Trademark

While patents safeguard inventions, trademarks protect a name or brand. As more and more companies look for ways to carve out a niche and distinguish themselves from competitors, protecting brands has become critically important.  As such, companies must vigorously protect their brands from the destructive effects of unauthorized use.

Our trademark attorneys and specialists handle all trademark-related matters, from prosecuting applications to full litigation.

Screening, Clearance and Registrations

In counseling clients prior to the adoption of new marks, we offer an unrivaled variety of screening and clearance search options. In addition to the widely available private trademark databases, our geographic proximity to the United States Patent and Trademark Office (USPTO) allows ready access to the official trademark search systems used by the government attorneys who examine applications for the registration of trademarks.

Securing registrations for marks in the United States and throughout the world is an important aspect of our trademark practice. Our proximity to the USPTO allows us to meet face-to-face with Examiners and their supervisors. Regular communication with USPTO officials greatly contributes to our success in prosecuting our clients’ applications.

Enforcement, Protection and Suppression

Oblon Spivak has an extensive litigation practice for the enforcement and protection of trademark rights and the suppression of acts of unfair competition. Drawing on both the depth of our experience before the Trademark Trial and Appeal Board (TTAB) and our proximity to the TTAB's offices, our attorneys are active and respected representatives in a full range of opposition and cancellation proceedings.

Our trademark litigators are frequently engaged in litigation in the United States district courts and courts of appeal throughout the country. Where appropriate, we make use of other Washington, D.C., resources – such as the United States Customs and Border Protection and the International Trade Commission – to assist in meeting our clients' objectives. While based in the United States, our thriving international practice enables us to protect and enforce the trademark rights of our clients wherever infringement occurs.

International Representation

Our attorneys maintain close ties to a worldwide network of trademark practitioners to facilitate international registration for our U.S. clients. Through our active participation in the International Trademark Association (INTA), the American Intellectual Property Law Association (AIPLA), the Intellectual Property Owners Association (IPO), the European Communities Trademark Practitioner's Association (ECTA), and the Association International pour la Protection de la Propriete Industrielle (AIPPI), we are able to enhance the effectiveness of this network and to monitor any pending process alterations that may affect our clients’ applications.

Our high level of U.S. and international activity breaks down geographic barriers and enables us to meet with continued success on behalf of our domestic and global clients. In particular, we have extensive expertise in the major international system for facilitating the registration of trademarks in multiple jurisdictions, commonly known as the “Madrid system” (an overview of the system can be found here). We regularly assist with Madrid filings for our international clients.

Trademark Representative Matters

Our client, Iconix Brand Group, is the owner of a diversified portfolio of fashion and home brands that touch every segment of retail distribution from the luxury market to the mass market. Iconix licenses its brands to leading retailers and manufacturers worldwide, including OP for Walmart; JOE BOXER and MOSSIMO for Target: Mudd for Kohl’s; and MATERIAL GIRL (Madonna) for Macy’s; among others. Oblon Spivak’s Trademark group helps protect these valuable marks beginning with due diligence and continuing with counseling, oppositions, management and maintenance of international trademark portfolios, including a significant amount of international licensing work.

Oblon Spivak provides a wide variety of trademark and copyright services within the United States for Heineken, which owns and manages one of the world’s leading portfolios of beer brands and is one of the world’s leading brewers in terms of sales volume and profitability. Its principal international brands are Heineken® and Amstel®, but the group brews and sells more than 200 international premium, regional, local and specialty beers and ciders, including Birra Moretti®, Foster’s®, Strongbow®, Newcastle Brown Ale®, and several others. Our work with Heineken ranges from researching availability of trademarks, client consultations and prosecuting applications to full litigation.

For nearly two decades, Oblon Spivak has represented Sugartown (doing business as Lilly Pulitzer) regarding all intellectual property matters, including trademark clearance, use, registration and enforcement of its marks. Lilly Pulitzer is known for its Palm Beach inspired clothing that is bright, colorful, and “preppy.” The marks that protect the design define the company and represent its most valuable asset.

Friday, March 28, 2014

            On March 25, 2014, in Lexmark International, Inc. v.  Static Control Components, Inc., Case No. 12-873 (S.Ct., March 25, 2014), the Supreme Court defined and described the test under which a non-competitor may bring a claim for false advertising under Trademark Act Section 43(a), 15 U...

Friday, June 01, 2012

Almost one year ago (July 2011), the USPTO published a proposed Rule to allow Examiners to require additional specimens to support that a registered mark is in use for the goods/services claimed in the registration (See ...

Friday, September 02, 2011

The U.S. Court of Appeals for the Second Circuit upheld the District Court’s decision that neither Patsy’s Italian Restaurant nor Patsy’s Pizzeria, located in New York City, has exclusive rights to the name PATSY’S.  The Court noted that this was the culmination of a...

Thursday, August 18, 2011

As previously discussed here Christian Louboutin S.A. (“Louboutin”) sought a preliminary injunction to prevent Yves Saint Laurent America, Inc. (“YSL”) from marketing any shoes that use the same or a confusingly similar shade of red as...

Wednesday, July 27, 2011

ICANN approved a .XXX top-level domain that is reserved for the adult entertainment industry and delegated ICM Registry to manage the .XXX top-level domain.  Sunrise B is the time when trademark owners and other IP holders not involved in the adult entertainment industry can apply to not be associated with the  .XXX top-level domain....

Tuesday, July 12, 2011

The USPTO today published a notice in the Federal Register regarding a proposed rule change, entitled “Changes in Requirements for Specimens and for Affidavits or Declarations of Continued Use or Excusable Nonuse in Trademark Cases”.  Click...

Thursday, May 12, 2011

“Trademark Bullying” -- USPTO reports it is unclear whether big companies are bullying smaller companies using unreasonable litigation tactics, or the threat of expensive litigation, but recommends “private sector” involvement in resolving this potential issue.

Thursday, April 14, 2011

Two of the largest rum manufacturers in the world, Pernot Ricard SA, dba Cuba Export, and Bacardi & Company Limited, continue the almost twenty year battle over the mark HAVANA CLUB despite what appear to be insurmountable problems stemming from the Cuba Trade Embargo. 

Tuesday, April 12, 2011

Seeking an injunction and damages, Christian Louboutin S.A. recently sued Yves Saint Laurent America, Inc. (YSL) in the Southern District of New York for trademark infringement and counterfeiting of Louboutin’s red-soled shoes. Click on the above link to read more about this case.