| Trademark, Trade Dress and Domain Names |
A company's name, website domain name, trademark and trade dress are often its most valuable assets, so selecting the right name or mark is one of the most important decisions a business can make. Our intellectual property lawyers assist clients in the strategic selection, registration, management and enforcement of trademark, trade dress and domain name rights—often their most valuable assets. We take into consideration not only potential infringement of third-party rights, but also whether a potential name or trademark can be registered and can provide the client with the desired exclusivity and global market impact.
In 2008, we obtained more than 225 US trademark registrations. We also helped clients prevent third-party misappropriation of trademarks and names by opposing registrations and seeking cancellations of existing registrations in the USPTO, under the Madrid Protocol and before various national and regional patent and trademark offices.
Our lawyers stand at the forefront of evolving legal issues such as domain name misappropriation and cancellation, trademark infringement in meta-tags, cross border trademark infringement and the myriad legal challenges raised by the expansion of the Internet. Among other trademark matters, we:
- Successfully defended Fidelity Investments in an infringement action brought by Calvert challenging a national advertising campaign featuring Peter Lynch and his investment principle "know what you own and know why you own it"—the court concluded that Fidelity's use of the phrase "know what you own" was a "fair use" and that Calvert's mark was not distinctive, and the case subsequently settled on terms favorable to Fidelity
- Represented Hasbro in opposing a Mattel trademark before the Trademark Trial and Appeals Board (TTAB). The TTAB held that Mattel's mark "HIDDEN CLUES" was likely to cause confusion with Hasbro's registered trademark "CLUE."
- Prevailed on behalf of Pfizer in an opposition against the registrant of the trademark "GLUCOSOL," filed by Soft Gel Technologies to cover dietary and nutritional supplements, with the TTAB holding that this mark would likely cause confusion with Pfizer's registered trademarks "GLUCOTRO" and "GLUCOTROL XL."
- Also represented Pfizer in an action in which we obtained a permanent injunction against Y2K Shipping & Trading, prohibiting them from advertising and selling an herbal supplement under the name TRIAGRA because—the court found—the product name and marketing materials infringed and diluted Pfizer’s trademark VIAGRA and constituted unfair competition and false advertising