Zuber & Taillieu

Intellectual Property Law

Trademark

Trademarks comprise a critical component of clients’ businesses, often the most significant IP asset a company owns.  Planning and protection may determine the viability and vitality of a company’s brand in the marketplace.  Our comprehensive experience in all aspects of trademark law and branding can help our clients create, manage, maximize, and protect the value of their marks and good will.

When issues arise and important trademark rights are at stake, global clients look to our seasoned litigators to solve the problem.  We have obtained sizeable judgments, seizures at U.S. Customs and businesses, and numerous emergency remedies to preclude further use of valuable marks and/or obtain important advantages for our clients, including injunctions and orders to freeze assets, to repatriate millions transferred oversees, to impound the entire inventory of businesses, and to perform audits and unannounced inspections abroad and in the U.S.

Our attorneys have decades of experience obtaining victories, for plaintiffs and defendants, before courts throughout the country, the U.S. Patent and Trademark Office and the Trademark Trial and Appeal Board (opposition and cancellation proceedings) as well as other tribunals.  We have vast experience with anti-counterfeiting, border seizure procedures, trademark and trade dress infringement and dilution matters, merchandizing and licensing, unfair competition and advertising, Internet-related issues, cyber-squatting and domain name issues, including disputes under the Uniform Dispute Resolution Policy of the Internet Corporation for Assigned Names and Numbers.

Our counseling services frequently begin at a trademark’s inception, with proactive involvement in selection, clearance, registration, and proper use.  We assist our clients in developing and implementing branding strategies and the appropriate use of trademarks in advertising and on packaging.  Companies also need to police the use of their marks carefully to avoid infringement of their brands and the possibility their marks will be diluted or become abandoned.  We have experience prosecuting trademarks and conducting investigations of our client’s trademark portfolios to police their marks.  Where appropriate, we retain investigators and watch services to monitor third-party trademark applications and usage, and we work with clients in matters related to international protection.  We prepare agreements such as settlement, consent, co-existence, assignment, and license agreements.