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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See more related to Trademarks
Press Releases

KBA Elects Mandy Wilson Decker and Donovan Gibbs II to Leadership Roles

The Kentucky Bar Association (KBA) recently elected two Stites & Harbison, PLLC attorneys to leadership roles in the Intellectual Property (IP) Law Section. Mandy Wilson Decker was elected Chair of the IP Law Section while Donovan D. Gibbs II was elected Vice Chair of the section. Both attorneys will serve a one-year term.

by Stites & Harbison, PLLC July 16, 2024
Press Releases

Managing IP Honors Stites & Harbison Attorneys on “IP Stars” 2024 List

LOUISVILLE, Ky. (June 20,—Managing Intellectual Property (Managing IP) magazine has named nine Stites & Harbison, PLLC attorneys to the 2024 “IP Stars” list. Managing IP recognizes the most highly regarded intellectual property attorneys in the U.S.

by Stites & Harbison, PLLC July 02, 2024
Client Alerts

USPTO Updates Guidance Due to Federal Circuit’s Adoption of Same Obviousness Test for Utility and Design Patents

On May 21, 2024, the Federal Circuit issued an en banc decision in LKQ Corp. v. GM Global Technology Operations LLC, No. 2021-2348, eliminating the long-established test for proving design patents invalid for being obvious as "improperly rigid" in favor of a more flexible approach. In doing so, it decided the same test for utility patent obviousness applies to design patents. IP attorney Trevor Graves takes a look at the case in this Stites & Harbison Client Alert.

by Trevor T. Graves May 28, 2024
Press Releases

Junior Achievement of Kentuckiana Appoints Donovan D. Gibbs II to Advisory Board

Junior Achievement of Kentuckiana recently appointed Stites & Harbison, PLLC attorney Donovan D. Gibbs II to its Young Professionals Advisory Board.

by Stites & Harbison, PLLC May 22, 2024
Press Releases

Stites & Harbison Earns 2024 Top 10 Listing in Patent Lawyer Magazine

The Patent Lawyer Magazine has named Stites & Harbison, PLLC to the 2024 Top 10 Patent Firms and IP Practices in North America – South list. This is the firm’s third year being honored.

by Stites & Harbison, PLLC May 10, 2024
Client Alerts

Who Owns TRAVIS KELCE?: An Example of the Legal Issues that Arise When Related Entities Apply for Similar Trademarks

The Lanham Act bars the registration of similar trademarks (or “marks”) that are likely to cause confusion with existing marks registered with the United States Patent and Trademark Office (“USPTO”). This concept of “likelihood of confusion” is a foundational principal of trademark law and one of the most beneficial aspects of acquiring a federal registration. IP attorney Donovan Gibbs takes a look at those benefits in this Stites & Harbison Client Alert.

by Donovan D. Gibbs II May 08, 2024
Events

Navigating Artificial Intelligence in PR and Communications

Date: 3/21/24
Time: 11:30 a.m. - 1:00 p.m.

Flash Cube Building, 9300 Shelbyville Road, 2nd Floor Community Room, Louisville, KY

The March PRSA Program entitled "Navigating Artificial Intelligence in PR and Communications," is a panel discussion surrounding the utilization of AI in communications and will feature Stites & Harbison IP attorney, Nick Stewart, who is a Registered Patent Attorney.

Gary N. Stewart (Nick) March 08, 2024
Press Releases

2024 WTR 1000 Recognizes Stites & Harbison’s Trademark Practice

LOUISVILLE, Ky.—World Trademark Review (WTR) has recognized Stites & Harbison, PLLC and four attorneys in the 2024 edition of WTR 1000 – The World’s Leading Trademark Professionals.

by Stites & Harbison, PLLC February 16, 2024
Client Alerts

Is That Tattoo Infringing? The Complicated Copyright Questions Surrounding Tattoos

Tattoos have been at the core of several copyright cases over the last few years. One of the earliest well-known examples was a suit by Mike Tyson’s tattoo artist over the use of Tyson’s face tattoo design in the movie The Hangover Part II, which settled out of court in 2011. However, several more recently undecided cases have raised issues tied to tattoos and copyright infringement. TJ Mihill takes a look at this issue in the latest Stites & Harbison Client Alert.

by Thomas J. Mihill (TJ) February 15, 2024
Press Releases

Stites & Harbison Welcomes Donovan D. Gibbs II to the Louisville Office

LOUISVILLE, Ky.—Stites & Harbison, PLLC welcomes attorney Donovan D. Gibbs II to the firm based in the Louisville, Ky., office. He joins the Intellectual Property & Technology Service Group.

by Stites & Harbison, PLLC January 29, 2024
Events

2024 INTA North America Roundtable; Annual Case Law Review (Nashville, TN)

Date: 1/31/24
Time: 12:00 p.m. - 2:00 p.m.

401 Commerce Street, Suite 800, Nashville, TN 37219

IP attorney Alex MacKay will co-host this roundtable in the firm's Nashville office on January 31, 2024.

Alexandra MacKay January 23, 2024
Client Alerts

USPTO Issues Enablement Guidelines Following Amgen v. Sanofi

On January 10, 2024, the United States Patent and Trademark Office (USPTO) released Guidelines for Assessing Enablement in Utility Applications and Patents in View of the Supreme Court Decision in Amgen Inc. et al. v. Sanofi et al. The Guidelines are intended to inform U.S. patent examiners and the public about the process to be followed when assessing whether a claim satisfies the enablement requirement under 35 U.S.C. 112(a), after the U.S. Supreme Court’s holding in Amgen v. Sanofi. IP attorney Patrick Torre takes a look at the guidelines in this Stites & Harbison Client Alert.

by Patrick M. Torre January 17, 2024
Client Alerts

Gifts from the USPTO for Prospective Patentees Heading into the New Year

Irrespective of the Naughty and Nice List, the United States Patent and Trademark Office (“USPTO”) has rolled out a series of programs over the course of 2023 that may serve to make the spirits of the inventors in your lives merrier and brighter heading into the new year. IP attorney Nick Stewart takes a look at those programs in this Stites & Harbison Client Alert.

by Gary N. Stewart (Nick) December 27, 2023
Client Alerts

Monetizing Intellectual Property: The Basics and Benefits of Licensing

Owners of intellectual property (“IP”) rights associated with inventions and creative works have discovered that “licensing” is an effective way to monetize their IP. IP attorney Scot Duval takes a look at the ways to do that in this Stites & Harbison Client Alert.

by Scot A. Duvall December 18, 2023
Client Alerts

The Basics of Trademark Law and the Benefits of Federal Registration

A trademark is any word, phrase, symbol, logo, or design – or any combination – used to identify and distinguish the source of the goods or services of one party from those of others. A trademark may be a word or words (APPLE or POLO), logos or designs (the Nike swoosh or Adidas’ three stripes), phrases (IT’S FINGER LICKIN’ GOOD or I’M LOVIN’ IT), shapes of containers or other trade dress (the BLANTON’S bourbon bottle shape), or even a color (HOME DEPOT orange) or sound (NBC chimes). IP attorney Trevor Graves takes a look at the benefits of registration in this Stites & Harbison Client Alert.

by Trevor T. Graves December 14, 2023
Client Alerts

President Issues Landmark Executive Order on Artificial Intelligence and Directives for the U.S. Patent and Trademark Office

On October 30, 2023, President Joe Biden issued a landmark executive order (the Order) directed to promoting use and managing risks of artificial intelligence (AI). The order recognizes the vast potential of AI and directs sweeping actions to protect against the risks of AI. Attorney John Teresinski takes at look at the order in this Stites & Harbison Client Alert.

by John P. Teresinski November 22, 2023
Client Alerts

What 70% of Americans Don’t Understand About Intellectual Property

Mandy Decker takes a look at the different types of intellectual property in this Stites & Harbison Client Alert.

by Mandy Wilson Decker October 26, 2023
Press Releases

Managing IP Honors James Hayne and Nick Stewart on 2023 "Rising Stars" List

LOUISVILLE, Ky.—Managing Intellectual Property (Managing IP) magazine has named Stites & Harbison, PLLC attorneys James Hayne and Nick Stewart to its 2023 “Rising Stars” list.

by Stites & Harbison, PLLC October 10, 2023
Client Alerts

The Supreme Court Helps Copyright Owners by Limiting Fair Use in Warhol Foundation v. Goldsmith

In May, the Supreme Court issued a narrow decision on the issue of fair use in copyright infringement cases. The case, Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, strengthened the position of potential plaintiffs – a little.

by John W. Scruton October 04, 2023
Press Releases

Managing IP Honors Stites & Harbison Attorneys on "IP Stars" 2023 list

LOUISVILLE, Ky. —Managing Intellectual Property (Managing IP) magazine has named nine Stites & Harbison, PLLC attorneys to the 2023 “IP Stars” list. Managing IP recognizes the most highly regarded intellectual property attorneys in the U.S.

by Stites & Harbison, PLLC July 25, 2023