Trademark Overview

Oblon’s Trademark Practice brings decades of experience to bear in protecting global and domestic brands. From selecting and clearing trademarks through registration and enforcement, Oblon’s Trademark Practice guides companies in building, strengthening and protecting their brands.

The Oblon Trademark team has experience from all sides of the issues—from conducting trademark searches and clearance, to protection of trademarks and initiating and defending against trademark and related infringement lawsuits. Our clients range from small to large entities active in diverse industries including automotive, manufacturing, aerospace, cosmetics, chemical, financial, ecommerce, 5G, pharmaceutical, Biotech, artificial intelligence (AI) and Internet of Things (IOT), to name a few. We counsel clients on branding and licensing strategies and regarding domestic and global portfolio management. Oblon’s trademark attorneys practice extensively before the U.S. Patent and Trademark Office (USPTO) and in federal courts nationwide.

Screening, Clearance, and Registration and Proceedings before the Trademark Trial and Appeal Board

We have extensive experience in clearing trademarks for registration and use, filing and prosecuting applications to register trademarks, maintaining registrations, and recording registrations with U.S. Customs to prevent entry of counterfeit products.

The Oblon Trademark Team has extensive experience before the TTAB with respect to ex parte appeals of refusals to register, and Opposition and Cancellation proceedings. The Team frequently handles ex parte appeals involving Section 2 statutory refusals and other issues. Common statutory refusals under Section 2 include the prohibition against registration of immoral or scandalous marks (Section 2(a)), refusals based on alleged likelihood of confusion (Section 2(d)) and refusals based on mere descriptiveness, deceptive misdescriptiveness, and primary geographic descriptiveness (Section 2(e)). The Team also frequently represents both domestic and international companies in opposition and cancellation (inter partes) proceedings before the TTAB and in administrative proceedings in other countries, adjudicating the registrability of trademarks.

Litigation

Through litigation in state, federal, and appellate courts, Oblon’s Trademark Team assists clients in protecting, enforcing, and defending their trademark rights. The Team handles nationwide and international enforcement and defense in the areas of trademark infringement, trade dress infringement, unfair competition, false advertising and related state law causes of action. Oblon’s domestic trademark infringement and defense practice handles litigation throughout the U.S., and the Team overseas international litigation on behalf of its clients. Coordinating domestic and international enforcement provides a unified strategy in building and protecting brands around the world and ensures that action taken in one country will not impair rights in another.

The Team also frequently handles Internet domain name issues and disputes in UDRP arbitration proceedings and in ACPA proceedings in federal court.

International Representation

Oblon works with associates throughout the world to protect and enforce the trademark rights of our clients. By actively participating in various organizations, including the International Trademark Association (INTA), the American Intellectual Property Law Association (AIPLA), the American Bar Association Section of Intellectual Property Law (ABA IPL), and the Intellectual Property Owners Association (IPO), the Oblon Trademark Team creates and maintains contacts with a worldwide network of associates. This enables us to identify and work with those associates who can provide quality services at reasonable prices in clearing and registering trademarks, and in enforcing brands in administrative proceedings and in courts worldwide.