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 attorneys 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.
Stites & Harbison Welcomes Nancy Kennedy to Hartford Office
Stites & Harbison, PLLC welcomes attorney Nancy Kennedy to the Hartford, Conn., office. Kennedy joins the Intellectual Property & Technology Service Group as a Member (Partner).
Blueprints for Innovation: Intellectual Property in the Bluegrass State
Time: 3:00 p.m. - 5:45 p.m.
UK Gatton Student Center Ballroom 212A, 160 Avenue of Champions, Lexington, Kentucky 40508
IP attorney Mandy Wilson Decker will join a team of panelist for this event presented by UK Innovate, the Council for Innovation Promotion (C4IP) and the Kentucky Intellectual Property Alliance (KYIPA) on Tuesday, April 23rd at UK's Gatton Student Center in Ball Room 212A.
Intellectual Property Virtual Seminar
Time: 10:00 a.m. - 11:30 a.m.
Virtual Event
IP attorney Terry Wright will be a speaker at this virtual seminar presented by Marshall University Technology Transfer Office on April 21, 2025.
CAFC Affirms the Importance of Written Description in a Provisional Patent Application
On March 24, 2025, in In re Riggs, No. 22-1945, the Court of Appeals for the Federal Circuit (CAFC) addressed when the filing date of a provisional application can be relied on under 35 U.S.C. § 102(e) to support a rejection of a later-filed application. This opinion offers clarity on the importance of written descriptions in provisional patent applications for Patent Owners as well as Petitioners seeking to challenge a patent in a post-grant proceeding. Senior Patent Agent Samantha Page takes a look a the opinion in this Stites & Harbison Client Alert.
USPTO’s New Continuation Fees Prompt Strategic Shifts and Raise Pendency Concerns
With the USPTO’s implementation of new fees for certain continuation patent applications, applicants now face important strategic decisions regarding the timing and management of their filings. IP attorney Mandy Decker takes a look at the new fees in this Stites & Harbison Client Alert.
Securing Global Patents: U.S. "Obviousness" vs. Chinese "Inventive Step" Standards
If you or your company have developed a new technology, filing a patent application is an important step to protect your investment. However, because patent rights are territorial, it’s often necessary to file patent applications not only in the United States, but also globally. IP attorneys James Hayne takes a look at the difference between the U.S. and the Chinese systems.
Supreme Court Rules Trademark Plaintiffs Can Only Recover Profits from Defendants Named in the Action
On February 26, 2025, the United States Supreme Court unanimously held that a prevailing plaintiff in a trademark infringement case may recover profits only from the defendant named as a party to the proceeding, and may not also recover profits from the defendant’s affiliates who are not parties to the proceeding. Dewberry Group, Inc., fka Dewberry Capital Corp. v. Dewberry Engineers Inc., No. 23-900, _____ U.S. ____ (Feb. 26, 2025). The Court’s decision reinforced the principle of corporate separateness, but also left open the possibility that the federal trademark statute (the “Lanham Act”) might allow trial courts to consider evidence related to a defendant’s affiliates when exercising the discretion to adjust a profits award upwards or downwards for the sake of fairness. IP attorneys Alex MacKay and Sam Miller take a look at the decision in this Stites & Harbison Client Alert.
2025 WTR 1000 Recognizes Stites & Harbison’s Trademark Practice
World Trademark Review (WTR) has recognized Stites & Harbison, PLLC and three attorneys in the 2025 edition of WTR 1000 – The World’s Leading Trademark Professionals.
Changes Impacting Intellectual Property and Innovation Policies Under the New Trump Administration
Since his inauguration on January 20, 2025, President Donald Trump has implemented several initiatives that significantly impact intellectual property (IP) and innovation in the United States. IP attorney Mandy Decker takes a look at those initatives in this Stites & Harbison Client Alert.
Pre-AIA Patent Applications Filed Before but Published After the Priority Date of a Challenged Patent are “Printed Publications” for IPRs
On January 14, 2025, the Court of Appeals for the Federal Circuit (CAFC) issued a ruling in Lynk Labs, Inc. v. Samsung Electronics Co. Ltd., No. 23-2346, clarifying whether a patent application that is § 102(e)(1) prior art qualifies as a prior art printed publication in an IPR proceeding. Senior Patent Agent Samantha Page and IP attorney Kimberly Vines take a look at that ruling in this Stites & Harbison Client alert.
2024 INTA North America Roundtable: Annual Case Law Review - Nashville, TN
Time: 12:00 p.m. CST - 2:00 p.m. CST
Stites & Harbison, PLLC, 401 Commerce Street, Suite 800, Nashville, TN 37219
IP attorney Alex MacKay will lead the annual case law review for this 2025 INTA Roundtable on February 3, 2025 at the Nashville office.
Trevor Graves Elected to the Lexington Humane Society’s Board of Directors
The Lexington Humane Society recently elected Stites & Harbison, PLLC attorney Trevor Graves to its Board of Directors. He will serve a six-year term ending in 2030.
New Trademark Fees at the PTO Starting January 18, 2025
The United States Patent and Trademark Office (the “PTO”) will update its trademark fee schedule effective January 18, 2025. Alex MacKay takes at look at the changes in this Stites & Harbison Client Alert.
IP Rights That Go Bump in the Night: Horror Inc. v. Miller
It’s that time of the year. When the wind begins to chill and the nights grow longer, serving as harbingers for the inevitable truth, spooky season is upon us. As you and your neighbors begin to adorn your homes with your favorite ghouls and goblins in celebration of All Hallows’ Eve, I’d like to remind you of another reason to celebrate. For the second consecutive year, the Governor of Kentucky, Andy Beshear, has proclaimed October as Intellectual Property (IP) month in our commonwealth. In honor of this proclamation, I will share a story of IP rights that go bump in the night—the story surrounding the Second Circuit case, Horror Inc. v. Miller, 15 F.4th 232 (2d Cir. 2021). IP attorney Donovan Gibbs takes a look at the case in this Stites & Harbison Client Alert.
October 2024 is Intellectual Property Month in Kentucky
The Governor of Kentucky has officially proclaimed that October 2024 is Intellectual Property Month! This was achieved through efforts of the Kentucky Intellectual Property Association (KYIPA), in partnership with KY Innovation, Kentucky Science and Technology Corporation (KSTC), the Kentucky Bar Association (KBA) Intellectual Property (IP) Law Section, and many other organizations in the Commonwealth. IP attorney Mandy Decker takes a look at what intellectual property is in this Stites & Harbison Client Alert.
Managing IP Honors James Hayne and Nick Stewart on 2024 “Rising Stars” List
Managing Intellectual Property (Managing IP) magazine has named Stites & Harbison, PLLC attorneys James Hayne and Nick Stewart to its 2024 “Rising Stars” list. This is Hayne’s third time and Stewart’s second time being honored.
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.