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United States > Intellectual property > Trademarks: non-contentious (including prosecution, portfolio management and licensing) > Law firm and leading lawyer rankings

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  1. Trademarks: non-contentious (including prosecution, portfolio management and licensing)
  2. Leading lawyers

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Specialist firm Finnegan, Henderson, Farabow, Garrett & Dunner LLP has remarkable expertise in managing large domestic and international trademark portfolios as well as prosecution work. For example, the team assisted new client Illumina with a comprehensive inventory of its trademark holdings around the world, has been handling its international trademark portfolio, and provided assistance for the launch of the new ‘Basespace’ product. Another new client is Charming Charlie, for which it handles its international trademark portfolio and assists with expanding into new markets. Longstanding clients of the firm include Bridgestone Firestone, Caterpillar, Fuente Cigar, Head USA, Starbucks and Subaru. On the transactional side of the practice, the team provided trademark due diligence to XO Communications regarding its acquisition by Verizon. Recommended lawyers include Julia Anne Matheson, Christopher Foley and Brett Heavner, who are all based in Washington DC, while the practice also has resources in Boston and Atlanta.

The ‘excellent’ boutique Fross Zelnick Lehrman & Zissu, P.C. in New York is highly regarded for its US trademark prosecution expertise. The team has extensive experience protecting global brands and does anti-counterfeiting work for clients in a variety of industries, including the entertainment, luxury goods, pharmaceuticals and financial services sectors. It also has particular expertise in the registration of non-traditional marks. For example, the firm assisted Lego to obtain a trademark registration for the 3D configuration of the Lego toy figure and subsequently recorded it with US Customs for actions against the importation of knock-offs. Other clients include DC Comics, Hewlett-Packard, Forbes, IBM, Chanel, Estee Lauder, Spectrum Brands, Tiffany, Honeywell and Warner Bros. The team also provides pro bono IP services to Lawyers Without Borders. Recommended lawyers include David Ehrlich, Mark Engelmann, David Donahue, James Weinberger and Cara Boyle.

The large team at Kilpatrick Townsend & Stockton has expertise that spans clearance and prosecution, anti-counterfeiting and grey market strategies, as well as ex parte and inter partes reviews at the Trademark Trial and Appeal Board (TTAB). Highlights included assisting the Coalition for the Advancement and Protection of Sports Logos, which includes the National Football League, National Basketball Association, National Hockey League and Major League Baseball, with the enforcement of their trademarks. The team also assists Facebook with the global trademark strategy for key brands, including Facebook, Instagram, and LiveRail, handles the global trademark portfolio of Levi Strauss & Co and assists the same client with enforcement matters. On the transactional side, the practice assisted Expedia with IP due diligence regarding the client’s acquisition of HomeAway. Anthony Malutta and Gregory Gilchrist in San Francisco, Tywanda Lord and Christine James in Atlanta and David Mayberry in Washington DC are recommended.

Recently merged firm Andrews Kurth Kenyon LLP combines the strengths of two trademark practices. James Rosini in New York, formerly of Kenyon & Kenyon, is noted for his emergency rebranding expertise. His team has handled complex rebranding work for several clients, including Abbott Laboratories, AIG and Citigroup. Michele Schwartz in Dallas, formerly of Andrews Kurth, has extensive experience in trademark prosecution and transactional matters. Her recent work includes assisting ArcBest with the rebranding from the previous name, Arkansas Best. The firm also provides ongoing portfolio management for major brands such as Unilever, Walmart, and William Grant & Sons. Further names to note are Edward Colbert and Susan Smith in the firm’s Washington DC office.

The ‘excellent’ team at Arent Fox LLP provides ‘easy-to-understand advice’ with ‘good value for money’. It is especially known for its work in the media and entertainment industry, but also has many clients in the technology, fashion and food industries. Mars is a key client of the practice, receiving services such as portfolio management and trademark advice on transactional matters in the Americas. Another key client is Discovery Communications, which is being advised on various trademark matters, including global branding initiatives and licensing deals. Other clients include Burger King, LG, Warner Brothers and Zara. Practice head Ricardo Fischer, Cristina Carvalho, Anthony Lupo and Michael Grow, all based in Washington DC, are recommended, as is Sarah Bruno in San Francisco.

Cowan, Liebowitz & Latman, PC in New York has an ‘excellent’ team with many ‘real subject matter experts’, who deliver ‘a fantastic service’. Mary Kevlin has been assisting key client Major League Baseball Properties and its 30 constituent clubs with the management and enforcement of their brands. The ‘knowledgeable and detail-orientedJeffrey Epstein has particular expertise in the fashion industry and has counseled several companies owned by LVMH. The ‘outstandingWilliam Borchard has been assisting Empire State Realty Trust with the protection of its Empire State Building brand, including obtaining a recent decision that the building’s image is a famous mark, and Deborah Squiers is noted for her work in the financial, beverage and education sectors.

The ‘excellent’ team at DLA Piper LLP (US) has ‘a strong understanding of worldwide trademark prosecution’. It manages trademark portfolios for clients in a variety of industries, has been advising many clients on the IP aspects of corporate and commercial transactions, and has niche expertise regarding certification marks. A key client is Dannon, which the team is advising on trademark selection and filing strategy, clearance and registrability, prosecution and enforcement, and issues surrounding product packaging, advertising and marketing strategy in compliance with industry regulations. Other clients include ESPN, Hyatt, Mark W Cross, Philip Morris and UL. ‘Outstanding’ practice head Ann Ford in Washington DC is recommended, as are the ‘very knowledgeableMark Feldman and Keith Medansky in Chicago.

Dechert LLP’s ‘very good’ team handles trademark clearance, registration and enforcement for several longstanding clients in a variety of industries. A highlight was handling prosecution and enforcement work for several Swiss luxury watch brands, including Breitling, Ebel and TAG Heuer. The team has also been assisting The Ivy League with the prosecution and enforcement of its brand, including actions against several apparel producers, and it has represented Apple in several opposition and cancelation proceedings before the TTAB. Other clients include Aetna, DirecTV, Towers Watson and Zara. Practice head Glenn Gundersen in Philadelphia is highly regarded.

K&L Gates manages global trademark portfolios for domestic and international clients in a variety of industries and is particularly strong in the fashion and sports sectors. As primary counsel to Polartec, the firm manages the client’s global portfolio of over 1,000 marks, assists with all enforcement activities and has been guiding it through product launches and rebranding campaigns. Other recent work includes assisting Dan Post Boot with the negotiation of a license agreement with John Deere to use the latter’s brand for a new line of boots. Other clients include National Beverage Corp, TripAdvisor, Quest Diagnostics, Valve Corporation and Zulily. Practice head Frank Politano in Newark and Susan Hollander in San Francisco are recommended.

The ‘excellent’ Kelly IP LLP in Washington DC, led by the highly rated David Kelly, has been handling numerous prosecution, opposition and cancelation proceedings for a broad range of clients. It is particularly noted for its work in the media and entertainment sector, with clients including the BBC, Disney, Fox and US News & World Report. The practice recently gained Hershey’s as a new client, taking over the management of its trademark portfolio, which consists of more than 5,300 trademark applications around the world. Other clients include Amazon, Aston Martin, AstraZeneca, BMW, Expedia, Harley-Davidson, Travelers, and the Consumer Financial Protection Bureau. Robert Litowitz, Stephanie Bald, Linda McLeod and Lynn Jordan are recommended.

McDermott Will & Emery LLP’s team regularly provides trademark counseling, prosecution and licensing services to clients from a variety of industries, and is particularly known for its industry knowledge in the alcoholic beverages sector. Richard Kim in Washington DC assists The Absolut Company and many other Pernod Ricard subsidiaries, including Chivas Brothers, Martell and Perrier-Jouët, with trademark portfolio management, licensing and enforcement. Chicago-based practice head Jennifer Mikulina acquired Catalina Marketing as a new client for the management of it global trademarks portfolio and for counseling on clearance, prosecution and enforcement. Jorge Arciniega in Los Angeles serves as brand management and transactional counsel for Saban Brands and its trademarks ‘Paul Frank’, ‘Power Rangers’ and ‘Luna Petunia’.

The ‘excellent’ Chicago-based trademark boutique Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP provides ‘very good advice’ to clients from a variety of industries. The team of ‘very knowledgeable’ lawyers includes Jonathan Jennings, Phillip Barengolts, Thad Chaloemtiarana and Robert Sacoff. Highlights included assisting the automotive industry parts supplier BorgWarner with prosecution and enforcement for its worldwide trademark portfolio, including anti-counterfeiting raids and seizures in numerous countries. The team also acts for Eli Lilly in grey market matters and recently expanded its enforcement work to cover new brands acquired for the Elanco pet care division. Other clients include Acer, Kohler, PepsiCo and Zebra Technologies.

Baker McKenzie LLP’s practice manages the domestic and global trademark portfolios of clients from a wide range of industries and has expertise in rebranding projects and transactional due diligence. Recent work includes taking over the trademark portfolio management for Lumileds, advising Brooks Brothers Group on licensing issues and filing strategies, and counseling Scholastic on trademark issues arising from the sale of its Educational Technology and Services Business to Hougton Mifflin Harcourt. Practice head Dave Davis in Chicago is recommended, as are Lisa Rosaya and Pamela Church in New York.

Bracewell LLP is noted for its strong prosecution and enforcement practice and also regularly advises on the branding and advertising issues of product launches. It assists key client HTC with trademark clearance for all new HTC mobile devices, with enforcement matters in North and South America, and recently with cancelation and opposition proceedings before the TTAB. The team also took over the portfolio management for San Antonio Shoes and handles enforcement matters for the client. Practice head Erin Hennessy is based in New York and Seattle.

The ‘efficient and pragmatic’ team at Cooley LLP is well known for its work in the technology sector, but also regularly acts for clients in a variety of other industries. Peter Willsey in Washington DC manages prosecution and enforcement of Mozilla’s trademarks, including new trademark applications for Firefox in numerous jurisdictions. Janet Cullum in New York assists LinkedIn with assessing, developing, implementing and enforcing its international trademark strategy. John Crittenden in San Francisco acts as primary trademark counsel to Lonely Planet, Tesla Motors, RadPad, and Kamut International.

Covington & Burling LLP’s practice is particularly noted for its transactional trademark practice and also handles prosecution matters for a broad variety of clients. The National Geographic Society is a longstanding client of the prosecution practice and has recently been advised on negotiating an expanded joint venture and trademark licensing agreement with 21st Century Fox that combines television channels with other media and consumer-oriented assets. Other clients include the American Automobile Association and the Business Software Alliance. Of counsel Kathleen Gallagher-Duff and of counsel Marie Lavalleye in Washington DC are recommended.

Particularly noted for its strength in anti-counterfeiting, Dentons’ team assists a variety of clients with the management of their global trademark portfolios and provides IP advice in relation to corporate and commercial transactions. Recent work includes assisting Cassava with trademark searching, acquisition and protection regarding its entry into the US market, advising Pacific Sunwear of California on trademark matters regarding marketing activities and assisting Morgans Group with the worldwide protection of its brands. Monica Richman in New York is recommended.

Foley & Lardner LLP’s practice regularly provides strategic advice to clients in the sporting, fashion, financial services and automotive industries. Recent highlights include advising the US Olympic team on licensing and advertising matters. The team also manages the worldwide trademark portfolio of Caterpillar, including several enforcement actions, and continues to assist Citigroup with foreign and domestic trademark searches as well as filing and prosecuting trademark applications. Other clients include 7-Eleven, Harley-Davidson and Hermès. Milwaukee-based practice chair Mark Diliberti is recommended. Jeffrey Greene moved to Fenwick & West LLP in April 2017.

Greenberg Traurig LLP’s brand management practice is noted for its work in a variety of industries, particularly technology, entertainment, fashion and luxury goods. The team assisted Western Digital with the expansion of its global trademark portfolio, acts for Electronics For Imaging in monitoring, prosecuting and enforcing its brands, and has been advising H&M on trademark filing regarding upcoming product and brand launches. Other clients include Ralph Lauren, Katy Perry and Jennifer Lopez. Practice chair Susan Heller in Los Angeles and Steven Wadyka in Washington DC are recommended.

The ‘very strong’ team at Jones Day is recommended for ‘efficient’ trademark prosecution services. It works for many big brand owners, including Abercrombie & Fitch, BMW, Coty, VF Corp and Wendy’s. The practice recently acquired LeSportsac as a new client and now manages its trademark portfolio, advises it on brand launches and handles enforcement matters. Other highlights included assisting the Wikimedia Foundation with an enforcement program regarding mobile applications, websites and social media. Meredith Wilkes in Cleveland is recommended, as are Washington DC-based John Froemming and Susan Kayser.

Kelley Drye & Warren LLP’s Andrea Calvaruso in New York leads a very experienced team that regularly advises clients in the luxury goods, fashion and beverage sectors, conducting clearance, licensing and trademark enforcement. Highlights included assisting Miss Universe Organization with the management of its worldwide trademark portfolio, licensing agreements and enforcement matters. The practice also assists Gucci with clearance, filing, strategic management, enforcement and several opposition proceedings before the TTAB. Other clients include Avon, Bacardi, Foot Locker and Ralph Lauren.

King & Spalding LLP’s team assists a diverse range of clients with domestic and international trademark protection, including enforcement matters and cancelations and oppositions. Richard Gross in Austin assists Home Depot with trademark prosecution and enforcement. Kathleen McCarthy in New York successfully registered ‘Zero’ as a mark for several soft drinks of The Coca-Cola Company, after facing an opposition based on the genericness of the mark. Other clients include Mary Kay, Ignite Restaurant Group and Mac Parent.

Knobbe Martens Olson & Bear LLP’s practice is experienced in handling brand protection matters for clients from a variety of industries, including fashion, and food and beverage. Recent work includes assisting Revolve Clothing with developing and implementing a worldwide brand protection and enforcement strategy. The firm has also assisted Monster Energy in building a portfolio of more than 5,200 registered trademarks, and represents the client in cancelation and opposition proceedings before the TTAB. Practice head Jeff Van Hoosear and Diane M Reed in Orange County are recommended.

Norton Rose Fulbright US LLP is particularly noted for its transactional trademark practice, which covers due diligence investigations and advising on licensing and joint venture agreements. The practice also has a strong client base for domestic and international portfolio management and is regularly involved in opposition and cancelation proceedings before the TTAB. Highlights included assisting online and catalogue retailer Bluestem Brands with the acquisition of competitor Orchard Brands, including trademark portfolio management, clearance and prosecution. Practice head Timothy Kenny in Minneapolis and Alicia Morris Groos in Austin are recommended.

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