to reflect upon some of the amazing things that have occurred in the world of Intellectual Property. In a light-hearted review of some of our favorite finds from 2022, please enjoy our own take on the classic carol, "The Twelve Days of Christmas."
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.
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.
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.
Dragon Con
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.
Thirsty Thursday Networking Event: Like It or Not, Contractors Need To Think About Intellectual Property
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.
Strategizing International IP Filings
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.
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.
When Can a Trademark Owner Take Action for Unauthorized Use of its Trademark Online?
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.
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.
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.
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.
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.”