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.
Our trademark lawyers 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.
USPTO Announced Termination of its After Final Consideration Pilot Program 2.0
Citing millions of dollars in administrative costs and lack of offsetting revenue as driving factors, the United States Patent and Trademark Office (USPTO) announced on October 1, 2024, that it is terminating its After Final Consideration Pilot Program 2.0 (AFCP 2.0) effective December 14, 2024.
Stites & Harbison Named to 2024 Top 10 Trademark Firms in North America – South List
The Trademark Lawyer Magazine has named Stites & Harbison, PLLC to the 2024 Top 10 Trademark Firms and IP Practices in North America – South list. This is the firm’s second year being honored.
USPTO to Do a Deep Dive on Deepfakes
The United States Patent and Trademark office (“USPTO”) has stated that it will be holding a roundtable on August 5, 2024, to address whether current laws are sufficient to protect individuals from the unauthorized reproductions of their voice, image, or likeness commonly referred to as “deepfakes.” Attorney TJ Mihill takes a look at the what the USPTO is looking for in this Stites & Harbison Client Alert.
Samuel F. Miller Rejoins Stites & Harbison in Nashville
Stites & Harbison, PLLC welcomes attorney Samuel F. Miller back to the firm’s Nashville, Tenn., office where he started his legal career in 2003. He rejoins the firm as a Member (Partner) in the Intellectual Property & Technology Service Group.
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.
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.
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.
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.
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.
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.
Navigating Artificial Intelligence in PR and Communications
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.
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.
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.
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.
2024 INTA North America Roundtable; Annual Case Law Review (Nashville, TN)
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.
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.
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.
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.
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.
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.