Overview
Consumers today have shrinking attention spans and fleeting brand loyalty, which means building your brand’s identity and reputation—and then protecting it—are paramount. Whether you are launching a new product or protecting your brand from new competition, strategic trademark counsel throughout the intellectual property lifecycle is a necessity.
That’s where we come in. Beyond our legal skill, our business-first perspective makes us uniquely equipped to support all aspects of your company’s growth. From global trademark registration to enforcement and everything in between—including global portfolio management, licensing of brand assets, due diligence in transactions and litigation—we are deeply invested in your success.
We counsel hundreds of companies on the full spectrum of their international trademark needs, protecting the integrity of some of the world’s most celebrated brands across a variety of industries. Our deep knowledge of your key challenges, competitors and market dynamics allows us to customize our advice and help you go further.
Globally, we move faster on your behalf through seamless, cross-office international coordination in the US and Europe. When it comes to tackling your most challenging trademark issues or filing on an expedited basis, we offer unmatched 24/7 collaboration.
You don’t have to take our word for it. Industry-leading publication World Trademark Review 1000 says, “McDermott Will & Emery boasts a large, integrated crew of trademark attorneys that will give any competitor a run for its money” and notes that we are “an IP dynamo that offers wall-to-wall support around the globe.”
RELATED CAPABILITIES
ADVERTISING AND PROMOTIONS
Our lawyers have a deep understanding of the complex federal and state statutes and regulations that govern the marketing, labeling, promoting and advertising of products and services. We also represent clients in the advertising and entertainment industries, regularly reviewing and negotiating contracts and copy proposed for advertising, labeling, sweepstakes, contests and other types of promotions to ensure that terms explicitly prevent potential violations of relevant statutes, future litigation from competitors or consumers, or potential investigations initiated by the US Federal Trade Commission. Additionally, we collaborate with our regulatory lawyers as it requires dealing with the FDA and trade regulation.
CLEARANCE, APPLICATIONS AND PORTFOLIO MANAGEMENT
Strategic coordination and management of trademark portfolios is critical to a successful global brand, and our lawyers frequently advise on prioritizing brand protection resources and helping clients maximize their trademark protection budgets. We know that even the largest and most successful companies do not have unlimited resources; therefore, we counsel our clients in making practical and wise decisions within their target budgets. McDermott’s services span all aspects of portfolio management, from strategic global protection and maintenance (where we identify and address gaps in global trademark portfolios) to brand architecture, re-branding, brand revitalization, brand modernization, domain name portfolio management and other sophisticated brand enhancement services. We regularly partner with outside marketing and advertising consultants, as well as creative services companies that specialize in the creation and evolution of brands.
COMPLEX LICENSING AND CO-BRANDING
Valuable trademarks may be a source of revenue streams that expand profitability at limited additional expense. We frequently advise clients on brand extensions to new goods and services, co-branding opportunities with other brand owners, and franchising opportunities for better trademark visibility and revenue enhancement. In addition, McDermott’s trademark lawyers work closely with the Firm’s International Tax and Corporate Advisory practices to provide sophisticated counseling to clients on the global trademark aspects of complex, high-profile transactions, including acquisitions, spin-offs and corporate restructurings involving the disposition of billion-dollar brands.
CROSS-BORDER ENFORCEMENT AND ANTI-COUNTERFEITING
We work with US Customs and Border Protection (Customs) on behalf of many clients to combat the importation of counterfeit goods. In addition to recording our clients’ trademark registrations with Customs, giving Customs officers the information necessary to seize shipments of counterfeit goods, McDermott also takes a more proactive approach to help agents identify suspicious shipments by holding educational meetings with Customs agents. In these sessions, we help agents learn identifying features that distinguish our clients’ genuine goods from counterfeit products. We also have strong working relationships with trademark counsel in nearly every other country of the world. As a result of our long-standing relationships, these colleagues can be mobilized quickly to make emergency filings or tackle infringement problems without delay. We attempt to minimize the number of foreign associates used in each country in order to leverage the volume of work for fixed or discounted fees. Our ongoing relationships with this network of foreign associates allow us to work more efficiently since they know what we expect both in terms of quality and work product, therefore resulting in tremendous responsiveness and a better end product for our clients.
DOMAIN NAMES
An essential part of any global trademark strategy is the procurement, maintenance and enforcement of key domain names. McDermott offers a wide array of domain name services, including domain name acquisition, strategic portfolio assessments, online monitoring for unauthorized registrations, and recovery of domain names from cybersquatters and other infringers. McDermott is also an authorized Trademark Clearinghouse agent, allowing us to protect our clients’ brands and domain names as the number of new generic top-level domains expands. Our lawyers have also represented clients in numerous successful domain name disputes before the US federal district courts and the Internet Corporation for Assigned Names and Numbers (ICANN) accredited arbitration panels.
OPPOSITIONS AND CANCELLATIONS
We advise trademark applicants and opposing parties in filing and defending opposition and cancellation proceedings before the Trademark Trial and Appeals Board (TTAB), helping clients navigate the Federal Rules of Civil Procedure and the strict timelines that govern these unique disputes. We conduct effective discovery, draft compelling motions and handle necessary depositions, and have successfully argued a number of cases to the relevant judicial panels. We have helped numerous trademark holders protect their trademarks and prevent competitors and infringers from using such marks unlawfully.
SOCIAL MEDIA AND E-COMMERCE ISSUES
Beyond the issue of the content of advertising and promotions, savvy brand owners recognize that social networking and viral marketing create extraordinary opportunities, expectations and challenges for companies and their brands to interact more directly with consumers. Brand owners communicate and interact with the public more quickly via social networking and must monitor the marketplace in new and different ways to ensure their brand’s message is not corrupted or taken in an undesired direction—even by their fans. In return, brand owners can build brand exposure and value at a significantly lower expense. We help brand owners integrate legal counsel in a comprehensive team approach with marketing, communications and other critical business advice.
