Trademark, Trade Dress and Domain Names INTELLECTUAL PROPERTY
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 2014 alone, we filed more than 3,300 trademark applications, and more than 2,000 trademark registrations were issued. 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.
Ferrera, Vinita

Vinita Ferrera

Partner

+1 617 526 6208 (t)

vinita.ferrera@wilmerhale.com

Kennard, Wayne M.

Wayne M. Kennard

Partner

+1 617 526 6183 (t)

wayne.kennard@wilmerhale.com

Lange, Reinhart

Reinhart Lange

Partner

+49 69 27 10 78 201 (t)

reinhart.lange@wilmerhale.com

Matuschak, Mark G.

Mark G. Matuschak

Partner

+1 617 526 6559 (t)

mark.matuschak@wilmerhale.com

Wisz, Jamie T.

Jamie T. Wisz

Partner

+1 202 663 6286 (t)

jamie.wisz@wilmerhale.com

Schalast, Eva

Eva Schalast

Counsel

+49 69 27 10 78 215 (t)

eva.schalast@wilmerhale.com

Pape, LL.M., Christina

Christina Pape, LL.M.

Associate

+49 69 27 10 78 223 (t)

christina.pape@wilmerhale.com

Barakat, Barbara A.

Barbara A. Barakat

Attorney

+1 617 526 6154 (t)

barbara.barakat@wilmerhale.com

Experience

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

Publications & News

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July 2, 2015

WilmerHale Lawyers Named to Best Lawyers in Germany 2015

Nine WilmerHale lawyers from the Berlin and Frankfurt offices were listed in Best Lawyers in Germany, ranking in a recent edition of Handelsblatt.

June 24, 2015

Chambers Europe 2015 Recognizes WilmerHale Lawyers and Practices

Twelve WilmerHale lawyers and four firm practices have been recognized in the 2015 edition of Chambers Europe: Leading Lawyers for Business.

May 29, 2015

A Practitioner's Guide to Section 101 Invalidity: Analyzing Abstract Concepts in the Wake of Alice v. CLS Bank

An article by Louis Tompros, published in Bloomberg BNA's Patent, Trademark & Copyright Journal, Vol. 90, No. 2215.

March 12, 2015

WilmerHale Lawyers, Practices Recognized in 2015 Edition of Chambers Global

Thirty-two WilmerHale lawyers are named among "The World's Leading Lawyers for Business" in the 2015 edition of Chambers Global. In addition to these individual accolades, the firm is recognized in 17 practice areas that span six different regions.

November 4, 2014

U.S. News – Best Lawyers® Release 2015 “Best Law Firms” List, Names WilmerHale International Arbitration “Law Firm of the Year”

The 2015 U.S. News - Best Lawyers® "Best Law Firms" list includes WilmerHale being named a first-tier law firm in 24 national and 62 metro-area rankings. In addition, the firm boasts more than 20 second- and third-tier rankings in several national and metro-area rankings.

April 8, 2014

WilmerHale Shortlisted for Chambers USA Award for Excellence in IP, Securities and Financial Services Regulation

WilmerHale's Intellectual Property and Securities Departments, and its IP Litigation, Securities Litigation and Enforcement, Broker-Dealer and Financial Institutions Groups have received special recognition by Chambers USA as part of this year's Awards for Excellence program.

March 14, 2014

Chambers & Partners Recognizes WilmerHale in its 2014 Global Edition

Thirty-one WilmerHale lawyers have been named among the “World’s Leading Lawyers for Business” in the 2014 edition of Chambers Global. In addition to these individual accolades, 13 of the firm’s practice areas were also recognized.

November 1, 2013

WilmerHale Among U.S. News – Best Lawyers® “Best Law Firms” and Again Named International Arbitration “Law Firm of the Year”

The 2014 edition of the U.S. News – Best Lawyers® “Best Law Firms” list names WilmerHale as “Law Firm of the Year” in International Arbitration—this is the second consecutive year that the firm has won this honor—and honors WilmerHale as a first-tier law firm in 27 national and 60 metro-area rankings.

May 20, 2013

WilmerHale Lawyers, Practices Recognized by Chambers Europe 2013

In the 2013 edition of Chambers Europe: Leading Lawyers for Business, 20 WilmerHale lawyers and seven firm practices have been recognized as leading in their field.

May 20, 2013

Legal 500 EMEA 2013 Recognizes WilmerHale Attorneys, Practices

The 2013 edition of The Legal 500 Europe, Middle East and Africa has been released, and includes recognition for 10 WilmerHale practice areas and 13 individual lawyers.